Appears in 1 contract

Sources: Development and Commercialization Agreement (Par Pharmaceutical Companies, Inc.)

Infringement. ~~11.2.1 Par and Advancis~~ 7.1 If any of the Patents shall be declared to be infringing on another patent, declared invalid or revoked by a patent office, court or tribunal of competent jurisdiction, all Royalties shall cease to be payable in respect of the Patent or Patents held infringing, invalid or revoked as from the date of such declaration or revocation but, if the decision of the court or tribunal making such declaration or revocation shall be reversed on appeal, the Royalties shall become payable from the date of such reversal together with all Royalties which would have been payable but for the adverse decision. 7.2 The parties shall promptly inform each other ~~promptly in writing~~ of any ~~alleged~~ infringement or suspected infringement ~~by a Third Party~~ of any of ~~Advancis Patent Rights, Advancis Know-How or Program Developments, and~~ the Patents of ~~any available evidence thereof~~which they become aware. ~~11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis~~ 7.3 Transense may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par but shall not ~~prosecute such infringement if Advancis [***]. Such negotiation shall~~ be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree obliged to institute suit against a ~~Product Infringement pursuant~~ third party for infringement of the Patents or unlawful use of any portion of the Confidential Information within one month from a request to ~~Section 11.2.3~~ do so by SmarTire and, if it does commence such suit, it shall pursue the same with reasonable dispatch. If Transense does not institute such suit within ~~[***]~~ such period, SmarTire may, but shall not be obliged to institute such suit in the name of ~~being notified~~ Transense. 7.4 If Transense institutes and prosecutes to judgement any suit provided for in paragraph 7.3 hereof (and whether or not requested to do so by SmarTire), all recovery of damages in such lawsuits shall be payable to Transense unless otherwise agreed to in writing between the parties hereto. 7.5 If SmarTire institutes a suit for infringement of the Patents or unlawful use of the Confidential Information, all recovery of damages in such lawsuits shall be payable to SmarTire unless otherwise agreed to in writing between the parties hereto. 7.6 If both Transense and SmarTire jointly institute and prosecute to judgement any proceedings for unlawful use of the trade secrets herein above referred to, the parties hereto shall bear the cost of such ~~alleged~~ lawsuit equally and all recovery of damages shall be payable equally to the parties hereto unless otherwise agreed to in writing. 7.7 Transense shall fully and effectively indemnify, defend and save harmless, SmarTire from all cost, damage, loss or ~~suspected infringement~~expense suffered or incurred by SmarTire (including reasonable legal fees and disbursements invoiced to SmarTire), ~~then Advancis~~ every action, suit or proceeding or claim instituted against SmarTire for infringement of the patent, copyright, trade secrets or other intellectual property rights of any third party, where such action, suit or proceeding or claim relates to SmarTire's use, manufacture and/or sale of the Technology as incorporated into the Products as contemplated herein. 7.8 Transense shall have control of the defense of such lawsuit as specified in Clause 7.7. SmarTire shall assist Transense, at Transense's sole cost, in the defense of such suit or action by providing information and witnesses as needed. SmarTire shall have the right to ~~institute such an infringement suit~~ be represented by its own counsel at its ~~cost and expense and~~ expense. 7.9 Transense may not settle any lawsuit without the consent of SmarTire, if by such settlement SmarTire becomes obliged to ~~retain all~~ make any monetary payment, ~~costs and damages received as a result thereof~~to transfer any property or interest in property, ~~whether by judgment, settlement compromise~~ or ~~otherwise~~become subject to an injunction. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Licence Agreement (Smartire Systems Inc)

Infringement. ~~11.2.1 Par~~ 9.1 LICENSEE and ~~Advancis~~ USC shall promptly inform ~~each~~ the other ~~promptly~~ in writing of any alleged ~~or suspected~~ infringement of which it shall have notice by a ~~Third Party~~ third party or any patents within the Patent Rights and provide such other with any available evidence of infringement. 9.2 During the term of this Agreement, LICENSEE shall have the tight, but shall not be obligated, to prosecute at its own expense any such infringements of the Patent Rights and, in furtherance of such rights, USC hereby agrees that LICENSEE may join USC as a party plaintiff in any such suit, without expense to USC. The total cost of any such infringement action commenced or defended solely by LICENSEE shall be borne by LICENSEE, and LICENSEE shall keep any recovery or damages for past infringement derived therefrom, except for that portion to be paid to USC pursuant to Article IV hereof USC shall make the inventors available and cooperate in the litigation. No settlement, consent judgment or other voluntary final disposition of ~~Advancis~~ the suit may be entered into without the consent of USC, which consent shall not unreasonably be withheld. LICENSEE shall indemnify USC against any order for costs that may be made against USC in such proceedings. 9.3 If within eighteen (18) months after having been notified of any alleged infringement, LICENSEE shall have been unsuccessful in persuading the alleged infringe to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE shall notify USC at any time prior thereto of its intention not to bring suit against any alleged infringe, then, and in those events only, USC shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Patent Rights, ~~Advancis Know-How or Program Developments~~and USC may, ~~and~~ for such purposes, use the name of ~~any available evidence thereof~~LICENSEE as party plaintiff. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 9.4 In the event that ~~a Third Party infringes Advancis~~ LICENSEE shall undertake the enforcement and/or defense of the Patent ~~Rights~~Rights by litigation, ~~Advancis Know-How or Program Developments owned~~ LICENSEE may withhold up to fifty percent (50%) of the royalties otherwise thereafter due USC hereunder and apply the same toward reimbursement of its expenses, including reasonable attorneys' fees, in connection therewith. Any recovery of damages by ~~Advancis by manufacture, sale or use~~ LICENSEE for any such suit shall be applied first in satisfaction with any unreimbursed expenses and legal fees of ~~a Product in~~ LICENSEE relating to the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, ~~then Advancis shall~~ and next toward reimbursement of USCN for any royalties past due or withheld and applied pursuant to this Article IX. 9.5 In any infringement suit that either party may institute ~~and control such suit including~~ to enforce the ~~settlement or compromise thereof. Par~~ Patent Rights pursuant to this Agreement, the other party shall, at the request and expense of ~~Advancis~~the party initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like~~. Advancis may join Par as a party~~. 9.6 LICENSEE, ~~and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense~~ during the exclusive period of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlementthis Agreement, shall ~~first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by~~ have the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined sole right in accordance with the ~~dispute resolution process set forth in Section 17.2.2 herein. In~~ terms and conditions herein to sublicense any ~~such infringement suit Par may institute to enforce Advancis~~ alleged infringer under the Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement (Universal Technology Systems Corp.)

Infringement. ~~11.2.1 Par and Advancis~~ 7.1 The parties shall inform each other ~~promptly~~ promptly, in ~~writing~~ writing, of any alleged ~~or suspected~~ infringement of the Patent Rights by a ~~Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments~~third party, and of any available evidence thereof. ~~11.2.2 Subject~~ 7.2 During the term of this Agreement, LICENSEE shall have the right, subject only to ~~Sections 11.2.3 and 11.2.4~~approval not unreasonably withheld of RESEARCH FOUNDATION, ~~Advancis may~~but shall not be obligated, to prosecute at its ~~sole option~~ own expense any such infringements of the Patent Rights and, in furtherance of such right, RESEARCH FOUNDATION hereby agrees that LICENSEE may join RESEARCH FOUNDATION as a party plaintiff in any such suit, without expense to RESEARCH FOUNDATION. The total cost of any such infringement action except as provided in paragraph 7.4 hereof, commenced or defended solely by LICENSEE shall be borne by LICENSEE and ~~expense~~LICENSEE shall keep any recovery or damages for past infringement derived therefrom. 7.3 If within six (6) months after having been notified of any alleged infringement, LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE shall notify RESEARCH FOUNDATION at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, RESEARCH FOUNDATION shall have the right, but shall not be obligated, to prosecute ~~the~~ at its own expense any infringement of ~~any Advancis~~ the Patent Rights, ~~Advancis Know-How~~ and RESEARCH FOUNDATION may, for such purposes, use the name of LICENSEE as party plaintiff. No settlement, consent judgment or ~~Program Developments~~other voluntary final disposition of the suit may be entered into without the consent of the other party, which consent shall not unreasonably be withheld. 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. ~~29 --------------------------------------------------------------------------------~~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. ~~11.2.3~~ 7.5 In the event that a ~~Third Party infringes Advancis~~ declaratory judgment action alleging invalidity or noninfringement of any of the Patent ~~Rights~~Rights shall be brought against RESEARCH FOUNDATION, ~~Advancis Know-How or Program Developments owned by Advancis by manufacture~~LICENSEE at Its option, ~~sale or use~~ shall have the right, within thirty (30) days after commencement of ~~a Product~~ such action, to intervene and take over the sole defense of the action at its own expense except as provided in paragraph 7.4. 7.6 In any infringement suit as either party may institute to enforce the ~~Territory (a "PRODUCT INFRINGEMENT")~~Patent Rights pursuant to this Agreement, ~~then~~ the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par other party hereto shall, at the request and expense of ~~Advancis~~the party initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. ~~11.2.4 In~~ 7.7 RESEARCH FOUNDATION warrants and represents that it has the ~~event~~ lawful right to grant the license provided in this agreement and that ~~only Advancis does~~ it has not ~~agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***]~~ granted rights or licenses in derogation of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided this Agreement. RESEARCH FOUNDATION agrees that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the ~~most recently completed [***] and [***]. However~~term of this Agreement, ~~Par~~ or any license granted hereunder, RESEARCH FOUNDATION shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance enter into any other agreements that conflict with the ~~dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How~~ rights or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products obligations provided hereunder, ~~then such Party shall promptly inform the other Party~~ including any rights and obligations provided hereunder, including any rights and obligations that survive termination of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunderthis Agreement. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Modification Agreement (NTN Buzztime Inc)

Infringement. ~~11.2.1 Par and Advancis~~ 8.1 The Parties shall ~~inform~~ promptly notify each other ~~promptly in writing~~ of any ~~alleged or~~ suspected infringement ~~by a Third Party~~ of any ~~of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof~~Licensed Patents. ~~11.2.2 Subject to Sections 11.2.3 and 11.2.4~~i. During the Term, ~~Advancis may~~COMPANY shall, at its ~~sole option and~~ expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to ~~settle~~ enforce any Licensed Patents against such infringer and may defend any declaratory judgment action brought against it alleging the invalidity of a Licensed Patent. COMPANY agrees to defend EMORY against any counterclaim brought against it in such action. EMORY shall cooperate with COMPANY in such effort, at COMPANY'S expense, including being joined as a party to such action, if necessary. COMPANY shall reimburse EMORY for any costs incurred, including reasonable attorneys’ fees, as part of any action brought by COMPANY. ii. COMPANY shall not enter into any settlement agreement or ~~compromise such~~ other voluntary final disposition in any action ~~or take any steps that adversely affect~~ regarding the ~~scope~~Licensed Patents, ~~validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How~~ including without the express written consent of ~~Advancis~~EMORY. Any amounts received for punitive or exemplary damages shall be shared equally between EMORY and COMPANY and any other amounts received, including compensatory damages or damages based on a loss of revenues which exceed the out-of-pocket costs and expenses incurred by COMPANY, shall be deemed to be the proceeds of Sales of Licensed Products in the fiscal quarter received. ~~11.2.5 In the event~~ 8.2 If COMPANY fails, within one hundred twenty (120) days after receiving notice of a potential infringement, to institute an action against such infringer or notifies EMORY that ~~only Par~~ it does not ~~agree~~ plan to institute ~~suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of~~ such ~~alleged or suspected infringement~~action, then ~~Advancis~~ EMORY shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action do so at its own expense. In COMPANY shall cooperate with EMORY in such effort including being joined as a party to such action if necessary. EMORY shall be entitled to retain all damages or costs awarded in such action. Should either EMORY or COMPANY be a party to a suit under the ~~event that Advancis does not so~~ provisions of this Article and thereafter elect to ~~take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control~~ abandon such ~~defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement~~suit, the ~~Parties~~ abandoning party shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid give timely notice to the other ~~party~~party who may, ~~as applicable~~at its discretion, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense continue prosecution of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement

Infringement. ~~11.2.1 Par~~ 7.3.1 Subject to Section 7 and ~~Advancis shall inform each~~ as limited by Section 7.3.3, Sierra Wireless will defend or settle, indemnify and hold You and Your Affiliates harmless from and against any direct damages (including reasonable attorneys’ fees and expenses) arising from or related to any action or claim brought by a third party against You that the AirVantage M2M Cloud or the Unlimited FOTAs infringe or violate any patent, copyright, trademark, trade secret or other ~~promptly~~ proprietary right of a third party provided that You: (i) immediately notify Sierra Wireless in writing of ~~any alleged or suspected infringement by a Third Party~~ the claim; (ii) immediately ▇▇▇▇▇ ▇▇▇▇▇▇ Wireless sole control of ~~any~~ the defense and settlement of ~~Advancis Patent Rights, Advancis Know-How or Program Developments,~~ the claim; and ~~of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may~~(iii) provide Sierra Wireless, at ~~its sole option and~~ Sierra Wireless’ expense, ~~prosecute~~ with all reasonable assistance, information and authority reasonably required for the ~~infringement~~ defense and settlement of the claim. Sierra Wireless shall not enter into any ~~Advancis Patent Rights, Advancis Know-How~~ settlement or ~~Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event~~ compromise that ~~a Third Party infringes Advancis Patent Rights, Advancis Know-How~~ fails to completely absolve You from any liability or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action obligation with respect to such ~~Product Infringement~~matter. If Sierra Wireless shall have control of the ~~Parties agree~~ defense of any such infringement claim, and shall keep You informed of all material information pertaining to ~~institute~~ such an infringement claim. Notwithstanding any of the foregoing to the contrary, Your failure or delay to deliver prompt notice of an infringement claim shall absolve Sierra Wireless of any and all indemnity obligations hereunder, irrespective of whether or not Sierra Wireless was actually prejudiced by such failure or delay. 7.3.2 Subject to Section 7, in addition to the above provisions, if the AirVantage M2M Cloud or the Unlimited FOTA become the subject of an infringement claim or action, Sierra Wireless shall, at Sierra Wireless’ option (a) procure the right to continue using any part of the AirVantage M2M Cloud or the Unlimited FOTA, or (b) modify the AirVantage M2M Cloud or the Unlimited FOTA to make it non- infringing, provided that the functionality thereof shall not be adversely affected in any material respect or (c) provide You at no additional charge, a ~~suit~~commercially reasonable amount of services to assist You in attempting to work-around the claimed infringement; or (d) refund any amount paid by You to Sierra Wireless if the above alternatives are not technically feasible. 7.3.3 Sierra Wireless shall have no liability under this Section 7 for any claim or action to the extent: (i) such claim or action would have been avoided but for modifications of the AirVantage M2M Cloud or the Unlimited FOTA, ~~then Advancis~~ made after delivery to You and not agreed or provided by Sierra Wireless; or (ii) such claim or action would have been avoided but for the combination or use of, the AirVantage M2M Cloud or the Unlimited FOTAs by You or any third party, with other products, processes or materials not intended to be combined with the AirVantage M2M Cloud or the Unlimited FOTA; (iii) such claim results from or is directly related to the Input Deliverables provided by You to Sierra Wireless for the provision of the Unlimited FOTA or (iv) the use by You of the Sierra Wireless Pre-existing Rights in any manner not expressly authorized under this Agreement or if (v) such claim results from a breach by the You or by its End Users of any licensing terms of the AirVantage M2M Cloud or terms of use of the Unlimited FOTA set out in this Agreement. 7.3.4 Subject to Section 8, for any claims or actions set out in Section 7.3.3, You will defend or settle, indemnify and hold Sierra Wireless and its Affiliates harmless from and against any direct damages (including reasonable attorneys’ fees and expenses) arising from or related to any action or claim brought by a third party against Sierra Wireless within the scope of Section 7.3.3 provided that Sierra Wireless: (i) notifies You in writing of the claim; (ii) grants You sole control of the defense and settlement of the claim; and (iii) provides You, at Your expense, with all reasonable assistance, information and authority reasonably required for the defense and settlement of the claim. You shall ~~institute and control such suit including the~~ not enter into any settlement or compromise ~~thereof. Par shall~~that fails to completely absolve Sierra Wireless from any liability or obligation with respect to such matter, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par nor shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not You have the right to ~~settle~~ control the defense of any action in which You dispute a material portion of the liability to Sierra Wireless. Although You may have control of the defense of any such infringement claim, You shall provide Sierra Wireless with copies of all pleadings filed in any such case and You or ~~compromise such action~~ Your representatives shall keep Sierra Wireless or ~~take any steps that adversely affect the scope, validity, enforceability or ownership~~ its agents informed of ~~Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree~~ all material information pertaining to ~~institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute~~ such an infringement ~~suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise~~claim. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: End User License Agreement

Infringement. ~~11.2.1 Par and Advancis~~ 7.1 Each PARTY shall inform ~~each~~ the other PARTY promptly in writing of any alleged ~~or suspected~~ infringement of PATENT RIGHTS by a ~~Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments,~~ third party and of any available evidence thereof. ~~11.2.2 Subject~~ 7.2 During the term of this Agreement, LICENSEE shall have the first right, but shall not be obligated to ~~Sections 11.2.3 and 11.2.4~~prosecute at its own expense, ~~Advancis~~ all infringements or misappropriations of TECHNOLOGY. LICENSEE may, for such purposes, include CURF as party plaintiff, if necessary, without expense to CURF. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of CURF, which consent shall not unreasonably be withheld. The total cost of any such infringement or misappropriation action commenced or defended solely by LICENSEE shall be borne by LICENSEE, and LICENSEE shall keep any recovery or damages for past infringement or misappropriation derived therefrom subject to the payment of a percentage on any recoveries net of costs and expenses as an "other payment" in accordance with Section 4. l(e). LICENSEE shall indemnify CURF against any order for costs that may be made against CURF in such proceedings. 7.3 If within three (3) months after having been notified of any alleged infringement, LICENSEE is unsuccessful in persuading the alleged infringer to desist and has not brought or is not diligently pursuing an infringement action or if LICENSEE notifies CURF at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, CURF shall have the right, but shall not be obligated,to prosecute at its ~~sole option~~ own expense all infringements or misappropriations of TECHNOLOGY and ~~expense~~CURF may, ~~prosecute the~~ for such purposes, include LICENSEE as a party plaintiff in any such suit, without expense to LICENSEE. The total cost of such infringement of action commenced or defended solely by CURF shall be borne by CURF and CURF shall keep any ~~Advancis Patent Rights, Advancis Know-How~~ recovery or ~~Program Developments. 29 --------------------------------------------------------------------------------~~damages for past infringement derived therefrom. ~~11.2.3~~ 7.4 In the event that ~~a Third Party infringes Advancis Patent Rights~~LICENSEE shall undertake the enforcement and/or defense of the TECHNOLOGY by litigation, ~~Advancis Know-How~~ LICENSEE may withhold up to fifty percent (50%) of the payments otherwise due CURF under Article 4 hereunder and apply the same toward payment of up to half of LICENSEE's expenses, including reasonable attorney 's fees, in connection therewith. LICENSEE shall modify the Royalty Report form to reflect any withholdings. 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 CURF for any payments under Article 4 past due or ~~Program Developments owned by Advancis by manufacture, sale or use~~ withheld and applied pursuant to this Section 7.4. LICENSEE shall keep the balance remaining from any such recovery subject to the payment of a ~~Product~~ percentage as an "other payment" in accordance with Section 4.1(e). 7.5 In any infringement or misappropriation suit that either PARTY may institute to enforce the ~~Territory (a "PRODUCT INFRINGEMENT")~~PATENT RIGHTS pursuant to this Agreement, ~~then~~ the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par other PARTY hereto shall, at the request and expense of ~~Advancis~~the PARTY initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, specimens and the like~~. Advancis may join Par as a party~~. 7.6 LICENSEE, ~~and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense~~ during the exclusive period of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlementthis Agreement, shall ~~first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by~~ have the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined sole right in accordance with the ~~dispute resolution process set forth in Section 17.2.2 herein. In~~ terms and conditions herein to sublicense any ~~such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at~~ alleged infringer for the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT FIELD OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense USE for future use of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicablePATENT RIGHTS. Any ~~Damages received by Advancis and/or Par~~ upfront fees as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms pm1 of such a ~~license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license~~ sublicense shall be ~~borne by the Parties. If the Executive Committee cannot agree with regard~~ treated pursuant to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------Article 4.

Appears in 1 contract

Sources: License Agreement (Organovo Holdings, Inc.)

Infringement. ~~11.2.1 Par and Advancis~~ 7.1 Each party shall inform ~~each~~ the other promptly in writing of any alleged ~~or suspected~~ infringement of the PATENT RIGHTS by a ~~Third Party of any of Advancis Patent Rights~~third party, ~~Advancis Know-How or Program Developments~~including all details then available. So long as the License is exclusive, COMPANY shall have the right to prosecute in its own name and ~~of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may,~~ at its ~~sole option and expense, prosecute the~~ own expense any infringement of any ~~Advancis Patent Rights~~patent within PATENT RIGHTS. 7.2 If COMPANY elects to commence an action as described above, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties COMPANY shall ~~discuss whether or not to institute an infringement action with respect~~ bear all expenses related to such ~~Product Infringement~~action and GENERAL shall cooperate fully with COMPANY in connection with any such action. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par mayCOMPANY, at its option and ~~expense prosecute such infringement~~ expense, may join GENERAL as a plaintiff. 7.3 COMPANY will consult with GENERAL with respect to any settlement, consent judgment or other voluntary final disposition of any ~~Advancis Patent Rights~~suit, ~~Advancis Know-How or Program Developments owned by Advancis~~but shall have the final authority with respect thereto, ~~provided that Par can demonstrate through any industry recognized survey that~~ unless such ~~sales of Product by the alleged or suspected infringer~~ action will result in the ~~Territory exceeds [***]~~ invalidation of the ~~sales~~ PATENT RIGHTS, in which event the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the prior written consent of ~~Advancis~~GENERAL will be required, which GENERAL agrees will not be unreasonably withheld. ~~11.2.5~~ 7.4 Recoveries or reimbursements from infringement actions commenced by COMPANY pursuant to this Article VII shall be distributed as follows: (a) COMPANY and GENERAL shall be reimbursed litigation expenses, including but not limited to reasonable attorneys’ fees; (b) GENERAL shall be reimbursed for any payments past due; and (c) any remaining recoveries or reimbursements shall belong to COMPANY, unless the Note has been paid in cash, (in which event 75% thereof shall belong to COMPANY and 25% shall belong to GENERAL. 7.5 If COMPANY has not taken legal action or been successful in obtaining cessation of the infringement within one hundred and twenty (120) days of written notification from GENERAL, GENERAL may prosecute such an infringement at its own expense. In such event, GENERAL shall control the ~~event that only Par does~~ action and shall distribute any recoveries or reimbursements as follows: (a) COMPANY and GENERAL shall be reimbursed litigation expenses, including but not limited to reasonable attorneys’ fees; and (b) any remaining recoveries or reimbursements shall belong to GENERAL. With respect to the settlement of any infringement prosecuted by GENERAL, GENERAL will not agree to ~~institute~~ any settlement, consent judgment or other voluntary final disposition of the suit ~~against a Product Infringement pursuant to Section 11.2.3 within [***]~~ without the prior written consent of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwiseCOMPANY. ~~11.2.6 In the event that~~ 7.6 If a declaratory judgment ~~action~~ alleging invalidity or non-infringement of any ~~Advancis Patent Rights, Advancis Know-How or Program Developments shall be~~ of the patents in PATENT RIGHTS is brought against ~~Advancis and/or Par~~COMPANY or GENERAL, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, COMPANY shall have the ~~right,~~ right to control such action by written notice to GENERAL given within ~~[***]~~ sixty (60) days of notice of the suit. If COMPANY does not give such notice within sixty (60) days after such notice of commencement of ~~such~~ that action, ~~to take over the sole defense of the action at its own expense. In the event that Advancis does not so~~ GENERAL may elect to take over the sole defense of the action at its ~~own~~ sole expense~~, Par shall be free~~ . 7.7 In any infringement suit that either party brings to ~~proceed and solely control such defense. To~~ enforce the ~~extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement~~Patent Rights, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other ~~party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third~~ party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the ~~other's request~~request and expense of the party bringing the suit, ~~provide~~ cooperate in all reasonable respects, including, to ~~it reasonable assistance and cooperation with respect to any such suit. To~~ the extent ~~that any Damages become payable to any third party as a result~~ possible, obtaining the testimony of ~~such action, whether through judgment or settlement, the Parties shall bear such Damages equally,~~ its employees and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth making available physical evidence in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------possession of that party.

Appears in 1 contract

Sources: License Agreement (DARA BioSciences, Inc.)

Infringement. ~~11.2.1 Par and Advancis~~ 7.1 The parties shall inform each other ~~promptly~~ promptly, in ~~writing~~ writing, of any alleged ~~or suspected~~ infringement of the Patent Rights by a ~~Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments~~third party, and of any available evidence thereof. ~~11.2.2 Subject~~ 7.2 During the term of this Agreement, LICENSEE shall have the right, subject only to ~~Sections 11.2.3 and 11.2.4~~approval not unreasonably withheld of RESEARCH FOUNDATION, ~~Advancis may~~but shall not be obligated, to prosecute at its ~~sole option~~ own expense any such infringements of the Patent Rights and, in furtherance of such right, RESEARCH FOUNDATION hereby agrees that LICENSEE may join RESEARCH FOUNDATION as a party plaintiff in any such suit, without expense to RESEARCH FOUNDATION. The total cost of any such infringement action except as provided in paragraph 7.4 hereof, commenced or defended solely by LICENSEE shall be borne by LICENSEE and ~~expense~~LICENSEE shall keep any recovery or damages for past infringement derived therefrom. 7.3 If within six (6) months after having been notified of any alleged infringement, LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE shall notify RESEARCH FOUNDATION at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, RESEARCH FOUNDATION shall have the right, but shall not be obligated, to prosecute ~~the~~ at its own expense any infringement of ~~any Advancis~~ the Patent Rights, ~~Advancis Know-How~~ and RESEARCH FOUNDATION may, for such purposes, use the name of LICENSEE as party plaintiff. No settlement, consent judgment or ~~Program Developments~~other voluntary final disposition of the suit may be entered into without the consent of the other party, which consent shall not unreasonably be withheld. 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. ~~29 --------------------------------------------------------------------------------~~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. ~~11.2.3~~ 7.5 In the event that a ~~Third Party infringes Advancis~~ declaratory judgment action alleging invalidity or noninfringement of any of the Patent ~~Rights~~Rights shall be brought against RESEARCH FOUNDATION, ~~Advancis Know-How or Program Developments owned by Advancis by manufacture~~LICENSEE at its option, ~~sale or use~~ shall have the right, within thirty (30) days after commencement of ~~a Product~~ such action, to intervene and take over the sole defense of the action at its own expense except as provided in paragraph 7.4. 7.6 In any infringement suit as either party may institute to enforce the ~~Territory (a "PRODUCT INFRINGEMENT")~~Patent Rights pursuant to this Agreement, ~~then~~ the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par other party hereto shall, at the request and expense of ~~Advancis~~the party initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. ~~11.2.4~~ 7.7 RESEARCH FOUNDATION warrants and represents that it has the lawful right to grant the license provided in this agreement and that it has not granted rights or licenses In ~~the event~~ derogation of this Agreement. RESEARCH FOUNDATION agrees that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the ~~most recently completed [***] and [***]. However~~term of this Agreement, ~~Par~~ or any license granted hereunder, RESEARCH FOUNDATION shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance enter into any other agreements that conflict with the ~~dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How~~ rights or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products obligations provided hereunder, ~~then such Party shall promptly inform the other Party~~ including any rights and obligations provided hereunder, including any rights and obligations that survive termination of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunderthis Agreement. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Modification Agreement (NTN Buzztime Inc)

Infringement. ~~11.2.1 Par and Advancis shall inform each other promptly in writing~~ 16.1 If either party learns of ~~any alleged or suspected~~ a claim of infringement ~~by a Third Party~~ of any of ~~Advancis~~ Licensor’s Patent ~~Rights~~Rights licensed under this Agreement, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties party shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense give written notice of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid claim to the other party. Licensor, ~~as applicable~~in consultation with Licensee, ~~as soon as practicable upon receipt of~~ shall then use reasonable efforts to terminate such infringement if the ~~Damages. 11.2.4~~ parties mutually agree that such efforts are appropriate under the circumstances. In the event Licensor fails to ▇▇▇▇▇ the infringing activity within ninety (90) days after such written notice or to bring legal action against the third party, Licensee may bring suit for patent infringement. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of Licensor, which consent shall not be unreasonably withheld. 16.2 Any such legal action shall be at the expense of the party by whom suit is filed, hereinafter referred to as the “Litigating Party”. Any damages or costs recovered by the Litigating Party in connection with a legal action filed by it hereunder, and provided that ~~only Advancis does not agree~~ the Litigating Party is reimbursed for its costs and expenses reasonably incurred in the lawsuit, and after any royalties or other payments due to ~~institute a suit against a Product Infringement pursuant~~ Licensor under Article 4 are paid, shall be retained by Licensee under the following conditions: (a) damages for lost sales shall be treated as Net Sales (after reasonable costs and expenses of litigation are subtracted), and the royalty due on the corresponding amount of Net Sales shall be paid to ~~Section 11.2.3 within~~ Licensor; (b) [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds percent ([***] ]%) of punitive damages, if any, in excess of damages for lost sales shall be paid to Licensor and the ~~sales~~ remainder shall be retained by Licensee. Specific terms in ~~the Territory of the Product by Par during the most recently completed [***] and~~ this exhibit have been redacted because confidential treatment for those terms has been requested. These redacted terms have been marked in this exhibit with three asterisks [***]. ~~However, Par shall not prosecute such infringement if Advancis~~ An unredacted version of this exhibit has been separately filed with the Securities and Exchange Commission. KUCTC-Reata Confidential [***]~~. Such negotiation shall be conducted between the Advancis~~ 16.3 Licensee and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties Licensor shall cooperate with each other so in litigation proceedings instituted hereunder, provided that ~~each Party can determine whether valid rights~~ such cooperation shall be at the expense of ~~a third party are likely to~~ the Litigating Party, and such litigation shall be ~~infringed~~ controlled by the ~~manufacture, use or sale of the Products hereunder~~Litigating Party. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Exclusive License Agreement

Infringement. ~~11.2.1 Par~~ Novirio shall promptly inform TherapX and ~~Advancis shall inform each other~~ Dr. Schinazi and TherapX and Dr. Schinazi will promptly ~~in writing~~ notify Novir▇▇ ▇▇ ▇▇▇ ▇▇spected infringem▇▇▇ ▇▇ ▇▇▇ ▇icensed Patents. During the term of ~~any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights~~this Agreement, ~~Advancis Know-How or Program Developments,~~ TherapX and ~~of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3~~ Dr. Schinazi and ~~11.2.4, Advancis may, at its sole option and expense, prosecute~~ Novirio ▇▇▇▇▇ ▇▇▇e the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not right to institute an action for infringement ~~action~~ of the Licensed Patents against such third party in accordance with ~~respect to such Product Infringement.~~ the following: (a) If ~~the Parties~~ UAB, TherapX and Dr. Schinazi and Novirio, agree to institute ~~such a suit~~suit jointly, ~~then Advancis shall institute and control such~~ the suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens ▇▇▇▇▇ ▇▇ ▇▇▇ught in all their names and the ~~like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit~~ out-of-pocket costs thereof shall be ~~shared by the Parties~~ borne equally. Any ~~royalties, payments, damages, expense, fees~~ recovery or ~~other awards (collectively, "DAMAGES"),~~ settlement received by ~~Advancis~~ TherapX and Dr. Schinazi and/or ~~Par as~~ Novirio for punitive or exemplary damages shall ▇▇ ▇▇▇▇▇▇ ▇▇ually, and any other recovery or settlement received, including compensatory damages or damages based on a ~~result~~ loss of ~~such suit, whether through judgment or settlement~~revenues, shall ~~first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to~~ be paid to Novirio, and Novirio shall pay to TherapX and Dr. Schinazi an amount representing the ~~other party~~royalty which would have bee▇ ▇▇▇▇ ▇▇ ▇▇virio on such amount in accordance with the provisions of Article 3 had such amount been accrued by Novirio as Sales. The parties shall agree upon the manner in which they shall exercise control over such action and may, ~~as applicable~~if they so desire, ~~as soon as practicable upon receipt~~ also be represented by separate counsel of their own such action and may, if they so desire, also be represented by separate counsel of their own selection. The fees of which counsel shall be paid by the ~~Damages.~~respective parties so represented; ~~11.2.4~~ (b) In the ~~event that only Advancis does not agree~~ absence of agreement to institute a suit ~~against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement~~jointly, ~~Par~~ UAB may, ~~at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis,~~ as provided ~~that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer~~ in the ~~Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However~~Primary License, ~~Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee~~institute suit, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, name TherapX and Dr. Schinazi as plaintiffs. UAB shall ~~have~~ bear the ~~right, within [***] after commencement~~ entire cost of such ~~action~~l▇▇▇▇▇▇▇▇▇ ▇▇d shall be entitled to retain the entire amount of any recovery or settlement; and (c) In the absence of agreement to institute a suit jointly and if UAB notify TherapX and Dr. Schinazi that it has decided not to join in or institute a suit, ~~to take over the sole defense of the action~~ ▇▇ ▇▇▇▇▇▇▇▇ in (a) or (b) above, TherapX and Dr. Schinazi may institute suit and, at its ~~own expense~~option, name the Primary ▇▇▇▇▇▇▇▇ ▇▇d/or Novirio as plaintiff. TherapX and Dr. Schinazi shall bear the entire cost of such litigation, includin▇ ▇▇▇▇▇▇▇▇▇ any counterclaims brought against UAB or Novirio and paying any judgments rendered against UAB or Novirio, and TherapX and Dr. Schinazi shall be entitled to retain the entire amount of any re▇▇▇▇▇▇ ▇▇ ▇▇ttlement. (d) In the ~~event that Advancis does~~ absence of agreement to institute suit jointly and if UAB and TherapX and Dr. Schinazi have decided not ~~so elect~~ to ~~take over the sole defense of the action~~ join in or institute a suit, as pro▇▇▇▇▇ ▇▇ (▇) - (c) above, Novirio may institute suit and at its ~~own expense~~option name UAB and/or TherapX and Dr. Schinazi as plaintiffs. Novirio shall bear the enter cost of suc▇ ▇▇▇▇▇▇▇▇▇▇, ~~Par~~ including defending any considerations brought against UAB or TherapX and Dr. Schinazi and paying any judgments rendered against UAB or Therap▇ ▇▇▇ ▇▇. ▇▇hinazi, and Novirio shall be ~~free~~ entitled to ~~proceed and solely control such defense. To~~ retain the ~~extent that any Damages become payable to any Third Party as a result of such action, whether through judgment~~ entire amo▇▇▇ ▇▇ ▇▇▇ ▇ecovery or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement (Novirio Pharmaceuticals LTD)

Infringement. 11.2.1 Par and Advancis shall inform each other promptly in writing of any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense7.1. In the event that ~~Advancis does not so elect to take over the sole defense~~ LICENSEE (including any Affiliate or sublicensee) or UFRFI receives a notice of ~~the action at its own expense~~claim, ~~Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action~~threat, ~~whether through judgment~~ or ~~settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received~~ suit by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, howeveralleging, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the ~~Products hereunder, then~~ Licensed Technology infringes or is dominated by intellectual property rights owned or controlled by such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, then the ~~Executive Committee shall: 1) determine whether or not~~ party receiving the notice shall promptly notify the other party to ~~seek such a license, 2) appoint a negotiator to negotiate the terms~~ this Agreement in writing of such claim, threat or suit. 7.2. If notice of a ~~license~~claim, ~~3) determine whether~~ 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 ~~to enter into such a license as negotiated by~~ reject UFRFI’S advice without reasonable justification thereof regarding negotiations with the ~~negotiator~~Third Party, selection and supervision of counsel, filing of lawsuits or other proceedings, and ~~4) determine how~~ settlement of the claim, threat, or suit. All costs and expenses, including attorneys’ fees, incurred in the 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 ~~such a license shall be borne by~~ the ~~Parties. If~~ legal action from the ~~Executive Committee cannot agree with regard~~ royalties payable to ~~any responsibility set forth in~~ UTRFI under the ~~preceding sentence~~Article IV of this Agreement, ~~such issue shall be determined by arbitration in accordance with Section 17.2.2.~~ up to [***] ~~INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED~~percent ([***]%) of said royalties. ~~ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934~~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, ~~AS AMENDED~~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. ~~31 --------------------------------------------------------------------------------~~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 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 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).

Appears in 1 contract

Sources: License Agreement (Diversa Corp)

Infringement. ~~11.2.1 Par~~ 8.1 LICENSEE and ~~Advancis~~ UKRF shall promptly inform ~~each~~ the other ~~promptly~~ in writing of any alleged ~~or suspected~~ infringement of which it shall have notice by a ~~Third Party~~ third party of any patents within the Patent Rights and provide such other with any available information relating to such alleged infringement. 8.2 During the term of ~~Advancis~~ this Agreement, UKRF shall have the right, but shall not be obligated, to prosecute at its own expense any such infringement of the Patent Rights and, in the furtherance of such right, LICENSEE hereby agrees that UKRF may join 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 UKRF shall be borne by UKRF, and UKRF shall keep any recovery or damages for past infringement derived therefrom. 8.3 If within l20 days after having been notified of any alleged infringement, UKRF shall have been unsuccessful in persuading the alleged infringer to desist from the infringing activities and shall not have brought and shall not be diligently prosecuting an infringement action, or if UKRF shall notify LICENSEE at any time prior thereto of its intention not to bring suit against the alleged infringer, then, and in those events only, LICENSEE shall have the right, but shall not be obligated, to prosecute at its own expense such infringement of the Patent Rights, ~~Advancis Know~~and LICENSEE may, for such purposes, use the name of UKRF as party plaintiff. 8.4 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 royalties otherwise due UKRF hereunder and apply the same toward reimbursement of its expenses, including reasonable attorneys' fees, in connection therewith. Any recovery of damages by LICENSEE for any such suit shall be applied first in satisfaction of any un-~~How or Program Developments~~reimbursed expenses and legal fees of LICENSEE relating to the suit, and next toward reimbursement of UKRF for any ~~available evidence thereof~~royalties past due or withheld and applied pursuant to this Article 8. The balance remaining from any such recovery shall be retained by LICENSEE and shall constitute Net Sales hereunder. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 8.5 In the event that a ~~Third Party infringes Advancis~~ declaratory judgment action alleging invalidity or non- infringement of any of the Patent ~~Rights~~Rights shall be brought against LICENSEE, ~~Advancis Know-How or Program Developments owned by Advancis by manufacture~~UKRF, ~~sale or use~~ at its option, shall have the right, within thirty (30) days after commencement of ~~a Product in~~ such action, to intervene and take over the ~~Territory (a "PRODUCT INFRINGEMENT")~~sole defense of the action at its own expense. 8.6 In any infringement suit either party may institute to enforce the Patent Rights pursuant to this Agreement, ~~then~~ the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par other party hereto shall, at the request and expense of ~~Advancis~~the party initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent ~~possible~~reasonable, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like~~. Advancis may join Par as a party~~, and ~~Par~~ the party maintaining the litigation shall ~~execute all papers and perform such acts as~~ reimburse the other party against any order for costs that may be ~~reasonably required~~made against such other party in such proceedings. ~~The cost~~ Should UKRF or Licensee commence a suit under the foregoing provisions and ~~expense of such suit~~ thereafter elect to abandon the same, the abandoning party shall ~~be shared by the Parties equally. Any royalties~~give timely, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid written notice to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par maywhich, at its ~~option~~ option, may chose to continue the prosecution of such suit, with the expenses and ~~expense prosecute such infringement of any Advancis Patent Rights~~recovery being allocated as provided in Section 8.2, ~~Advancis Know-How~~ 8.3 or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds 8.4 hereof. [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However]=CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT MARKED BY BRACKETED ASTERISKS HAS BEEN OMITTED AND ~~FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN~~ FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE ~~24b-2 UNDER~~ 406 OF THE SECURITIES ~~EXCHANGE~~ ACT OF ~~1934~~1933, AS AMENDED. 8.7 LICENSEE, during the exclusive period of this Agreement, shall have the sole right in accordance with the terms and conditions herein to sublicense any alleged infringer under the Patent Rights for future infringements. 8.8 In any patent litigation pursuant to this Article 8, the party maintaining the litigation shall consult with the other party on material aspects of the litigation and shall select counsel to which the other party has no reasonable objection. ~~30 -------------------------------------------------------------------------------- at its option~~No settlement, consent judgment or other voluntary final disposition of any such litigation may be entered into without the consent of the other party, which consent shall not unreasonably be withheld or delayed. 8.9 If, during the term of this Agreement, any third party (other than an Affiliate of a party) claims that LICENSEE'S making, using or selling of Licensed Products hereunder infringes on a third-party patent based upon claims that dominate claims in the Licensed Patent Rights, within 120 days after notice by LICENSEE, UKRF shall either (i) procure for LICENSEE the rights to exercise all rights licensed under this Agreement without any additional payment therefor by LICENSEE, or (ii) advise LICENSEE that it elects not to procure such rights itself. If UKRF does not procure such rights within such 120-day period after notice of such claim by LICENSEE, LICENSEE shall have the right, ~~within [***] after commencement of such action~~but not the obligation, to ~~take over~~ procure such rights itself and offset one-half of any royalty payments hereunder by the ~~sole defense of~~ amount paid by LICENSEE for such third-party rights, provided that the ~~action at its own expense. In the event that Advancis does~~ offset under this provision shall not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to ~~reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed~~ reduce the royalty payment in any period by more than [*] of Net Sales, and ~~then~~ any ~~remainder~~ amount remaining to be offset from any period shall be ~~shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages~~carried forward until offset against royalties for future periods. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement (Control Delivery Systems Inc/Ma)

Infringement. ~~11.2.1 Par and Advancis~~ 7.1 The parties shall inform each other ~~promptly~~ promptly, in ~~writing~~ writing, of any alleged ~~or suspected~~ infringement of the Patent Rights by a ~~Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments~~third party, and of any available evidence thereof. ~~11.2.2 Subject~~ 7.2 During the term of this Agreement, LICENSEE shall have the right, subject only to ~~Sections 11.2.3 and 11.2.4~~approval not unreasonably withheld of RESEARCH FOUNDATION, ~~Advancis may~~but shall not be obligated, to prosecute at its ~~sole option~~ own expense any such infringements of the Patent Rights and, in furtherance of such right, RESEARCH FOUNDATION hereby agrees that LICENSEE may join RESEARCH FOUNDATION as a party plaintiff in any such suit, without expense to RESEARCH FOUNDATION. The total cost of any such infringement action except as provided in paragraph 7.4 hereof, commenced or defended solely by LICENSEE shall be borne by LICENSEE and ~~expense~~LICENSEE shall keep any recovery or damages for past infringement derived therefrom. 7.3 If within six (6) months after having been notified of any alleged infringement, LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE shall notify RESEARCH FOUNDATION at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, RESEARCH FOUNDATION shall have the right, but shall not be obligated, to prosecute ~~the~~ at its own expense any infringement of ~~any Advancis~~ the Patent Rights, ~~Advancis Know-How~~ and RESEARCH FOUNDATION may, for such purposes, use the name of LICENSEE as party plaintiff. No settlement, consent judgment or ~~Program Developments~~other voluntary final disposition of the suit may be entered into without the consent of the other party, which consent shall not unreasonably be withheld. 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. ~~29 --------------------------------------------------------------------------------~~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. ~~11.2.3~~ 7.5 In the event that a ~~Third Party infringes Advancis~~ declaratory judgment action alleging invalidity or noninfringement of any of the Patent ~~Rights~~Rights shall be brought against RESEARCH FOUNDATION, ~~Advancis Know-How or Program Developments owned by Advancis by manufacture~~LICENSEE at its option, ~~sale or use~~ shall have the right, within thirty (30) days after commencement of ~~a Product~~ such action, to intervene and take over the sole defense of the action at its own expense except as provided in paragraph 7.4. 7.6 In any infringement suit as either party may institute to enforce the ~~Territory (a "PRODUCT INFRINGEMENT")~~Patent Rights pursuant to this Agreement, ~~then~~ the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par other party hereto shall, at the request and expense of ~~Advancis~~the party initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have ~~its~~ Its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. ~~11.2.4 In~~ 7.7 RESEARCH FOUNDATION warrants and represents that it has the ~~event~~ lawful right to grant the license provided in this agreement and that ~~only Advancis does~~ ft has not ~~agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***]~~ granted rights or licenses in derogation of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided this Agreement. RESEARCH FOUNDATION agrees that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the ~~most recently completed [***] and [***]. However~~term of this Agreement, ~~Par~~ or any license granted hereunder, RESEARCH FOUNDATION shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance enter into any other agreements that conflict with the ~~dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How~~ rights or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products obligations provided hereunder, ~~then such Party shall promptly inform the other Party~~ including any rights and obligations provided hereunder, including any rights and obligations that survive termination of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunderthis Agreement. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Modification Agreement (NTN Buzztime Inc)

Infringement. ~~11.2.1 Par and Advancis~~ 1To the extent permitted by law, Licensee shall ~~inform each other promptly in writing~~ have the right during the term of this Agreement to commence an action for infringement of the Licensed Patents against any ~~alleged or suspected~~ unlicensed third party for any infringement ~~by a Third Party~~ occurring within the Field, provided that Licensee shall provide UVA LVG thirty (30) days prior written notice of ~~any of Advancis Patent Rights, Advancis Know-How or Program Developments,~~ such infringement and of ~~any available evidence thereof. 11.2.2 Subject~~ Licensee’s intent to ~~Sections 11.2.3 and 11.2.4, Advancis may,~~ file such action. UVA LVG shall have the right at its ~~sole option and expense~~own expense to appear in such action by counsel of its own selection. If, ~~prosecute the infringement~~ as a matter of ~~any Advancis Patent Rights~~law, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action ~~with respect~~ must be prosecuted in the UVA LVG’s name, UVA LVG shall voluntarily participate in or pursue such action at Licensee’s expense (including without limitation reasonable and documented legal fees and out of pocket expenses). Notwithstanding the foregoing, if an appearance or infringement action would subject UVA LVG to ~~such Product Infringement. If~~ the ~~Parties agree to institute such~~ jurisdiction of a ~~suit~~foreign tribunal that could not otherwise assert jurisdiction over UVA LVG, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis UVA LVG shall have the right to ~~institute~~ decline appear or otherwise pursue such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement action. Settlement of any ~~Advancis Patent Rights~~action initiated and/or paid for by Licensee shall require the consent of UVA LVG and Licensee, ~~Advancis Know-How or Program Developments~~ which neither shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have unreasonably withhold from the ~~right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense~~other. In the event that ~~Advancis does not so elect~~ Licensee pays all fees and expenses related to ~~take over the sole defense of the action at its own expense~~an infringement action, ~~Par~~ any settlement amount or recovery for damages shall be ~~free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party~~ applied as ~~a result of such action~~follows: (i) first, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse ~~each Party~~ the parties for ~~its~~ their expenses ~~associated~~ in connection with the litigation; and (ii) second, UVA LVG shall receive compensation for the time of any UVA LVG personnel involved in the action; and (iii) third, Licensee shall receive eighty five percent (85%) and UVA LVG shall receive fifteen percent (15%) of any monies remaining. If Licensee pays less than all such ~~infringement suit not otherwise reimbursed~~ fees and ~~then~~ expenses, Licensee’s share of any ~~remainder~~ settlement amount or recovery for damages shall be ~~shared by the Parties equally, with such share of the Damages to be paid~~ reduced from eighty five percent (85%) in proportion to the ~~other party, as applicable, as soon as practicable upon receipt~~ percentage of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost fees and expense of paid by UVA LVG (and/or unreimbursed by Licensee prior to such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the DamagesSettlement). 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement (Agenus Inc)

Infringement. ~~11.2.1 Par and Advancis shall inform each~~ 6.1 Each party will notify the other ~~promptly~~ in writing of any ~~alleged~~ unauthorised use, misappropriation or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product rights in the ~~Territory~~ Licensed Technology of which the party becomes aware. 6.2 The Licensee has the first right (~~a "PRODUCT INFRINGEMENT")~~but is not obliged) to take legal action at its own cost against any unauthorised use, ~~then~~ misappropriation or infringement of any rights (including any contractual restrictions) concerning or included in the ~~Parties shall~~ Licensed Technology in the Field. The Licensee must discuss ~~whether or not to institute an infringement~~ any proposed legal action with ~~respect~~ OUI prior to ~~such Product Infringement~~the legal action being commenced, and take reasonable due account of the legitimate interests of OUI in the action it takes. ~~If the Parties agree~~ OUI hereby agrees to ~~institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and,~~ co-operate to the extent ~~possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens~~ reasonably required by the Licensee in the enforcement of such rights and the ~~like. Advancis may join Par as a party~~Licensee shall reimburse to OUI all reasonable external fees, costs and ~~Par shall execute~~ expenses of OUI in connection with such co-operation. 6.3 If the Licensee takes legal action under clause 6.2, the Licensee will: (a) indemnify and hold OUI and the University harmless against all ~~papers~~ costs (including lawyers’ and ~~perform~~ patent agents’ fees and expenses), claims, demands and liabilities arising out of or consequent upon such ~~acts as may be reasonably required. The cost~~ enforcement activities and ~~expense~~ will settle any invoice received from OUI in respect of such ~~suit shall be shared by the Parties equally. Any royalties~~costs, ~~payments~~claims, demands and liabilities indemnified hereunder within thirty (30) Business Days of receipt; and (b) treat any award of profits or damages (including, without limitation, punitive damages~~, expense,~~ ) after deduction of all costs (including lawyers’ and patent agents’ fees ~~or other awards (collectively, "DAMAGES"~~and expenses that are not recovered from an award of legal costs), ~~received by Advancis and/or Par~~ claims, demands and liabilities directly arising out of or consequent upon such enforcement activities which were reasonably and properly incurred, as Net Sales for the purposes of clause 8; and (c) subject to maintaining privilege or observing any confidentiality arrangements or orders, fully and effectively consult with Licensor in a ~~result of such suit, whether through judgment or settlement, shall first be used~~ timely manner before taking any material step in the legal action and take all reasonable steps to ~~reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share~~ keep OUI regularly informed of the ~~Damages~~ progress of the legal action, including, without limitation, any claims affecting the scope, enforceability or validity of the Licensed Technology. 6.4 If the Licensee has notified OUI in writing that it does not intend to ~~be paid~~ take any action in relation to the ~~other party~~unauthorised use, ~~as applicable, as soon as practicable upon receipt of~~ misappropriation or infringement or the ~~Damages. 11.2.4 In the event that only Advancis does~~ Licensee has not ~~agree to institute a suit against a Product Infringement pursuant to Section 11.2.3~~ taken any such action within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the ~~sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However~~notification under clause 6.1, ~~Par shall not prosecute~~ OUI may take such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the legal action at its own ~~expense~~cost. ~~In the event that Advancis does not so elect~~ If OUI takes legal action under clause 6.4, OUI will: (a) to ~~take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To~~ the extent that there is no breach or impropriety alleged against the Licensee in respect of the matter, not include, reference or name the Licensee in any ~~Damages become payable to any Third Party~~ such action or proceedings (including by way of adding the Licensee as a ~~result~~ defendant); (b) account to Licensee in respect of any award of profits or damages (including, without limitation, punitive damages) after deduction of all costs (including lawyers’ and patent agents’ fees and expenses that are not recovered from an award of legal costs), claims, demands and liabilities directly arising out of or consequent upon such enforcement activities which were reasonably and properly incurred, which Licensee shall treat as Net Sales for the purposes of clause 8; and (c) subject to maintaining privilege or observing any confidentiality arrangements or orders, fully and effectively consult with Licensee in a timely manner before taking any material step in the legal action and take all reasonable steps to keep the Licensee regularly informed of the progress of the legal action, ~~whether through judgment~~ [*] = CONFIDENTIAL TREATMENT REQUESTED including, without limitation, any claims affecting the scope, enforceability or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share validity of the ~~Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages~~Licensed Technology. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Licence of Technology (Nightstar Therapeutics PLC)

Infringement. ~~11.2.1 Par and Advancis~~ 8.1. Each party shall inform ~~each~~ the other promptly in writing of any alleged ~~or suspected~~ infringement of the Patent Rights by a ~~Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments,~~ third party and of provide any available evidence thereof. During the term of this Agreement, 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 “*****”. ~~11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of~~ (a) each Party shall be reimbursed for any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product expenses it incurred in the ~~Territory~~ action; (b) as to ordinary damages for past infringement, Licensee shall receive an amount equal to either (i) its lost profits, (ii) a ~~"PRODUCT INFRINGEMENT")~~reasonable royalty on the infringing sales, ~~then~~ 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 5.1; and (c) the Parties shall ~~discuss whether~~ share equally in any additional award, including any special or punitive damages. 8.2. If within six (6) months after having been notified of any alleged infringement, Licensee has been unsuccessful in persuading the alleged infringer to desist or has not otherwise brought and diligently is pursuing an infringement action, or if Licensee notifies Northwestern at any time prior thereto of its intention not to bring suit against any alleged infringer, 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 ~~an infringement action with respect~~ to ~~such Product Infringement. If~~ enforce the ~~Parties agree~~ Patent Rights pursuant to ~~institute such a suit~~this Agreement, ~~then Advancis shall institute and control such suit including~~ the ~~settlement or compromise thereof. Par~~ other party hereto shall, at the request of ~~Advancis~~the party initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like. ~~Advancis may join Par as a party~~No settlement, ~~and Par shall execute all papers and perform such acts as~~ consent judgment or other voluntary final disposition of the suit may be ~~reasonably required~~entered into without the consent of Northwestern, which consent shall not unreasonably be withheld. ~~The cost and expense of~~ Licensee shall indemnify Northwestern against any order for costs and/or expenses that may be made against Northwestern unless such suit ~~shall be shared~~ was brought by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement Northwestern pursuant to Section ~~11.2.3 within [***] of being notified of such alleged or suspected infringement~~8.2. While Licensee, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the ~~most recently completed [***] and [***]. However~~term of this Agreement, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to ~~institute such an infringement suit at~~ consent to a sublicense Northwestern may propose to any alleged infringer for future use of the Patent Rights, Licensee shall not unreasonably withhold its ~~cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise~~consent. ~~11.2.6~~ 8.4. In the event that a declaratory judgment action alleging the invalidity or non-infringement of any ~~Advancis~~ of the Patent Rights shall be brought other than in the context of a declaratory judgment action arising out of Northwestern’s enforcement pursuant to Section 8.2 or a counterclaim in an enforcement action pursuant to Section 8.2, or there is a need to otherwise defend the Patent Rights, ~~Advancis Know~~Northwestern shall have the first right within ninety (90) days receipt of notice to control the defense of such action, proceeding or otherwise, and Licensee shall reimburse Northwestern’s reasonable out-~~How or Program Developments shall be brought against Advancis and/or Par~~of-pocket legal costs and expenses incurred in the action, ~~Advancis, [***] INDICATES MATERIAL THAT~~ including attorney’s fees. THE COMPANY HAS ~~BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH~~ REQUESTED AN ORDER FROM THE SECURITIES AND EXCHANGE COMMISSION (THE “COMMISSION”) PURSUANT TO RULE ~~24b-2~~ 406 UNDER THE SECURITIES ~~EXCHANGE~~ ACT OF ~~1934~~1933, AS AMENDED, GRANTING CONFIDENTIAL TREATMENT TO SELECTED PORTIONS. ~~30 -------------------------------------------------------------------------------- at its option~~ACCORDINGLY, ~~shall have the right~~THE CONFIDENTIAL PORTIONS HAVE BEEN OMITTED FROM THIS EXHIBIT, ~~within [~~AND HAVE BEEN FILED SEPARATELY WITH THE COMMISSION. OMITTED PORTIONS ARE INDICATED IN THIS EXHIBIT WITH “***~~] after commencement of such action, to take over the sole defense of the action at its own expense~~**”. 8.5. In the event ~~that Advancis does not so elect to take over~~ Licensee challenges the ~~sole defense~~ validity or enforceability of the ~~action at its own expense~~Patent Rights, ~~Par~~ Licensee shall provide Northwestern ninety (90) days prior written notice and continue to make all payments required hereunder directly to Northwestern and have no right to pay into escrow or other account any amounts due to Northwestern under this Agreement. For purposes of clarity, Licensee shall not be ~~free to proceed and solely control such defense. To the extent that any Damages become payable~~ entitled to any ~~Third Party as a result of such action~~refund or offset for any amounts paid under this Agreement, ~~whether through judgment~~ including any paid prior to or ~~settlement,~~ during the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share period of the ~~Damages to be paid to~~ challenge even if the ~~other party, as applicable, as soon as practicable upon receipt of the Damages~~Patent Rights are held invalid or unenforceable. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement (Exicure, Inc.)

Infringement. ~~11.2.1 Par~~ 5.1 LICENSEE and ~~Advancis~~ OWNER shall each inform ~~each~~ the other promptly in writing if either of them become aware of any alleged ~~or suspected~~ infringement of Patent Rights by a ~~Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof~~third party. ~~11.2.2 Subject~~ 5.2 OWNER shall have the right, in his discretion, to ~~Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense,~~ elect to prosecute any claims arising from the infringement of ~~any Advancis~~ the Patent Rights~~, Advancis Know-How or Program Developments~~. ~~29 -------------------------------------------------------------------------------- 11.2.3~~ In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or OWNER chooses not to ~~institute an~~ prosecute any claim for infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request within thirty (30) days of ~~Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify~~ when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense he becomes aware of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, ~~Par may~~or if the OWNER fails to diligently pursue any infringement action, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis LICENSEE shall have the right to ~~institute~~ pursue the infringement action. In such event, LICENSEE shall have the right, if OWNER is a legally indispensable party, to bring such suit or action in the name of OWNER. OWNER shall have the right to join any such suit or action brought by LICENSEE. 5.3 LICENSEE shall pay all reasonable attorneys' fees and other costs incurred by OWNER or LICENSEE in an infringement ~~suit at its cost and expense and~~ action, including any action described in Section 5.6. 5.4 LICENSEE shall be entitled to retain all ~~payment, costs and damages~~ amounts received ~~as a result thereof, whether~~ by ~~judgment, settlement compromise~~ either OWNER or ~~otherwise~~LICENSEE from any infringement action if this Agreement has not been terminated. ~~11.2.6~~ 5.5 LICENSEE shall not enter into any settlement, consent judgment or other voluntary final disposition of any infringement action without the prior written consent of OWNER, which consent shall not be unreasonably withheld or delayed. 5.6 In the event that ~~a declaratory judgment~~ any person commences an action alleging the invalidity or non-infringement of any ~~Advancis~~ of the Patent ~~Rights~~Rights against LICENSEE, ~~Advancis Know-How or Program Developments~~ LICENSEE shall promptly notify OWNER, and the parties shall consult concerning the action to be ~~brought against Advancis and/or Par~~taken. OWNER, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the ~~right,~~ right within ~~[***]~~ thirty (30) days after commencement of such ~~action,~~ action to ~~take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed~~ intervene and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of ~~such suit~~the action, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par with counsel selected by OWNER. LICENSEE shall have the right to ~~select separate counsel to participate~~ join in ~~such legal defenses on Par's behalf. The Parties shall share~~ the ~~cost and expense~~ defense of ~~such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to~~ any such ~~suit~~suit or action by OWNER. To In such event, OWNER will confer with LICENSEE prior to making any decision regarding settlement or other significant decisions regarding the ~~extent that any Damages become payable to any third party as a result of~~ action and no such ~~action~~decision will be made without LICENSEE's consent, ~~whether through judgment~~ which consent will not be unreasonably withheld or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damagesdelayed. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement (Astralis LTD)

Infringement. ~~11.2.1 Par~~ 9.1 LICENSEE and ~~Advancis~~ PRINCETON shall promptly inform ~~each~~ the other ~~promptly~~ in writing of any alleged ~~or suspected~~ infringement of which it shall have notice by a ~~Third Party~~ third party of any patents within the Patent Rights and provide such other with any available evidence of ~~Advancis~~ infringement. 9.2 During the term of this Agreement, LICENSEE shall have the right, but shall not be obligated, to prosecute at its own expense any such infringements of the Patent Rights and, in furtherance of such right, PRINCETON hereby agrees that LICENSEE may join PRINCETON as a party plaintiff in any such suit, without expense to PRINCETON. The total cost of any such infringement action commenced or defended solely by LICENSEE shall be borne by LICENSEE, and LICENSEE shall keep any recovery or damages for past infringement derived therefrom. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of PRINCETON, which consent shall not unreasonably be withheld. LICENSEE shall indemnify PRINCETON against any order for costs that may be made against PRINCETON in such proceedings. 9.3 If within six (6) months after having been notified of any alleged infringement, LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE shall notify PRINCETON at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, PRINCETON shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Patent Rights, ~~Advancis Know-How or Program Developments~~and PRINCETON may, for such purposes, join LICENSEE as party plaintiff. 9.4 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 royalties otherwise thereafter due PRINCETON hereunder and apply the same toward reimbursement of its expenses, including reasonable attorneys' fees, in connection therewith. Any recovery of damages by LICENSEE for 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 PRINCETON for any ~~available evidence thereof~~royalties past due or withheld and applied pursuant to this Article IX. The balance remaining from any such recovery shall be divided equally between LICENSEE and PRINCETON. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 9.5 In the event that a ~~Third Party infringes Advancis~~ declaratory judgement action alleging invalidity or non-infringement of any of the Patent ~~Rights~~Rights shall be brought against LICENSEE, ~~Advancis Know-How or Program Developments owned by Advancis by manufacture~~and LICENSEE is not diligently defending such action, ~~sale or use~~ PRINCETON, at its option, shall have the right, within ninety (90) days after commencement of ~~a Product in~~ such action, to intervene and take over the ~~Territory (a "PRODUCT INFRINGEMENT")~~sole defense of the action at its own expense. 9.6 In any infringement suit as either party may institute to enforce the Patent Rights pursuant to this Agreement, ~~then~~ the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par other party hereto shall, at the request and expense of ~~Advancis~~the party initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like~~. Advancis may join Par as a party~~. 9.7 LICENSEE, ~~and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense~~ during the exclusive period of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlementthis Agreement, shall ~~first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by~~ have the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined sole right in accordance with the ~~dispute resolution process set forth in Section 17.2.2 herein. In~~ terms and conditions herein to sublicense any ~~such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at~~ alleged infringer under the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights ~~or Advancis Know-How without the written consent of Advancis~~for future infringements. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement (Intercardia Inc)

Infringement. ~~11.2.1 Par~~ A. LICENSEE and ~~Advancis~~ CMCC shall each inform ~~each~~ the other promptly in writing of any alleged ~~or suspected~~ infringement by a ~~Third Party~~ third party of ~~any~~ the Patent Rights in the Field of ~~Advancis Patent Rights, Advancis Know-How or Program Developments,~~ Use and of any available evidence thereof.’ ~~11.2.2 Subject~~ B. During the term of this License Agreement, LICENSEE shall have the right, but not the obligation, to ~~Sections 11.2.3 and 11.2.4, Advancis may~~prosecute and/or defend, at its ~~sole option~~ own expense and ~~expense~~utilizing counsel of its choice, ~~prosecute~~ any infringement of, and/or challenge to, the ~~infringement~~ Patent Rights; provided, however that CMCC shall have the right to approve LICENSEE’s choice of counsel, such approval not to be unreasonably withheld. In furtherance of such right, CMCC hereby agrees that LICENSEE may join CMCC as a party in any such suit, without expense to CMCC. No settlement, consent judgment or other voluntary final disposition of any ~~Advancis Patent Rights, Advancis Know-How or Program Developments~~such suit may be entered into without the consent of CMCC which consent shall not unreasonably be withheld. ~~29 --------------------------------------------------------------------------------~~LICENSEE shall indemnify CMCC against any order for costs that may be made against CMCC in any such suit. ~~11.2.3~~ C. In the event that ~~a Third Party infringes Advancis~~ LICENSEE shall undertake the enforcement and/or defense of the Patent Rights, ~~Advancis Know-How~~ as provided in Paragraph 7.2, LICENSEE may withhold up to fifty percent (50%) of the royalties otherwise thereafter due CMCC in Article IV(A)(3) and apply such amount toward reimbursement of LICENSE.E’s expenses, including attorneys’ fees, in connection therewith. Any recovery of damages by LICENSEE, 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 CMCC for any royalties past due or ~~Program Developments owned by Advancis by manufacture~~withheld and applied pursuant to this paragraph. Any balance remaining from any such recovery shall be apportioned 50% to LICENSEE and 50% to CMCC. D. If within six (6) months after receiving notice of any alleged infringement, ~~sale~~ LICENSEE shall have been unsuccessful in persuading the alleged infringement to desist, or ~~use~~ shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE Shall notify CMCC, at any time prior thereto, of ~~a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or~~ its intention not to ~~institute an~~ bring suit against the alleged infringer, then, and in those events only, CMCC shall have the right, but not the obligation, to prosecute, at its own expense and utilizing counsel of its choice, any cost of any such infringement action ~~with respect~~ commenced solely by CMCC shall be borne by CMCC and CMCC shall keep any recovery or damages for past infringement derived therefrom. CMCC shall indemnify LICENSEE against any order for costs that may be made against LICENSEE in any such suit. E. In any suit to ~~such Product Infringement. If~~ enforce and/or defend the ~~Parties agree~~ Patent Rights pursuant to ~~institute such a suit~~this License Agreement, ~~then Advancis shall institute and~~ the party not in control of such suit ~~including the settlement or compromise thereof. Par~~ shall, at the request and expense of ~~Advancis~~the controlling party, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like~~. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense~~ . F. LICENSEE during the period of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlementthis License Agreement, shall ~~first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by~~ have the ~~Parties equally~~sole right, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the ~~dispute resolution process set forth in Section 17.2.2~~ terms and conditions herein~~. In~~ , to sublicense any ~~such infringement suit Par may institute to enforce Advancis~~ alleged infringer for future use of the Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Exclusive License Agreement (Boston Life Sciences Inc /De)

Infringement. ~~11.2.1 Par and Advancis shall inform each other promptly in writing~~ 5.1 In the event that: (a) any Licensed Patent is attacked or being a patent application is opposed; (b) any application for a patent is made by or any patent is granted to a third party by reason of ~~any alleged~~ which the third party may be granted or ~~suspected infringement by a Third Party of~~ may have been granted rights which conflict with any of ~~Advancis Patent Rights, Advancis Know-How~~ the rights granted to Licensee or ~~Program Developments, and of~~ its Affiliates under any ~~available evidence thereof.~~Licensed Patent; ~~11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the~~ (c) any unlicensed activities are carried on by any third party which could constitute an infringement of any ~~Advancis~~ Licensed Patent ~~Rights~~(which for the purposes of this clause 5 shall be deemed to include any patent (whether in application or granted) in respect of an Improvement of Licensor); or (d) any application is made for a compulsory licence under any Licensed Patent, ~~Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In~~ the ~~event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use~~ party to whose attention such activity has been drawn shall promptly inform the other party of ~~a Product in~~ the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute nature and ~~control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the~~ extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such ~~suit~~ known activity, following which Licensor and Licensee shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable ~~upon receipt of~~ consult together to decide what steps shall be taken to resolve the ~~Damages~~activity. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option 5.2 Licensor and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par Licensee shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute take all ~~papers and perform such acts~~ steps as may be ~~reasonably required~~agreed by them under clause 5.1, at including the ~~expense~~ institution of ~~Par. Par shall bear all~~ legal proceedings where necessary in the ~~cost~~ name of one of the parties or in the joint names of the Licensor and ~~expense of such suit and Par shall retain all payment, costs and damages received~~ Licensee as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancisappropriate. ~~11.2.5 In the event that only Par does not~~ 5.3 If Licensor and Licensee fail to agree under clause 5.2 and subject to ~~institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement~~clause 5.4, ~~then Advancis~~ Licensor shall have the right to ~~institute such an~~ take all steps to prevent the infringement ~~suit~~ of the Licensed Patent and Licensee shall, at ~~its cost~~ Licensor's request and ~~expense~~ expense, render all reasonable assistance within Licensee's power. Licensor shall bear all costs in relation to any proceeding which are under the exclusive control of the Licensor and Licensor shall be entitled to retain ~~all payment~~for its own absolute benefit any damages, costs ~~and damages received as a result thereof, whether by judgment, settlement compromise~~ or ~~otherwise~~other expenses awarded or recovered in any such proceedings. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, 5.4 If Licensor fails within ~~[***] after commencement of such action,~~ 1 month to take ~~over the sole defense of the action at its own expense. In the event~~ those steps as are mentioned under clause 5.3 or if Licensor informs Licensee that ~~Advancis~~ Licensor does not ~~so elect~~ intend to take ~~over the sole defense of the action at its own expense~~any steps under clause 5.3, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par Licensee shall have the right and is authorised by Licensor to ~~select separate counsel to participate~~ take those steps independently. In so doing Licensee shall not be taken as acting as the agent or in ~~such legal defenses~~ any way on ~~Par's behalf. The Parties~~ behalf of Licensor but Licensor shall ~~share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it~~ give all reasonable assistance ~~and cooperation with respect~~ at Licensee's expense to facilitate any proceedings by Licensee. Licensee shall bear all costs but shall be entitled to retain for its own absolute benefit any damages, costs or other expenses awarded or recovered in any such ~~suit. To the extent~~ proceedings. 5.5 Nothing in this agreement shall constitute any representation that any ~~Damages become payable~~ Licensed Patent (if a patent application) shall proceed to ~~any third party as a result of such action, whether through judgment~~ grant or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder if granted shall be ~~shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages~~valid. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Patent License Agreement (In Veritas Medical Diagnostics, Inc.)

Infringement. ~~11.2.1 Par~~ (a) The Vendor agrees that it shall defend, ------------ indemnify and ~~Advancis shall inform each other promptly in writing of any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights~~hold harmless, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, ~~Par~~ 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 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 ~~free to proceed and solely control such defense. To~~ assessed against, or incurred by, the ~~extent that any Damages become payable to any Third Party as a result~~ Owner on account of such ~~action~~infringement or violation, ~~whether through judgment~~ 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 ~~settlement~~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 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 ~~Parties~~ party claiming such indemnification shall ~~bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as~~ give written notice (a ~~result of such action, whether through judgment or settlement, shall first be used~~ "Claim Notice") to ~~reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by~~ ------------ the ~~Parties equally, with such share of the Damages to be paid to the other party, as applicable,~~ Vendor as soon as practicable ~~upon receipt~~ after the party entitled to indemnification becomes aware of any 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 ~~Damages. 11.2.7 In~~ Owner 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 ~~that a third party institutes~~ 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 same, at the Vendor's cost, risk and expense; and (iii) compromise or settle such Claim, which compromise or settlement shall be made only with the written consent of the Owner (which may not be unreasonably withheld), unless such compromise or settlement includes an unconditional release of any ~~suit~~ claims against ~~Par and/or Advancis for patent infringement involving~~ the ~~Products,~~ Owner in which event such written consent of the ~~Party sued~~ Owner shall ~~promptly notify~~ not be required. If the ~~other Party in writing. Advancis shall~~ Vendor fails to assume the defense of such ~~suit~~Claim within twenty (20) calendar days after receipt of the Claim Notice, ~~provided, however, that if Par is also a defendant in~~ the Owner against which such ~~action and Par shall have reasonably concluded that there may be legal defenses available~~ Claim has been asserted will (upon delivering notice to ~~it that are different from or additional~~ such effect to ~~those available to Advancis, Par shall~~ the Vendor) have the right to ~~select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall~~undertake, at the ~~other~~Vendor's ~~request~~cost and expense, ~~provide~~ 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 defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to ~~it reasonable assistance~~ and ~~cooperation~~ in accordance with ~~respect~~ this Agreement and for any final judgment (subject to any ~~such suit. To the extent that any Damages become payable to any third party as a result~~ right of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent applicationappeal), and the ~~Parties~~ Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment. (b) The Vendor's obligation under this subsection shall ~~cooperate with each other so~~ not extend to alleged infringements or violations that ~~each Party can determine whether valid rights of a third party are likely to be infringed~~ arise because the Products provided by the ~~manufacture~~Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, ~~use~~ recommended or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated approved by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------Vendor.

Appears in 1 contract

Sources: System Equipment Purchase Agreement (Leap Wireless International Inc)

Infringement. ~~11.2.1 Par and Advancis~~ 7.1 Each party to this Agreement shall ~~inform each~~ promptly notify the other ~~promptly~~ party in writing of any alleged ~~or suspected~~ infringement ~~by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments,~~ and of any available evidence ~~thereof~~of infringement by a third party of any patents within the Patent Rights of which it becomes aware. ~~11.2.2 Subject~~ 7.2 During the term of this Agreement, LICENSEE shall have the right, but shall not be obligated, to ~~Sections 11.2.3 and 11.2.4, Advancis may,~~ prosecute at its ~~sole option~~ own expense any such infringements of the Patent Rights and, in furtherance of such right, LICENSEE hereby agrees that JOHN▇ ▇▇▇K▇▇▇ ▇▇▇ join LICENSEE as a party plaintiff in any such suit, without expense to JOHN▇ ▇▇▇K▇▇▇, ▇▇ovided, however, that such right to bring an infringement action shall remain in effect only for so long as the license granted herein remains exclusive. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of JOHN▇ ▇▇▇K▇▇▇, ▇▇ich consent shall not unreasonably be withheld. LICENSEE shall indemnify JOHN▇ ▇▇▇K▇▇▇ ▇▇▇inst any order for costs or other expenses that may be made against JOHN▇ ▇▇▇K▇▇▇ ▇▇ such proceedings. The total cost of any such infringement action commenced or defended solely by LICENSEE shall be borne by LICENSEE, and ~~expense~~LICENSEE shall keep any recovery damages for past infringement derived therefrom, ~~prosecute~~ after payments to JOHN▇ ▇▇▇K▇▇▇ ▇▇ the royalty rate set forth in Paragraph 4.1(c)(i) applied to the sum of the recovery, damages or any other amount received in any form of disputation and/or in settlement of any infringement or alleged infringement of the Patent Rights remaining after LICENSEE has reimbursed itself for all costs, including legal costs, associated with the prosecution. 7.3 If within six (6) months after having been notified of any ~~Advancis Patent Rights, Advancis Know-How or Program Developments. 29 --------------------------------------------------------------------------------~~alleged infringement, ~~11.2.3~~ 7.4 In the event that a ~~Third Party infringes Advancis~~ declaratory judgment action alleging invalidity or noninfringement of any of the Patent ~~Rights~~Rights shall be brought against LICENSEE, ~~Advancis Know-How or Program Developments owned by Advancis by manufacture~~JOHN▇ ▇▇▇K▇▇▇ ▇▇ its option, ~~sale or use~~ shall have the right, within thirty (30) days after commencement of ~~a Product~~ such action, to intervene and participate in the ~~Territory (a "PRODUCT INFRINGEMENT")~~defense of the action at their own expense. 7.5 In any infringement suit that any party hereto may institute to enforce the Patent Rights pursuant to this Agreement, ~~then~~ the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par other party hereto shall, at the request and expense of ~~Advancis~~the party initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like~~. Advancis may join Par as a party~~. 7.6 LICENSEE, ~~and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense~~ during the Exclusive Period of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlementthis Agreement, shall ~~first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by~~ have the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined sole right in accordance with the ~~dispute resolution process set forth in Section 17.2.2 herein~~terms and conditions herein to sublicense any alleged infringer under the Patent Rights to avoid future infringements. In Amounts received from any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments * constituting retroactive royalties shall be ~~brought against Advancis and/or Par~~considered amounts received in settlement and accounted for under Paragraph 7.2 above. Otherwise, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of amounts received from such ~~action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par~~ sublicensee shall be ~~free to proceed~~ treated in accordance with Paragraph * Certain information on this page has been omitted and ~~solely control such defense~~filed separately with the Commission. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation Confidential treatment has been requested with respect to ~~any such suit. To~~ the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damagesomitted portions. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement (Sangamo Biosciences Inc)

Infringement. ~~11.2.1 Par~~ 7.1 UNIVERSITY as owner of the Patent Rights shall control activities related to enforcing the Patent Rights. LICENSEE as the exclusive commercial user of the Patent Rights shall assume primary responsibility for enforcing the Patent Rights within relevant commercial markets in the FIELD OF USE. In exercising these responsibilities, LICENSEE shall promptly contact alleged third party infringers and ~~Advancis~~ take all reasonable steps to persuade such third parties to desist from infringing the Patent Rights, including initiating and prosecuting an infringement action if necessary, or defending a challenge to the validity of the Patent Rights. LICENSEE also shall ~~inform~~ notify UNIVERSITY of each instance of alleged infringement and shall keep UNIVERSITY informed of all stages of Patent Rights enforcement. LICENSEE may not use the name of UNIVERSITY as party plaintiff without prior written consent of UNIVERSITY. All costs of any action to enforce the Patent Rights taken by LICENSEE shall be borne by UIC Intellectual Property Office LICENSEE and LICENSEE shall keep any recovery of damages derived therefrom, the excess of such recovery over such costs shall be included in LICENSEE's Net Sales. No settlement, consent judgment or other ~~promptly~~ voluntary final disposition of the suit may be entered into without the consent of UNIVERSITY, which consent shall not unreasonably be withheld. 7.2 During the term of this Agreement, UNIVERSITY shall have the right, but shall not be obligated, to assume from LICENSEE the primary responsibility of enforcing the Patent Rights or any individual case of alleged or actual infringement. In such case UNIVERSITY shall notify LICENSEE in writing of ~~any alleged or suspected infringement by a Third Party~~ its intention to exercise this right, which will become effective within sixty (60) days of LICENSEE's receiving such written notice. UNIVERSITY agrees to keep LICENSEE informed of all stages of its enforcing. UNIVERSITY may use the name of LICENSEE as party plaintiff. All costs of any action to enforce the Patent Rights taken by UNIVERSITY shall be borne by UNIVERSITY and UNIVERSITY shall share with LICENSEE any recovery of ~~Advancis Patent Rights, Advancis Know-How or Program Developments,~~ damages derived therefrom on a pro rata basis per costs incurred by UNIVERSITY and ~~of any available evidence thereof~~LICENSEE respectively in such policing activity. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 7.3 In the event ~~that a Third Party infringes Advancis~~ LICENSEE does not enforce the Patent ~~Rights~~Rights per section 7.1 above, ~~Advancis Know-How or Program Developments owned~~ UNIVERSITY shall inform LICENSEE in writing of same. UNIVERSITY may terminate this Agreement within sixty (60) days of receipt by ~~Advancis by manufacture~~LICENSEE of such notice pursuant to Article 12.3 below. 7.4 In any infringement suit as either party may institute to enforce the Patent Rights against third parties pursuant to this Agreement, ~~sale or use of a Product in~~ the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par other party hereto shall, at the request and expense of ~~Advancis~~the party initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like~~. Advancis may join Par as a party~~. 7.5 LICENSEE, ~~and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense~~ during the exclusive period of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlementthis Agreement, shall ~~first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by~~ have the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined sole right in accordance with the ~~dispute resolution process set forth~~ terms and conditions herein to sublicense any alleged infringer in ~~Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis~~ the FIELD OF USE for future use of the Patent Rights, ~~Advancis Know~~with any royalty or up-~~How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and,~~ front fees to ~~the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis~~ be shared with UNIVERSITY as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancisper Clause 4.1(c) above. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis 7.6 Each party shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to notify the other ~~party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In~~ in writing in the event that a third party ~~institutes~~ shall bring a claim of infringement against UNIVERSITY or LICENSEE, either in the United States or in any ~~suit~~ foreign country in which there are Patent Rights. If the alleged infringement is so substantial as to threaten the competitive position of LICENSEE and/or LICENSEE is temporarily enjoined from exercise of its license hereunder, and if UNIVERSITY elects not to defend against ~~Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense~~ such claim and not to obtain a license to permit LICENSEE to exercise its license free of such ~~suit~~claim, ~~provided~~then LICENSEE may in its own name and at its sole expense defend such claim and may compromise, ~~however, that if Par is also a defendant~~ settle or otherwise pursue such defense in such ~~action~~ a manner and ~~Par~~ on such terms as LICENSEE shall ~~have reasonably concluded that there~~ see fit. UNIVERSITY, at its own expense and through counsel of its selection may ~~be legal defenses available~~ become a party to ~~it that are different from or additional to those available to Advancis~~such defense and/or settlement and compromise. In any event, ~~Par~~ UNIVERSITY shall have the right to ~~select separate counsel~~ defend, at its own expense, any such third party UIC Intellectual Property Office claim or action and to settle or compromise the same in such manner as its shall see fit. LICENSEE may participate in such ~~legal defenses~~ litigation or claim on ~~Par's behalf. The Parties shall share~~ its behalf at its own expense. 7.7 In the ~~cost~~ event LICENSEE is permanently enjoined from exercising its license rights granted hereunder pursuant to an infringement action brought by a third party, or if both LICENSEE and ~~expense~~ UNIVERSITY elect not to undertake the defense or settlement of such ~~defense equally. Each Party shall~~a claim of alleged infringement for a period of six months from notice of such claim or suit, ~~at the other's request, provide~~ then LICENSEE sole remedy shall be to ~~it reasonable assistance and cooperation~~ terminate this Agreement with respect to ~~any such suit. To~~ the ~~extent that any Damages become payable~~ infringing patent claims following thirty (30) days' written notice to ~~any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally,~~ UNIVERSITY and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated in accordance with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------Article XI hereof.

Appears in 1 contract

Sources: Exclusive License Agreement (Advanced Life Sciences Holdings, Inc.)

Infringement. ~~11.2.1 Par and Advancis~~ Company shall ~~inform each other promptly in writing of~~ have the first right to enforce any patent within PATENT RIGHTS against any infringement or alleged ~~or suspected~~ infringement ~~by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments~~thereof, and of shall at all times keep JHU informed as to the status thereof. Before Company commences an action with respect to any ~~available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the~~ infringement of ~~any Advancis Patent Rights~~such patents, ~~Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In~~ Company shall give careful consideration to the ~~event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use~~ views of ~~a Product~~ JHU and to potential effects on the public interest in ~~the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss~~ making its decision whether or not to ~~institute an infringement action with respect to such Product Infringement~~▇▇▇. ~~If the Parties agree to institute such a suit~~Thereafter, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par Company may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, ~~Par~~ institute suit against any such infringer or alleged infringer and 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. If required by law, JHU shall permit action under this Section to be ~~free to proceed and solely control such defense~~brought in its name, including being joined as party-plaintiff. ~~To the extent that any Damages become payable to any Third Party as a result of such action~~However, ~~whether through~~ no settlement, consent judgment or other voluntary final disposition of the suit that concedes the invalidity or unenforceability of any patent within PATENT RIGHTS may be entered into without the prior written consent of JHU, which consent shall not be unreasonably withheld. This right to ▇▇▇ for infringement shall not be used in an arbitrary or capricious manner. JHU shall reasonably cooperate in any such litigation at Company’s expense. Company may delegate its right to enforce the PATENT RIGHTS under this Section 4.3 to AFFILIATED COMPANIES or SUBLICENSEES, provided that such AFFILIATED COMPANIES and SUBLICENSEES agree to comply with the applicable terms of this Section 4.3. If within [*] days following a request by JHU that Company take action to ▇▇▇▇▇ any commercially significant infringing activity, such infringing activity has not been abated and if Company has not brought suit against the infringer or begun negotiations regarding the terms under which Company would grant a sublicense to the infringer, then 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. However, no settlement, ~~the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through~~ consent judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share other voluntary final disposition of the ~~Damages to be paid to~~ suit that concedes the ~~other party, as applicable, as soon as practicable upon receipt~~ invalidity or unenforceability of ~~the Damages. 11.2.7 In the event that a third party institutes~~ any ~~suit against Par and/or Advancis for~~ patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there within PATENT RIGHTS may be ~~legal defenses available to it that are different from or additional to those available to Advancis~~entered into without the prior written consent of Company, ~~Par~~ which consent shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first not be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damagesunreasonably withheld. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Exclusive License Agreement (Graybug Vision, Inc.)

Infringement. ~~11.2.1 Par and Advancis shall inform each~~ 9.1 Each party agrees to notify the other promptly ~~in writing~~ of any ~~alleged~~ infringement of the LICENSED PATENTS in the LICENSED FIELD, of which either party is or ~~suspected~~ becomes aware. 9.2 With respect to any such infringement ~~by a Third Party~~ of the LICENSED PATENTS in the LICENSED PATENT FIELD, HGS shall have the first right, but not the obligation, to bring an action for infringement at its expense. LICENSEE agrees to cooperate fully with HGS in connection with any ~~of Advancis Patent Rights~~such action. Recoveries or reimbursements from any such action shall first be applied to reimburse HGS for litigation costs, ~~Advancis Know-How or Program Developments~~then to LICENSEE for its costs in cooperating in such action, and ~~of any available evidence thereof~~the balance shall be divided evenly between HGS and LICENSEE. ~~11.2.2 Subject to Sections 11.2.3 and 11.2.4~~9.3 If, ~~Advancis may, at its sole option and expense, prosecute~~ after ninety (90) days from written notice by LICENSEE of the infringement of a LICENSED PATENT in the LICENSED FIELD, HGS elects not to bring an action for infringement, LICENSEE shall have the right, but not the obligation, to bring an action for infringement. The written notice required by this section shall contain sufficient evidence to establish a prima facie case of infringement. Before LICENSEE or its sublicensees commence an action with respect to any ~~Advancis Patent Rights~~infringement of such patents, ~~Advancis Know~~LICENSEE shall give careful consideration to the views of HGS and to potential effects on the public interest in making its decision whether or not to ▇▇▇ and in the case of a sublicense, shall report such views to the sublicensee. 9.4 If LICENSEE or its sublicensee elects to commence an action described in Section 9.3 and HGS is a legally indispensable party to such action, HGS agrees to join the action as co-~~How~~ plaintiff. Upon doing so, HGS shall jointly control the action with LICENSEE or ~~Program Developments~~its sublicensee. 9.5 LICENSEE shall reimburse HGS for any costs HGS incurs as part of an action brought by LICENSEE or its sublicensee pursuant to Section 9.3, irrespective of whether HGS shall become a co-plaintiff. 9.6 If LICENSEE or its sublicensee elects to commence an action as described above, LICENSEE may reduce, by up to fifty percent (50%), the royalty due to HGS earned under the patent subject to suit by fifty percent (50%) of the amount of the expenses and costs of such action, including attorney fees. ~~29 -------------------------------------------------------------------------------- 11.2.3~~ In the event that ~~a Third Party infringes Advancis Patent Rights~~such fifty percent (50%) of such expenses and costs exceed the amount of royalties withheld by LICENSEE for any calendar year, ~~Advancis Know-How~~ LICENSEE may to that extent reduce the royalties due to HGS from LICENSEE in succeeding calendar years, but never by more than fifty percent (50%) of the royalty due in any one year. 9.7 No settlement, consent judgment or ~~Program Developments owned by Advancis by manufacture, sale or use~~ other voluntary final disposition of ~~a Product in~~ the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How entered into without the written consent of ~~Advancis~~HGS, which consent shall not be unreasonably withheld. ~~11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement~~ 9.8 Recoveries or reimbursements from an action commenced pursuant to Section ~~11.2.3 within [***] of being notified of~~ 9.3 shall first be applied to reimburse LICENSEE and HGS for litigation costs not paid from royalties and then to reimburse HGS for royalties withheld. Any remaining recoveries or reimbursements shall be treated as NET SALES and royalties shall be paid to HGS as provided in this Agreement on such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwiseNET SALES. ~~11.2.6~~ 9.9 In the event that a declaratory judgment action alleging invalidity ~~or non-infringement~~ of any ~~Advancis Patent Rights, Advancis Know-How or Program Developments~~ of the PATENTS shall be brought against ~~Advancis and/or Par~~LICENSEE or HGS, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- HGS at its sole option, shall have the ~~right, within [***] after commencement of such action,~~ right to intervene and take over the ~~sole~~ defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement (Corautus Genetics Inc)

Infringement. ~~11.2.1 Par and Advancis~~ 8.1 Licensee shall inform ~~each other~~ USM promptly in writing of any alleged ~~or suspected~~ infringement of the Patent Rights by a ~~Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments,~~ third party and of any available evidence thereof. ~~11.2.2 Subject to Sections 11.2.3 and 11.2.4~~8.2 During the term of this Agreement, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, USM shall have the right, ~~within [***] after commencement of such action~~but shall not be obligated, to ~~take over the sole defense of the action~~ prosecute at its own ~~expense~~expense any such infringements of the Patent Rights. If USM prosecutes any such infringement, Licensee agrees that USM may include Licensee as a co-plaintiff in any such suit, without expense to Licensee. The total cost of any such infringement action commenced or defended solely by USM shall be borne by USM, but USM shall keep any recovery or damages for past infringement derived from said suit, whether resulting from a judgment, settlement, or otherwise, as reimbursement for any and all expenses, costs, and efforts expended by USM in pursuit of the claim. The remainder, if any, shall then be divided between USM and Licensee in an equitable manner to allow USM to receive a portion thereof equivalent to the royalty that USM would have received but for the infringement. 8.3 If within six (6) months after having been notified of any alleged infringement or such shorter time prescribed by law, USM shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if USM 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, and Licensee may, but only after obtaining consent from and authority from the Attorney General for the State of Mississippi to do so for such purposes, use the name of USM 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. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of USM, which consent shall not be unreasonably withheld. Licensee shall indemnify USM from and against all costs, expenses, judgments, or other adverse results that arise during or that result from such proceedings or the actions associated therewith. 8.4 In the event that ~~Advancis does not so elect to take over~~ Licensee shall undertake the ~~sole~~ enforcement and/or defense of the ~~action at~~ Patent Rights by litigation, Licensee may withhold up to fifty percent (50%) of the royalties otherwise thereafter due USM hereunder and apply the same toward reimbursement of its ~~own expense~~expenses, ~~Par~~ including reasonable attorney's fees, in connection therewith. Said withholding of royalties shall begin no earlier than the date Licensee first receives a ▇▇▇▇ for professional services or expenses for the enforcement and/or defense of the Patent Rights in litigation. Any recovery of damages by Licensee for any such suit shall be ~~free~~ applied first in satisfaction of any unreimbursed expenses and legal fees of Licensee relating to ~~proceed and solely control such defense. To~~ the ~~extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally~~suit, and ~~shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment~~ next toward reimbursement to USM for any royalties past due or ~~settlement, shall first be used~~ withheld and applied pursuant to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------this Section

Appears in 1 contract

Sources: Patent License Agreement

Infringement. 11.2.1 Par and Advancis shall inform each other promptly in writing of any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 19B.1 In the event that ~~a Third Party infringes Advancis Patent Rights~~any claim, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, ~~then Advancis~~ or other legal proceeding is threatened or commenced against Gilardoni that is founded, in whole or in part, on an allegation that any Vivid Product infringes any trade secret, trademark, patent, copyright or other intellectual property rights belonging to a third party, Gilardoni will give Vivid prompt written notice thereof and Vivid may elect to assume primary control of the defense to or settlement of such dispute. Gilardoni shall ~~institute and control~~ cooperate fully with Vivid in any such ~~suit including the~~ defense, settlement or compromise ~~thereof~~made by Vivid. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par Neither Gilardoni nor Vivid shall ~~execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees~~ enter into any settlement agreement or other ~~awards (collectively~~voluntary resolution of any such claim, ~~"DAMAGES")~~suit, ~~received~~ or other legal proceeding without obtaining the other's prior written consent thereto. If Gilardoni has complied fully with the procedures set forth in this Section, Vivid will indemnify and hold Gilardoni harmless from and against any loss, cost, damage, or other expenses incurred by ~~Advancis and/or Par~~ Gilardoni as a result of such claim, suit, ~~whether through judgment~~ or ~~settlement~~legal proceeding. In addition, ~~shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share~~ if a final injunction is obtained against Gilardoni's use of the ~~Damages~~ Vivid Product, or if in the opinion of Vivid the Vivid Product is likely to ~~be paid to the other party, as applicable, as soon as practicable upon receipt~~ become subject of ~~the Damages. 11.2.4 In the event that only Advancis does not agree to institute~~ a ~~suit against a Product Infringement pursuant to Section 11.2.3 within [***]~~ successful claim of ~~being notified of such alleged or suspected~~ infringement, ~~Par~~ Vivid may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have (a) procure for Gilardoni the right to ~~settle~~ continue distributing and using the Vivid Product, or ~~compromise such action~~ (b) replace or ~~take any steps~~ modify said product so that ~~adversely affect the scope~~it becomes non-infringing, ~~validity~~or (c) if neither (a) or (b) are reasonably available, ~~enforceability or ownership~~ accept return of ~~Advancis Patent Rights or Advancis Know~~Vivid Product sold hereunder, grant a credit therefore as depreciated on a five-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis year straight-line basis and terminate this Agreement. This indemnification procedure shall be null and void and Vivid shall have ~~the right~~ no liability to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any ~~Damages become payable~~ claim is based on any use of the Vivid Product in combination with any item not supplied or approved in writing by Vivid, or if the Vivid Product has been tampered with, or modified in any way except as provided in this Agreement without the express written consent of Vivid, or if Gilardoni or its sub- distributor, affiliate, or customer has any property interest in said claim, suit, or legal proceeding, or any license to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damagesright so asserted. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Distribution Agreement (Vivid Technologies Inc)

Infringement. ~~11.2.1 Par and Advancis~~ 7.1 Each party to this Agreement shall ~~inform each~~ promptly notify the other ~~promptly~~ party in writing of any alleged ~~or suspected~~ infringement ~~by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments,~~ and of any available evidence ~~thereof~~of infringement by a third party of any patents within the Patent Rights of which it becomes aware. ~~11.2.2 Subject~~ 7.2 During the term of this Agreement, LICENSEE shall have the right, but shall not be obligated, to ~~Sections 11.2.3 and 11.2.4, Advancis may,~~ prosecute at its ~~sole option~~ own expense any such infringements of the Patent Rights and, in furtherance of such right, LICENSEE hereby agrees that JOHN▇ ▇▇▇K▇▇▇ ▇▇▇ join LICENSEE as a party plaintiff in any such suit, without expense to JOHN▇ ▇▇▇K▇▇▇, ▇▇ovided, however, that such right to bring an infringement action shall remain in effect only for so long as the license granted herein remains exclusive. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of JOHN▇ ▇▇▇K▇▇▇, ▇▇ich consent shall not unreasonably be withheld. LICENSEE shall indemnify JOHN▇ ▇▇▇K▇▇▇ ▇▇▇inst any order for costs or other expenses that may be made against JOHN▇ ▇▇▇K▇▇▇ ▇▇ such proceedings. The total cost of any such infringement action commenced or defended solely by LICENSEE shall be borne by LICENSEE, and ~~expense~~LICENSEE shall keep any recovery damages for past infringement derived therefrom, ~~prosecute~~ after payments to JOHN▇ ▇▇▇K▇▇▇ ▇▇ the royalty rate set forth in Paragraph 4.1(c)(i) applied to the sum of the recovery, damages or any other amount received in any form of disputation and/or in settlement of any infringement or alleged infringement of the Patent Rights remaining after LICENSEE has reimbursed itself for all costs, including legal costs, associated with the prosecution. 7.3 If within six (6) months after having been notified of any ~~Advancis Patent Rights, Advancis Know-How or Program Developments. 29 --------------------------------------------------------------------------------~~alleged infringement, ~~11.2.3~~ 7.4 In the event that a ~~Third Party infringes Advancis~~ declaratory judgment action alleging invalidity or noninfringement of any of the Patent ~~Rights~~Rights shall be brought against LICENSEE, ~~Advancis Know-How or Program Developments owned by Advancis by manufacture~~JOHN▇ ▇▇▇K▇▇▇ ▇▇ its option, ~~sale or use~~ shall have the right, within thirty (30) days after commencement of ~~a Product~~ such action, to intervene and participate in the ~~Territory (a "PRODUCT INFRINGEMENT")~~defense of the action at their own expense. 7.5 In any infringement suit that any party hereto may institute to enforce the Patent Rights pursuant to this Agreement, ~~then~~ the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par other party hereto shall, at the request and expense of ~~Advancis~~the party initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like~~. Advancis may join Par as a party~~. 7.6 LICENSEE, ~~and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense~~ during the Exclusive Period of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlementthis Agreement, shall ~~first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by~~ have the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined sole right in accordance with the ~~dispute resolution process set forth in Section 17.2.2 herein~~terms and conditions herein to sublicense any alleged infringer under the Patent Rights to avoid future infringements. In Amounts received from any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments sublicensee constituting retroactive royalties shall be ~~brought against Advancis and/or Par~~considered amounts received in settlement and accounted for under Paragraph 7.2 above. Otherwise, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of amounts received from such ~~action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par~~ sublicensee shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration treated in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------Paragraph

Appears in 1 contract

Sources: License Agreement (Sangamo Biosciences Inc)

Infringement. ~~11.2.1 Par and Advancis~~ 9.1 LICENSEE shall inform ~~each other~~ M.I.T. promptly in writing of any alleged ~~or suspected~~ infringement of which it shall have knowledge by a ~~Third Party~~ third party of any patents within the Patent Rights and provide any available evidence of ~~Advancis~~ infringement. 9.2 During the term of this Agreement, M.I.T. shall have the right, but shall not be obligated, to prosecute at its own expense any such infringements of the Patent Rights and, in furtherance of such right, LICENSEE hereby agrees that M.I.T. may join 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 M.I.T. shall be borne by M.I.T. M.I.T. shall indemnify LICENSEE against any order for payment that may be made against LICENSEE in such proceedings. No settlement, consent judgement or other voluntary final disposition of the suit may be entered into without the consent of LICENSEE, which consent shall not unreasonably be withheld. Any recovery or damages for past infringement derived from such action shall first be used to reimburse M.I.T. for all legal expenses connected with such action. M.I.T. shall then keep any recovery or damages relating to royalties not received by M.I.T. Any recovery or damages then remaining shall be divided equally between M.I.T. and LICENSEE up to the limit of the recovery or damages related to lost sales by LICENSEE during the exclusive period(s) of this Agreement. Any recovery or damages still remaining after the above-mentioned allocations shall be divided as follows: 50% to M.I.T. and the remaining 50% divided prorata among all licensees in proportion to the licensed sales of Licensed Products at the time of infringement. 9.3 If within six (6) months after having been notified of any alleged infringement, M.I.T. shall have been unsuccessful in causing the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if M.I.T. 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, ~~Advancis Know-How~~ and LICENSEE may, for such purposes, use the name of M.I.T. as party plaintiff. No settlement, consent judgement or ~~Program Developments~~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 payment that may be made against M.I.T. in such proceedings. 9.4 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 royalties otherwise due M.I.T. hereunder after notification of infringement and apply the same toward reimbursement of its expenses, including reasonable attorneys' fees, in connection therewith. In order for such royalties to be continued to be withheld, LICENSEE must continuously and diligently pursue such enforcement and/or defense. Any recovery of damages by LICENSEE for 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 M.I.T. for any ~~available evidence thereof~~royalties past due or withheld and applied pursuant to this Article IX. The balance remaining from any such recovery shall be retained by LICENSEE except for those damages relating to M.I.T.'s loss of royalties. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 9.5 In the event that a ~~Third Party infringes Advancis~~ declaratory judgement action alleging invalidity or non-infringement of any of the Patent ~~Rights~~Rights shall be brought against LICENSEE, ~~Advancis Know-How or Program Developments owned by Advancis by manufacture~~M.I.T., ~~sale or use~~ at its option, shall have the right, within thirty (30) days after commencement of ~~a Product in~~ such action, to intervene and take over the ~~Territory (a "PRODUCT INFRINGEMENT")~~sole defense of the action at its own expense. 9.6 In any infringement suit as either party may institute to enforce the Patent Rights pursuant to this Agreement, ~~then~~ the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par other party hereto shall, at the request and expense of ~~Advancis~~the party initiating such suit, ~~provide~~ cooperate in all reasonable ~~cooperation~~ respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like~~. Advancis may join Par as a party~~. 9.7 LICENSEE, ~~and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense~~ during the exclusive period of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlementthis Agreement, shall ~~first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by~~ have the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined sole right in accordance with the ~~dispute resolution process set forth in Section 17.2.2 herein. In~~ terms and conditions herein to sublicense any ~~such infringement suit Par may institute to enforce Advancis~~ alleged infringer under the Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement (Matritech Inc/De/)

Infringement. ~~11.2.1 Par and Advancis~~ Enforcement of Proprietary Rights ----------------------------------------------- 6.1 CIO shall inform ~~each other~~ CDS promptly ~~in writing~~ of any alleged ~~or suspected~~ infringement involving Ophthalmic Applications by ~~a Third Party~~ third parties of any ~~of Advancis~~ Licensed Patent ~~Rights, Advancis Know-How or Program Developments,~~ Rights and of provide any information available ~~evidence thereof. 11.2.2 Subject~~ to ~~Sections 11.2.3~~ CIO relating to such alleged infringement. CDS shall promptly investigate such alleged infringement and ~~11.2.4, Advancis may, at its sole option and expense, prosecute the~~ act diligently to end any infringement of ~~any Advancis Patent Rights~~such rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or including but not limited to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a bringing suit against ~~a Product Infringement pursuant~~ such third-party infringer, or causing UKRF to ~~Section 11.2.3 within [***]~~ take such steps. Unless otherwise agreed by CDS and CIO, CDS shall bear the cost of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit ~~Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned~~ commenced by ~~Advancis, Advancis shall, at~~ CDS and shall keep any recovery derived therefrom. CDS shall consult with CIO on the ~~request and expense~~ material aspects of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a partysuch litigation, and ~~Advancis~~ shall ~~execute all papers and perform such acts as~~ select counsel to which CIO has no reasonable objection. No settlement, consent judgment or other voluntary final disposition of the suit may be ~~reasonably required~~entered into without the consent of CIO, at which consent shall not be unreasonably withheld or delayed. CDS shall indemnify CIO against any order for costs that may be made against CIO in such proceedings. 6.2 If within 120 days after having been notified of any alleged infringement, CDS (or UKRF) shall have been unsuccessful in obtaining the ~~expense~~ agreement of ~~Par. Par shall bear all~~ the ~~cost and expense of such suit and Par shall retain all payment~~alleged infringer to desist from the infringing activities, ~~costs and damages received as a result thereof, whether by judgment, settlement compromise~~ or ~~otherwise Par~~ shall not have ~~the right~~ brought and be diligently prosecuting an infringement action, or if CDS shall have notified CIO of its intention not to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute bring suit against ~~a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such~~ the alleged ~~or suspected infringement~~infringer, then ~~Advancis~~ (and only then) CIO shall have the right, but not the obligation, to prosecute such infringement at its own expense with counsel to which CDS has no reasonable objection. In such case CIO shall have the right to ~~institute~~ withhold from its royalty obligations pursuant to Article 3, to the extent of CIO's expenses then incurred in connection with such ~~an infringement~~ suit, 50 % of the royalties otherwise thereafter due hereunder to CDS and UKRF, and CIO shall apply the reduced amounts toward reimbursement of CIO's expenses, including reasonable attorneys' fees, in connection with such suit, until such time as such expenses shall have been fully reimbursed. If such expenses are less than the maximum amount that may be credited, the credit shall be applied first against the royalties due UKRF and then against the royalties due CDS. CIO shall consult with CDS on material aspects of such litigation. No settlement, consent judgment or other voluntary final disposition of the suit ~~at its cost~~ may be entered into without the consent of CDS which consent shall not be unreasonably withheld or delayed. CIO shall indemnify CDS and ~~expense~~ UKRF against any order for costs that may be made against either of them in such proceedings. Any recovery of damages in any such suit shall be applied first in satisfaction of any unreimbursed expenses and legal fees of CIO in connection with the suit, and next toward reimbursement of CDS and UKRF for any royalties [*]=CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETED ASTERISKS HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED. withheld and applied pursuant to ~~retain all payment~~this Article 6. The balance remaining from any such recovery shall be retained by CIO, ~~costs~~ provided that such remaining balance shall be deemed included within Net Sales under this Agreement and ~~damages received~~ shall bear royalties as ~~a result thereof, whether by judgment, settlement compromise or otherwise~~provided herein. ~~11.2.6~~ 6.3 In the event that a declaratory judgment action alleging invalidity or non-infringement of any ~~Advancis~~ of the Licensed Patent ~~Rights, Advancis Know-How or Program Developments~~ Rights shall be brought against ~~Advancis and/or Par~~CIO, ~~Advancis~~CDS, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- 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 CDS shall consult with CIO on material aspects of such litigation and provided further that CDS shall select counsel to which CIO has no reasonable objection. In No settlement, consent judgment or other voluntary final disposition of the ~~event that Advancis does~~ suit may be entered into without the consent of CDS which consent shall not so be unreasonably withheld or delayed. 6.4 Should CDS or CIO commence a suit under the foregoing provisions and thereafter elect to ~~take over~~ abandon the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlementsame, the ~~Parties~~ abandoning party shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid give timely written notice to the other ~~party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third~~ party ~~institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the~~ and such other ~~Party in writing. Advancis shall assume the defense~~ party may continue prosecution of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses ~~of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility~~ and recovery being allocated as set forth in ~~the preceding sentence~~Sections 6.1, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 19346.2, ~~AS AMENDED. 31 --------------------------------------------------------------------------------~~and 6.

Appears in 1 contract

Sources: License and Development Agreement (Control Delivery Systems Inc/Ma)

Infringement. ~~11.2.1 Par~~ If a third party claims that a [***] or any other material [***] developed by Supplier hereunder, infringes its patent, copyright, trade ▇▇▇▇, trade secret, industrial design, topographies or other Intellectual Property rights anywhere in the world, Supplier shall and ~~Advancis shall inform each~~ does hereby indemnify and hold JDSU harmless from and against all claims and other ~~promptly~~ amounts incurred by JDSU in ~~writing of~~ connection with such third party claim, including without limitation any ~~alleged or suspected infringement~~ monetary relief awarded against JDSU by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees court or other ~~awards (collectively~~judicial, ~~"DAMAGES")~~legal or arbitral process, ~~received by Advancis and/or Par~~ authority or jurisdiction, or a final settlement amount, if any, as a result of such ~~suit~~third party claim and Supplier shall also, ~~whether through judgment or settlement~~at Supplier’s cost, defend JDSU against the third party claim, during which defense, JDSU may be independently represented, at Supplier’s cost, by counsel of JDSU’s selection. JDSU shall ~~first be used to reimburse each Party for its expenses associated with~~ promptly notify Supplier of such ~~infringement suit~~ claim and, at Supplier’s cost, cooperate in the defense and ~~then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid~~ all related negotiations. In addition to the other ~~party~~obligations set out in this Section, ~~as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree~~ Supplier shall continue to ~~institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may~~supply Products and shall use its commercially reasonable efforts, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation andown cost, to ~~the extent possible, have~~ procure for JDSU and its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have customers the right to ~~settle~~ continue using, importing, exporting and selling the Product; or ~~compromise such action or take any steps that adversely affect~~ with the ~~scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written~~ consent of ~~Advancis. 11.2.5 In~~ JDSU, replace the ~~event that only Par does~~ same with a comparable non-infringing Product or modify the Product so as to avoid the infringement. Where Supplier has not ~~agree~~ been able to ~~institute suit against~~ successfully implement either of these options within ninety (90) days of Supplier first learning of the claim, JDSU may, in its sole discretion and without any penalty, liability or charge, notwithstanding any other term or provision hereof, immediately by written notice to Supplier, terminate this Agreement and may return all affected Products and obtain a ~~Product Infringement~~ refund of all amounts paid for such Products pursuant to this Agreement. Notwithstanding the foregoing, except for Improvements or New Technology solely created by Supplier hereunder, Supplier shall have no obligation to JDSU under this Section ~~11.2.3 within [~~17.3 where the claims relate solely to JDSU’s Property, JDSU Product designs provided to Supplier or material provided by JDSU to Supplier. ***] of being notified of such alleged or suspected infringement, then Advancis shall have * Certain information on this page has been omitted and filed separately with the ~~right to institute such an infringement suit at its cost~~ Securities and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTEDExchange Commission. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation Confidential treatment has been requested with respect to ~~any such suit. To~~ the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damagesomitted portions. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Contract Manufacturing Agreement (Fabrinet)

Infringement. 11.2.1 Par and Advancis shall inform each other promptly in writing of any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 11.1 In the event that there is infringement within the Field by a ~~Third Party infringes Advancis Patent Rights~~third party of any patent licensed to JJMI hereunder, ~~Advancis Know-How or Program Developments owned~~ JJMI shall notify SHP in writing to that effect, including with such written notice, evidence establishing a prima facia case of infringement by ~~Advancis~~ such third party. During the one hundred twenty (120) day period after notice to SHP by ~~manufacture~~JJMI, ~~sale or use~~ SHP will have the right, but not the obligation to bring suit against the alleged infringer. SHP shall bear the expenses of ~~a Product in the Territory (a "PRODUCT INFRINGEMENT")~~any suit brought by it, ~~then the Parties~~ shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute retain all ~~papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees~~ damages or other ~~awards (collectively, "DAMAGES"),~~ monies awarded or received ~~by Advancis and/or Par as a result~~ in settlement of such suit~~, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated~~ . JJMI will cooperate with SHP in any such ~~infringement~~ suit and shall have the right to consult with SHP and be represented by its own counsel at its own expense. If, after the expiration of said one hundred twenty (120) days from the date of such notice, SHP has not brought suit against a third party infringer, then JJMI shall have the right after such one hundred twenty (120) day notice period, but not the obligation, to bring suit against such infringer and join SHP as a party plaintiff provided that JJMI shall bear all expenses of such suit. SHP will cooperate with JJMI in any suit for infringement of the Licensed Patent brought by JJMI against a third party and shall have the right to consult with JJMI and to participate in and be represented by independent counsel in such litigation at its own expense. JJMI shall incur no liability to SHP as a consequence of such litigation or any unfavorable decision resulting therefrom, including any decision holding SHP's patent(s) invalid or unenforceable. Damages awarded or received in settlement shall be paid to JJMI in satisfaction of all expenses of such suit; any remainder shall be shared ~~by the Parties equally, with such share of the Damages~~ fifty percent (50%) to ~~be paid~~ JJMI and fifty percent (50%) to ~~the other party, as applicable, as soon as practicable upon receipt of the Damages~~SHP. ~~11.2.4 In the event~~ 11.2 SHP warrants that ~~only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***]~~ it is presently aware of ~~being notified of such alleged~~ no patents or ~~suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments~~ patent applications owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party ~~institutes~~ which would present any ~~suit against Par and/or Advancis for patent~~ issue of infringement ~~involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense~~ by reason of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the ~~Products hereunder~~Referenced ** Products. In the event JJMI is charged with such infringement by a third party, ~~then~~ JJMI shall have the right to defend against such ~~Party shall promptly inform the other Party~~ charge of ~~such patent or patent application~~infringement, and during the ~~Parties~~ period in which such litigation is pending, JJMI shall ~~cooperate~~ have the right to apply Fifty Percent (50%) of the royalties due SHP on sales of the allegedly infringing Licensed Product against its litigation expenses. JJMI shall reimburse SHP for all royalties diverted to litigation expenses to the extent --------------- The "**" marks the location of information that has been omitted and filed separately with ~~each other so that each Party can determine whether valid rights~~ the Securities and Exchange Commission pursuant to a request for confidential treatment. funds are recovered in such litigation. If, as a result of judgment in the litigation or settlement with a third party ~~are likely~~ without litigation, JJMI is required to ~~be infringed by the manufacture, use~~ pay royalties or ~~sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary~~ other monies to ~~avoid infringement of patents of the~~ such third party, JJMI may thereafter deduct from the ~~Executive Committee shall: 1~~amount of royalties due SHP on unit sales of the Licensed Product charged to infringe, an amount which is the lesser of all sums paid by JJMI to such third party, or Fifty Percent (50%) ~~determine whether or not~~ of all royalty payments otherwise payable to ~~seek such a license, 2) appoint a negotiator to negotiate~~ SHP on the ~~terms~~ Net Sales of such ~~a license~~Licensed Product. Notwithstanding anything else in this Article 11, ~~3) determine whether or not to enter into such a license as negotiated by~~ in no event shall JJMI pay less than 50% of the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------royalties due SHP on sales.

Appears in 1 contract

Sources: Development and License Agreement (Specialized Health Products International Inc)

Infringement. ~~11.2.1 Par and Advancis shall inform each other promptly in writing of any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights~~[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, ~~Advancis Know-How or Program Developments~~MARKED BY BRACKETS, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND ~~FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN~~ FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE ~~24b-2 UNDER~~ 406 OF THE SECURITIES ~~EXCHANGE~~ ACT OF ~~1934~~1933, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. ~~11.2.7~~ (a) In the event that a ~~third party institutes~~ Party becomes aware of any ~~suit against Par and/or Advancis for patent~~ alleged or threatened infringement ~~involving~~ of the ~~Products~~Licensed Patents in the Territory, ~~the~~ such Party ~~sued~~ shall promptly notify the other Party in writing. ~~Advancis~~ Shionogi shall ~~assume~~ have the ~~defense~~ right, but not the obligation, at its discretion and expense, to enforce the Licensed Patents against such infringement, and to defend the Licensed Patents against any claims of invalidity or unenforceability in the Territory. Peninsula shall give Shionogi all reasonable information and assistance with respect to such enforcement. Except as set forth in Section 12.3(b), any damages or remuneration received as a result of such ~~suit~~action shall be [*] after reimbursing for the costs and expenses incurred by Peninsula for its assistance. (b) Peninsula shall have the right, ~~provided~~but not the obligation, ~~however~~at its discretion and expense, ~~that if Par is also a defendant~~ to join in such action and ~~Par~~ seek damages for its lost profits caused by such infringement. Any damages or remuneration received as a result of such action shall ~~have reasonably concluded that there may~~ be applied first to reimburse each Party for the costs and expenses incurred in such action. Any remaining amount of such damages or remuneration shall be allocated by the Parties [*] of the Parties. (c) If Shionogi does not take any legal ~~defenses available~~ action for any reason with respect to ~~it that are different from or additional to those available to Advancis~~such infringement within one hundred twenty (120) days following Peninsula's notification, ~~Par~~ Peninsula shall have the right to ~~select separate counsel to participate in such legal defenses on Par~~bring any appropriate suit or action against the infringer at Peninsula's ~~behalf~~expense. ~~The Parties~~ Shionogi shall ~~share the cost~~ give Peninsula all reasonable information and ~~expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable~~ assistance ~~and cooperation~~ with respect to ~~any~~ such ~~suit~~infringement. ~~To the extent that any Damages become payable to any third party~~ Any damages or remuneration received as a result of such ~~action, whether through judgment or settlement, the Parties~~ action shall ~~bear such Damages equally,~~ be [*] after reimbursing any cost and ~~shall contribute such share as promptly as practicable. Any Damages received~~ expenses incurred by ~~Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party~~ Shionogi for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damagesassistance. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement (Peninsula Pharmaceuticals Inc)

Infringement. ~~11.2.1 Par and Advancis shall inform each other promptly in writing of any alleged~~ (a) If a third party makes, uses or ~~suspected infringement by~~ sells a ~~Third Party of~~ XENOGRAFT PRODUCT that infringes any of ~~Advancis Patent Rights~~the NOVARTIS PATENTS under which LOXO is licensed, ~~Advancis Know-How or Program Developments,~~ LOXO shall have the right and ~~of any available evidence thereof. 11.2.2 Subject~~ option but not the obligation to ~~Sections 11.2.3 and 11.2.4, Advancis may~~bring an action for infringement, at its sole ~~option and~~ expense, ~~prosecute~~ against such third party in the ~~infringement~~ name of LOXO, and to join the owner of the NOVARTIS PATENT as a party plaintiff if required. LOXO shall promptly notify NOVARTIS of any ~~Advancis Patent Rights~~such infringement and shall keep NOVARTIS informed as to the prosecution of any action for such infringement and shall not institute any infringement action without providing NOVARTIS with thirty (30) days prior written notice. No settlement, ~~Advancis Know-How~~ consent judgment or ~~Program Developments~~other voluntary final disposition of the suit may be entered into without the consent of NOVARTIS, which consent shall not unreasonably be withheld. ~~29 --------------------------------------------------------------------------------~~The rights granted under this Section 7.1 are subject to the terms and conditions of the THIRD PARTY AGREEMENTS with respect to NOVARTIS PATENTS licensed under THIRD PARTY AGREEMENTS. Any recovery of damages by LOXO for any such suit shall be applied first in satisfaction of obligations under THIRD PARTY AGREEMENTS. The balance, if any, remaining from any such recovery shall be retained by LOXO. ~~11.2.3~~ 7.2. In the event that ~~a Third Party infringes Advancis Patent Rights~~LOXO elects not to pursue an action for infringement pursuant to Section 7.1, ~~Advancis Know-How~~ or ~~Program Developments owned~~ does not do so within sixty (60) days after written notice by ~~Advancis by manufacture, sale or use~~ NOVARTIS that an unlicensed third party is an infringer of a ~~Product in~~ NOVARTIS PATENT licensed to LOXO, NOVARTIS or its licensor(s) shall have the ~~Territory (a "PRODUCT INFRINGEMENT")~~right and option, ~~then~~ but not the ~~Parties shall discuss whether or not~~ obligation at its cost and expense to initiate infringement litigation and to retain any recovered damages. 7.3. In any infringement suit either PARTY may institute ~~an infringement action with respect~~ to ~~such Product Infringement. If~~ enforce the ~~Parties agree~~ NOVARTIS PATENTS pursuant to ~~institute such a suit~~this Agreement, ~~then Advancis shall institute and control such suit including~~ the ~~settlement or compromise thereof. Par~~ other PARTY hereto shall, at the request of ~~Advancis~~the PARTY initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like. ~~Advancis may join Par as a party, and Par shall execute all papers and perform~~ All reasonable out-of-pocket costs of the other PARTY incurred in connection with rendering such ~~acts as may be reasonably required. The cost and expense of such suit~~ cooperation shall be ~~shared~~ paid by the ~~Parties equally~~requesting PARTY. 7.4. ~~Any royalties~~In the event of the institution of any suit by a third party against LOXO, ~~payments~~its AFFILIATES or their licensees involving the manufacture, ~~damages~~use, ~~expense~~sale, ~~fees~~ distribution or ~~other awards (collectively~~marketing of any XENOGRAFT PRODUCT in the TERRITORY, ~~"DAMAGES"), received by Advancis and/or Par as a result~~ LOXO shall promptly notify NOVARTIS in writing of such suit. During the pendency of such action, ~~whether through judgment or settlement,~~ all royalties due hereunder shall ~~first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages~~ continue to be paid by LOXO. LOXO shall have full responsibility for the payment of any award for damages, or any amount due pursuant to ~~the other~~ any settlement entered into by LOXO with such third party~~, as applicable, as soon as practicable upon receipt of the Damages~~. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein7.5. In any ~~such~~ infringement suit ~~Par~~ either PARTY may institute to enforce ~~Advancis Patent Rights~~patents pursuant to this Agreement, ~~Advancis Know-How or Program Developments owned by Advancis, Advancis~~ the other PARTY hereto shall, at the request ~~and expense~~ of ~~Par~~the PARTY initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like. ~~Par may join Advancis as a party~~All reasonable out-of-pocket costs of the other PARTY incurred in connection with rendering such cooperation shall be paid by the requesting PARTY. In addition, ~~and Advancis~~ such PARTY shall ~~execute all papers and perform such acts as may be reasonably required, at~~ keep the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement other PARTY advised of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damageslitigation. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Shareholder Agreement (Biotransplant Inc)

Infringement. 11.2.1 Par and Advancis shall inform each other promptly in writing of any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event If NetYantra becomes aware that a ~~Third Party infringes Advancis Patent~~ third party may be infringing or threatening to infringe the intellectual property rights in the Products, including, patent, copyright, trademark and trade secret rights ("Products IP Rights") within the Territory, ~~Advancis Know-How~~ NetYantra shall provide prompt written notice thereof to Vistula, which notice shall set forth the facts known to Vistula concerning such infringement or ~~Program Developments owned~~ threatened infringement (the "Infringement Notice"). If NetYantra becomes aware that a third party may be infringing or threatening to infringe the Product IP Rights within the Territory, whether by ~~Advancis by manufacture, sale~~ way of an Infringement Notice or ~~use~~ otherwise and the exclusive nature of the appointment of Vistula as a ~~Product~~ distributor of the Products in the Territory ~~(a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or~~ has not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement been terminated pursuant to Section ~~11.2.3 within [***] of being notified of such alleged or suspected infringement~~2.5, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis Vistula shall have the ~~right~~ sole and exclusive right, but not the obligation, to ~~institute~~ initiate and/or pursue legal proceedings against such ~~an infringement suit~~ third party at ~~its cost and~~ Vistula's sole expense. Any damage, cost, award fee, recovery, or compensation paid by any third party in connection with any legal proceeding initiated and/or pursued at Vistula's expense ~~and to retain all payment, costs and damages received as a result thereof,~~ (whether by ~~judgment,~~ way of settlement ~~compromise~~ or otherwise~~. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments~~ ) shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expenseretained by Vistula. In the event that ~~Advancis does not so elect~~ Vistula desires to ~~take over the sole defense of the action at its own expense~~initiate or pursue, ~~Par shall be free to proceed and solely control such defense. To the extent that~~ initiates or pursues any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that legal proceeding against a third party ~~institutes~~ to enforce or protect the Product IP Rights within the Territory, NetYantra shall fully cooperate with and supply all assistance reasonably requested by Vistula in connection therewith. Vistula shall have sole and absolute control of the proceeding and shall bear all reasonable expenses and legal fees incurred by NetYantra in providing such cooperation and assistance as Vistula may reasonably request. For the purposes of this Section 3.6, NetYantra shall only be "aware" of any ~~suit against Par and/or Advancis for patent~~ infringement ~~involving~~ or threatened infringement of the ~~Products~~Product IP Rights if any member of the senior management of NetYantra including ▇▇▇▇▇▇▇ ▇▇▇▇▇, ~~the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense~~ ▇▇▇▇▇ ▇▇▇▇▇▇ and ▇▇▇▇▇ ▇▇▇▇▇ has actual knowledge of such ~~suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from~~ infringement or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such threatened infringement ~~suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share~~ of the ~~Damages to be paid to the other party~~Product IP Rights unless such member of senior management, ~~as applicable, as soon as practicable upon receipt~~ in his or her reasonable opinion does not consider such alleged infringement or infringement constitutes actual infringement or threatened infringement of the ~~Damages~~Product IP Rights for the purposes of this Section 3.6. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Distribution and Marketing Agreement (Vistula Communications Services Inc)

Infringement. ~~11.2.1 Par~~ Vendor agrees that it shall defend, indemnify and ~~Advancis shall inform each other promptly in writing of any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments~~hold the Companies, and their respective officers, directors, employees, affiliates, agents and assigns of ~~any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute~~ each of the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards Companies (collectively, ~~"DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment~~ the “Company Indemnified Parties”) harmless from and against any and all Losses based on or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event arising from claims that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the ~~Party sued~~ Work or any components thereof infringe, misappropriate or violate any patent, trademark, copyright, trade secret or other intellectual property right of any third party which is enforceable in the United States where any Person is permitted to deploy or use the Products under this Agreement (collectively, “Intellectual Property Rights”), provided that the Company Indemnified Parties involved shall ~~promptly notify~~ cooperate, at Vendor’s expense, in all reasonable respects with Vendor and its attorneys in the ~~other Party in writing. Advancis shall assume the~~ investigation, trial and defense of such ~~suit~~lawsuit or action and any appeal arising therefrom. If a claim for Losses is to be made by a party entitled to indemnification hereunder against Vendor, the party claiming such indemnification shall give written notice (a “Claim Notice”) to Vendor as soon as reasonably practicable after the party entitled to indemnification becomes aware of any 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 any Company Indemnified Parties in notifying Vendor shall relieve Vendor from any obligation hereunder unless (and then solely to the extent) Vendor is thereby materially prejudiced. Notwithstanding the foregoing, the Company Indemnified Parties may, at their own cost, participate in the investigation, trial and defense of such lawsuit or action and any appeal arising therefrom; provided, however, that if ~~Par is also a defendant~~ Vendor assumes the defense of such lawsuit, action or investigation and any appeals and continues to pursue the defense of such lawsuit, action or investigation to conclusion and fulfills all of Vendor’s obligations in ~~such action and Par~~ this Section 13, Vendor shall have ~~reasonably concluded that there may~~ sole control over the defense and settlement negotiations thereof (subject to the provisions of this Section 13) and while Vendor is defending such lawsuit, action or investigation Vendor shall not be ~~legal defenses available to it that are different from~~ liable for any settlements entered into or ~~additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf~~expenses/costs incurred by any Company without Vendor’s prior written approval. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties parties shall cooperate with each other ~~so that each Party can determine whether valid rights~~ in any notifications to insurers. If any lawsuit or enforcement action is filed against any party entitled to the benefit of ~~a third party are likely~~ indemnity hereunder, written notice thereof shall be given to ~~be infringed by~~ Vendor as promptly as reasonably practicable (and in any event within fifteen (15) calendar days after the ~~manufacture, use or sale~~ service of the ~~Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary~~ citation or summons). Vendor shall be entitled, if it so elects, (i) to ~~avoid infringement~~ defend such lawsuit or action, (ii) to employ and engage attorneys of ~~patents~~ its own choice to handle and defend the same, at Vendor’s cost, risk and expense, and (iii) to compromise or settle such Claim, which compromise or settlement shall be made only with the written consent of the ~~third party~~Company Indemnified Parties involved (which may not be unreasonably withheld), unless such compromise or settlement includes an unconditional release of any claims against the Company Indemnified Parties, includes no restrictions on the operations of the Company Indemnified Parties and admits no wrongdoing by any Company Indemnified Parties in which event such written consent of the Company Indemnified Parties shall not be required. If Vendor fails to assume the defense of such Claim within fifteen (15) calendar days after receipt of the Claim Notice, or assumes such defense but thereafter abandons such defense, the ~~Executive Committee shall: 1~~Company Indemnified Parties against which such Claim has been asserted will (upon delivering notice to such effect to Vendor) ~~determine whether~~ have the right to undertake, at Vendor’s cost and expense, the defense, compromise or ~~not to seek such a license, 2) appoint a negotiator to negotiate the terms~~ settlement of such ~~a license, 3) determine whether or not~~ Claim on behalf of and for the account and risk of Vendor. In the event any Company Indemnified Parties assume the defense of the Claim due to ~~enter into such a license as negotiated by~~ the ~~negotiator, and 4) determine how~~ Vendor’s failure to assume the ~~expenses~~ defense of such ~~a license~~ claim within fifteen (15) calendar days, such Company Indemnified Parties will keep Vendor reasonably informed of the progress of any such defense, compromise or settlement. Vendor shall be ~~borne by the Parties. If the Executive Committee cannot agree with regard~~ liable for any settlement or compromise of any action effected pursuant to ~~any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration~~ and in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934this Agreement and for any final judgment (subject to any right of appeal), ~~AS AMENDED. 31 --------------------------------------------------------------------------------~~and Vendor agrees to indemnify and hold harmless the Company Indemnified Parties from and against any Losses by reason of such settlement or judgment.

Appears in 1 contract

Sources: System Equipment Purchase Agreement (Leap Wireless International Inc)

Infringement. ~~11.2.1 Par and Advancis~~ 7.1 LICENSEE shall inform ~~each other~~ UM prom ptly in writing of any alleged infringement of the INTELLECTUAL PROPERTIES by a third party and of any available evidence thereof. Likewise UM shall inform the LICENSEE promptly in writing of any alleged ~~or suspected~~ infringement of INTELLECTUAL PROPERTIES by a ~~Third Party~~ third party. 7.2 During the term of this Agreement, LICENSEE shall have the right, but shall not be obligated, to prosecute at its own expense all infringements of the INTELLECTUAL PROPERTIES and, in furtherance of such right, UM hereby agrees that LICENSEE may include UM as a party plaintiff in any such suit, without expense to UM. The total cost of any such infringement action commenced or defended solely by LICENSEE shall be borne by LICENSEE and LICENSEE shall keep any recovery or damages for past infringement derived therefrom. 7.3 If within three (3) months after having been notified of ~~Advancis Patent Rights~~any alleged infringement, ~~Advancis Know-How~~ LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or ~~Program Developments~~if LICENSEE shall notify UM at any time prior thereto of its intention not to bring suit against any allege d infringer, then, and in those events only, UM shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the INTELLECTUAL PROPERTIES, and UM may, for such purposes, use the name of LICENSEE as party plaintiff; 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. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of LICENSEE, which consent shall not unreasonably be withheld. Any recovery of damages by UM for each such suit shall be applied first in satisfaction of any ~~available evidence thereof~~unreimbursed expenses and legal fees of UM relating to such su it. The balance remaining from any such recovery shall be divided equally between LICENSEE and UM. ~~11.2.2 Subject~~ 7.4 In the event that LICENSEE shall undertake the enforcement and/or defense of the INTELLECTUAL PROPERTIES by litigation, LICENSEE may withhold up to ~~Sections 11.2.3~~ one hundred percent (100%) of the payments otherwise thereafter due UM under Article 4 hereunder and ~~11.2.4~~apply the same to ▇▇▇▇ reimbursement of up to half of LICENSEE's actual documented expenses, ~~Advancis may~~including reasonable attorneys' fees, ~~at its sole option and expense, prosecute the infringement~~ in connection therewith. Any recovery of damages by LICENSEE for each such suit shall be applied first in satisfaction of any ~~Advancis Patent Rights~~unreimbursed expenses and legal fees of LICENSEE relating to such suit, ~~Advancis Know-How~~ and next toward reimbursement of UM for any payments under Article 4 past due or ~~Program Developments. 29 --------------------------------------------------------------------------------~~withheld and applied pursuant to this Article 7. ~~11.2.3~~ 7.5 In the event that a ~~Third Party infringes Advancis Patent Rights~~declaratory judgment action alleging invalidity or noninfringement of any of the INTELLECTUAL PROPERTIES shall be brought against LICENSEE, ~~Advancis Know-How or Program Developments owned by Advancis by manufacture~~UM, ~~sale or use~~ at its option, shall have the right, within thirty (30) days after commencement of ~~a Product in~~ such action, to intervene and take over the ~~Territory (a "PRODUCT INFRINGEMENT")~~sole defense of the action at its own expense. 7.6 In any infringement suit as either party may institute to enforce the INTELLECTUAL PROPERTIES pursuant to this Agreement, ~~then~~ the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par other party hereto shall, at the request and expense of ~~Advancis~~the party initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like~~. Advancis may join Par as a party~~. 7.7 LICENSEE, ~~and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense~~ during the exclusive period of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlementthis Agreement, shall ~~first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by~~ have the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined sole right in accordance with the ~~dispute resolution process set forth in Section 17.2.2 herein. In~~ terms and conditions herein to sublicense any alleged infringer for future use of the INTELLECTUAL PROPERTIES; royalties under such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments sublicenses shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damagestreated per Article 4. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement

Infringement. ~~11.2.1 Par~~ 8.1 LICENSEE or its sublicensee(s) (subject to any applicable sublicensing agreement) has the right to prosecute in their own name and ~~Advancis~~ at their own expense any infringement of the PATENT RIGHTS, so long as the license is exclusive when the legal action is commenced. OSU agrees to notify LICENSEE promptly of each infringement of the PATENT RIGHTS of which OSU becomes aware. Before LICENSEE or its sublicensees commences an action for infringement, LICENSEE or sublicensee shall ~~inform each other promptly~~ notify OSU and carefully consider the views of OSU and the public interest. 8.2 Where joinder is a matter of discretion, OSU agrees to join, subject to the approval of the Ohio Attorney General, as a party plaintiff in ~~writing~~ any lawsuit initiated by LICENSEE, if requested by LICENSEE. If required by law to obtain standing, OSU shall join or otherwise permit any action or proceeding to be brought on OSU’s behalf and in its name and cooperate with LICENSEE in all aspects of any ~~alleged~~ such action or ~~suspected~~ proceeding brought under this Article, with all costs, attorney fees and expenses reasonably and actually incurred to be paid by LICENSEE. 8.3 If LICENSEE undertakes to enforce and/or defend the PATENT RIGHTS by litigation, LICENSEE may withhold up to fifty percent (50%) of the payments otherwise thereafter due during the course of such litigation to OSU under Article 3. LICENSEE may apply the amounts withheld to reimburse up to half of LICENSEE’s litigation expenses, including reasonable attorneys’ fees. Any recovery under this Section of damages for infringement by a ~~Third Party~~ third party shall be distributed as follows: (a) each of OSU and LICENSEE shall be reimbursed for any otherwise unreimbursed legal fees and other out-of pocket expenses incurred in the action; (b) OSU shall be reimbursed for any payments under Article 3 that are past due or were withheld pursuant to this Article; and (c) the remaining balance being divided between OSU and LICENSEE by, in the case where the recovery is based on LICENSEE’s lost profits, determining the amount of NET SALES that were relied upon for purposes of calculating such lost profits and calculating the amounts that would have otherwise been paid to OSU under this Agreement had such NET SALES been earned by LICENSEE (after taking into account the amounts allocated under clauses (a) and (b) above, provided, however, that in no event shall the amount payable from any such recovery exceed fifty percent (50%) of any such lost profits, with all amounts remaining from any such recovery being paid to or otherwise retained by LICENSEE. LICENSEE shall during the term of ~~Advancis Patent Rights~~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 to the extent licensed by this Agreement. Any upfront fees paid to LICENSEE as part of such a sublicense, ~~Advancis Know-How or Program Developments, and~~ after reimbursement of any ~~available evidence thereof~~legal expenses incurred by LICENSEE and OSU, shall be treated as SUBLICENSE REVENUES for purposes of this Agreement. ~~11.2.2 Subject~~ 8.4 No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without OSU’s consent, which shall not be unreasonably withheld, unless and to ~~Sections 11.2.3~~ the extent that such settlement is in the form of a sublicense pursuant to the terms and ~~11.2.4~~conditions of this Agreement. 8.5 If LICENSEE and its sublicensee(s) elect not to exercise their right to prosecute or defend an infringement of the PATENT RIGHTS, ~~Advancis may,~~ OSU may do so at its ~~sole option and~~ own expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product controlling such action and retaining all recoveries; in the ~~Territory~~ case where any such action is undertaken by OSU due to LICENSEE being unable to do so (~~a "PRODUCT INFRINGEMENT"~~e.g., in the case where LICENSEE is unable to obtain standing), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit any recoveries shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined allocated in accordance with ~~the dispute resolution process set forth in~~ Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis8.3 above. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that 8.6 If a declaratory judgment action alleging invalidity ~~or non-infringement~~ of any ~~Advancis Patent Rights, Advancis Know-How or Program Developments shall be~~ of the PATENT RIGHTS is brought against ~~Advancis and/or Par~~LICENSEE or OSU, ~~Advancis~~then OSU, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its sole option, ~~shall have~~ has the ~~right, within [***] after commencement of such action,~~ right to intervene and take over the ~~sole~~ defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Exclusive License Agreement (Roughneck Supplies Inc.)

Infringement. ~~11.2.1 Par~~ 14.1 Subject to Article 13.3 hereof, NTI and ~~Advancis~~ Merz shall ~~inform each other~~ render to CMCC all reasonable assistance as may be ▇▇▇uired to preserve the validity and enforceability of the CMCC Patents in the Territory. NTI and Merz shall promptly notify CMCC in writing (i) of any ~~alleged~~ and all infr▇▇▇▇ments, imitations, illegal use, misuse, or ~~suspected infringement~~ misappropriation, by ~~a Third Party~~ any third party of the CMCC Patents which come to their attention, and (ii) of any claims or objections that Merz and/or NTI's use of ~~Advancis Patent Rights~~the CMCC Patents hereunder may or will i▇▇▇▇nge the copyrights, ~~Advancis Know-How~~ patents, designs, trademarks or ~~Program Developments~~other proprietary rights of any other third party. CMCC as the owner or authorized licensee of the CMCC Patents, shall be responsible for taking any action or initiating any proceedings which CMCC, in its sole discretion, determines to be necessary or appropriate to prevent any infringement of the CMCC Patents, and ~~of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3~~ NTI and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties Merz shall ~~discuss whether or not to institute an infringement action~~ provide CMCC with ~~respect to~~ such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts assistance as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated r▇▇▇▇sted in connection with ~~such infringement suit and then~~ any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or proceeding. 14.2 If CMCC fails to or decides not to take any ~~steps that adversely affect~~ action or to initiate proceedings necessary to prevent the ~~scope, validity, enforceability or ownership~~ infringement of ~~Advancis Patent Rights or Advancis Know-How without~~ the CMCC Patents within sixty (60) days after written ~~consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified~~ notice of such ~~alleged or suspected~~ infringement, ~~then Advancis~~ Merz shall have the right to ~~institute~~ take such ~~an infringement suit at its cost and expense and~~ action or to ~~retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In~~ initiate such ▇▇▇ceedings to enforce and/or defend the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expenseCMCC Patents. In the event that ~~Advancis does not so elect to take over~~ Merz undertakes the ~~sole~~ enforcement and/or the defense of the ~~action at its own expense~~CMCC P▇▇▇▇ts by litigation, ~~Par shall~~ Merz may withhold the one-half of the payments otherwise due to C▇▇▇ under Article 8 hereof and apply the same toward reimbursement of Merz' expenses, including reasonable attorney's fees, in connectio▇ ▇herewith. Subject to these set-off rights of Merz to recover costs and expenses of the infringement litigation, a▇▇ ▇amages recovered by Merz in such litigation will be ~~free to proceed and solely control such defense. To~~ allocated among the ~~extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement,~~ parties in a▇▇▇▇dance with the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such percentage share of the ~~Damages~~ Royalty Income as set forth in Exhibit C hereto. 14.3 NTI and CMCC shall render to Merz all reasonable assistance as may be ~~paid~~ required to preserve the ▇▇▇idity and enforceability of Merz' rights, title and interests in and to the ~~other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event~~ Merz Patents or oth▇▇ Intellectual Property Rights in its Product▇. ▇TI and CMCC agree that ~~a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued~~ they shall promptly notify ~~the other Party~~ Merz in ~~writing. Advancis shall assume the defense~~ writing (i) of ~~such suit~~any and all infringements, ~~provided~~imitations, ~~however~~▇▇legal use, ~~that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from~~ misuse, or ~~additional to those available to Advancis~~misappropriation, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to by any third party ~~as a result~~ of ~~such action, whether through judgment~~ the Merz Patents or ~~settlement, the Parties shall bear such Damages equally~~other Intellectual Property Rights which come t▇ ▇▇s attention, and ~~shall contribute such share~~ (ii) of any claims or objections that any use of the Merz Patents or other Intellectual Property Rights, if any, ▇▇▇ or will infringe the copyrights, patents, designs, trademarks or other proprietary rights of any other third party. Merz as ~~promptly as practicable. Any Damages received by Advancis and/or Par as a result~~ the owner or authorized licensee of ~~such action, whether through judgment~~ the Merz Patents or ~~settlement~~othe▇ ▇▇tellectual Property Rights, shall ~~first~~ be ~~used~~ respon▇▇▇▇e for taking any action or initiating any proceedings which Merz, in its sole discretion, determines to ~~reimburse each Party for its expenses associated~~ be necessary or appropri▇▇▇ to prevent any infringement the Merz Patents and/or other Intellectual Property Rights, and NTI a▇▇ ▇MCC shall provide Merz with such ~~infringement suit not otherwise reimbursed and then~~ assistance as may be reasonably requested by Merz i▇ ▇▇nnection with any ~~remainder shall be shared by the Parties equally, with~~ such ~~share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages~~action or proceeding. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License and Cooperation Agreement (Neurobiological Technologies Inc /Ca/)

Infringement. ~~11.2.1 Par and Advancis~~ 7.1 LICENSEE shall inform ~~each other~~ CMCC promptly in writing of any alleged ~~or suspected~~ infringement of the Patent Rights by a ~~Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments,~~ third party and of any available evidence thereof. ~~11.2.2 Subject~~ 7.2 During the term of this Agreement, LICENSEE shall have the right, but shall not be obligated, to ~~Sections 11.2.3 and 11.2.4, Advancis may,~~ prosecute at its ~~sole option~~ own expense any such infringements of the Patent Rights and, in furtherance of such right, CMCC hereby agrees that LICENSEE may join CMCC 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 LICENSEE shall be borne by LICENSEE and ~~expense~~LICENSEE shall keep any recovery or damages for past infringement derived therefrom. 7.3 If within six (6) months after having been notified of any alleged infringement, LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE shall notify CMCC at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, CMCC shall have the right, but shall not be obligated, to prosecute ~~the~~ at its own expense any infringement of ~~any Advancis~~ the Patent Rights. No settlement, ~~Advancis Know-How~~ consent judgment of other voluntary final disposition of the suit may be entered into without the consent of the party not bringing the suit, which consent shall not unreasonably be withheld. 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 fifty percent (50%) of the royalties otherwise thereafter due CMCC hereunder and apply the same toward reimbursement of its expenses, including reasonable attorneys, fees, in connection therewith. Any recovery of damages by LICENSEE for any such suit shall be applied first in satisfaction of any unreimbursed expenses and legal fees of LICENSEE relating to the suit, next toward reimbursement of CMCC for any royalties past due or ~~Program Developments~~withheld and applied pursuant to this Article VII, and to royalties due to CMCC for infringing sales as if sales had been made by LICENSEE. ~~29 --------------------------------------------------------------------------------~~The balance remaining from any such recovery shall belong to LICENSEE. ~~11.2.3~~ 7.5 In the event that a ~~Third Party infringes Advancis~~ declaratory judgment action alleging invalidity or non-infringement of any of the Patent ~~Rights~~Rights shall be brought against LICENSEE, ~~Advancis Know-How or Program Developments owned by Advancis by manufacture~~CMCC, ~~sale or use~~ at its option, shall have the right, within thirty (30) days after commencement of ~~a Product in~~ such action, to intervene and take over the ~~Territory (a "PRODUCT INFRINGEMENT")~~sole defense of the action at its own expense. 7.6 In any infringement suit as either party may institute to enforce the Patent Rights pursuant to this Agreement, ~~then~~ the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par other party hereto shall, at the request and the expense of ~~Advancis~~the party initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like~~. Advancis may join Par as a party~~. 7.7 LICENSEE, ~~and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense~~ during the period of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlementthis Agreement, shall ~~first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by~~ have the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined sole right in accordance with the ~~dispute resolution process set forth in Section 17.2.2 herein. In~~ terms and conditions herein to sublicense any ~~such infringement suit Par may institute to enforce Advancis~~ alleged infringer for the Field of Use for future use of the Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement (Urosurge Inc)

Infringement. ~~11.2.1 Par~~ 15.1 The REPRESENTATIVE and ~~Advancis~~ ARKEMA shall ~~inform~~ keep each other ~~promptly in writing~~ fully and rapidly informed with respect of any ~~alleged or suspected~~ third party infringement ~~by a Third Party~~ in relation to PATENTS of which they may become aware and/or of any infringement claims or actions which may be taken against them in respect of ~~Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof~~the PATENTS. ~~11.2.2 Subject~~ 15.2 Should there be a third party infringement of the PATENTS in the FIELD, the CO- OWNERS may at their sole expense undertake a legal action against the infringing party with the understanding that any compensation and damages awarded therefore are fly and irrevocably granted to ~~Sections 11.2.3 and 11.2.4, Advancis may,~~ them. The foregoing shall not prevent ARKEMA from intervening in any such action at its sole ~~option~~ expense in compensation for its own prejudice. Any indemnification or damages which may be awarded by a court decision for said prejudice will belong entirely to ARKEMA, subject to the SUBLICENSE REVENUES definition. 15.3 As an exclusive licensee under the PATENTS for the PRODUCTS 1 and ~~expense~~in the FIELD only, ~~prosecute~~ ARKEMA is not entitled to undertake legal action against an infringing party based on the PATENTS’ infringement. Should the CO-OWNERS decide not to undertake such legal action against the infringing party and provided that ▇▇▇▇▇▇ has expressed its wish to do so, the REPRESENTATIVE may, if it wishes so and subject to the rights already granted to third parties under the PATENTS and in the TERRITORY, authorize ARKEMA to undertake such action at its own initiative and in its sole name. For the avoidance of doubt, nothing in the present Article shall be deemed as obliging any CO-OWNER to authorize ARKEMA to undertake said legal action. In such event, any legal costs and any damages awarded by a court decision in relation with PATENTS infringement shall belong entirely to ARKEMA, subject to the SUBLICENSE REVENUES definition. These provisions will apply, subject to mandatory legal provisions applicable in the country where the infringement has occurred. Should an action in infringement be declared inadmissible owing ARKEMA not having the capacity to act, or if it can reasonably be anticipated that an action which ▇▇▇▇▇▇ proposes to bring is declared inadmissible for that reason, the CO-OWNERS shall provide, upon ▇▇▇▇▇▇’▇ written request, all powers which might be necessary to act instead of the CO-OWNERS. In such event, any ~~Advancis Patent Rights~~legal costs and any damages awarded by a court decision in relation with PATENTS infringement shall belong entirely to ARKEMA subject to the SUBLICENSING REVENUES definition. It is specified that the provisions of this Article 15.3 will not apply to cases of infringement of the PATENTS outside the FIELD and TERRITORY, ~~Advancis Know~~which fall solely within the competence of the CO-~~How~~ OWNERS or ~~Program Developments~~any third party designated by them. ~~29 -------------------------------------------------------------------------------- 11.2.3 In~~ Should (i) the ~~event that~~ CO-OWNERS decide not to undertake a ~~Third Party infringes Advancis Patent Rights~~legal action against an infringing party and (ii) ARKEMA be not authorized by the CO-OWNERS or be entitled under the law of the country where the potential infringement occurs to bring a legal action based on the PATENTS’ infringement, ~~Advancis Know-How or Program Developments owned by Advancis by manufacture~~paragraphs (i) and (ii) above being cumulative, ~~sale or use of~~ the PARTIES will define in good faith a ~~Product~~ reduced royalty rate applicable on the NET SALES in the ~~Territory (a "PRODUCT INFRINGEMENT")~~said country. 15.4 Should any infringement suit be brought against ARKEMA, ~~then the Parties shall discuss whether or not to institute an infringement action~~ its AFFILIATES, its SUBLICENSEES and/or its DISTRIBUTORS with respect to ~~such Product Infringement~~the commercial exploitation of PRODUCTS due to the use of the PATENTS and/or the implementation of the PATENTS in the FIELD, the CO-OWNERS shall provide ARKEMA with the documents and reasonable assistance which may be required for its defense and/or defense of its AFFILIATES, its SUBLICENSEES and/or its DISTRIBUTORS, but subject to compliance with the interests of all licensees of the PATENTS. If ~~the Parties agree to institute~~ such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party an action for ~~its expenses associated with such~~ infringement ~~suit and then any remainder shall be shared by the Parties equally, with such share of the Damages~~ is found to be ~~paid to~~ admissible, ARKEMA will hold the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis KnowCO-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined OWNERS harmless; in accordance with the ~~dispute resolution process set forth~~ provisions of Article 11, ARKEMA will not be permitted to call any guarantee and cannot claim any compensation from the CO-OWNERS, and ARKEMA cannot claim any refund of amounts of any kind already paid to the REPRESENTATIVE, nor any reduction in ~~Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall,~~ amounts due at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense time of the ~~action at its own expense~~final court decision. In the event ~~that Advancis does not so elect to take over the sole defense~~ of cancellation of any of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlementPATENTS, the ~~Parties shall bear such Damages equally~~provisions of Articles 11 and 12 will be applied, and ~~shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment~~ no waivers may be permitted. 15.5 The PARTIES agree to provide each other with any documents and assistance (except for financial assistance) which may be required for the above mentioned actions. 15.6 Notwithstanding early termination or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share expiration of the ~~Damages to be paid to the other party~~present Agreement, ~~as applicable, as soon as practicable upon receipt~~ provisions of the ~~Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent~~ present Article 15 shall remain in full effect as long as actions in infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be ~~legal defenses available to it that are different from~~ undertaken against or ~~additional to those available to Advancis~~by ARKEMA, ~~Par shall have~~ its AFFILIATES and/or its SUBLICENSEES on the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share grounds of the ~~Damages to be paid to the other party, as applicable, as soon as practicable upon receipt~~ use of the ~~Damages~~PATENTS. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement

Infringement. ~~11.2.1 Par~~ 15.1 In the event that Licensor (to the extent of the actual knowledge of the licensing professional responsible for the administration of this Agreement) or the Licensee learns of infringement of potential commercial significance of any Patent Rights or Intellectual Property licensed under this Agreement within the Licensed Territory, the knowledgeable party will provide the other (i) with written notice of such infringement and ~~Advancis shall inform~~ (ii) with any evidence of such infringement available to it (the “Infringement Notice”). During the period in which, and in the jurisdiction where, the Licensee has exclusive rights under this Agreement, neither Licensor nor the Licensee will notify a possible infringer of infringement or put such infringer on notice of the existence of any Patent Rights without first obtaining consent of the other, not to be unreasonably withheld, conditioned or delayed. Both Licensor and the Licensee will use their diligent efforts to cooperate with each other ~~promptly in writing~~ to terminate such infringement without litigation. 15.2 If infringing activity of potential commercial significance by the infringer within the Licensed Territory has not been abated within ninety (90) days following the date the Infringement Notice takes effect, then the Licensee may institute suit for infringement against the infringer. Licensee will be responsible for all costs and expenses of any ~~alleged~~ action or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis proceeding against infringers. Licensor may, at its ~~sole option~~ option, voluntarily join such suit, but may not otherwise commence suit against the infringer for the acts of infringement that are the subject of the Licensee’s suit or any judgment rendered in that suit. 15.3 If, within a hundred and ~~expense~~twenty (120) days following the date the Infringement Notice takes effect, ~~prosecute~~ infringing activity of potential commercial significance by the ~~infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In~~ infringer has not been abated and if the ~~event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in~~ Licensee has not brought suit against the ~~Territory (a "PRODUCT INFRINGEMENT")~~infringer, then Licensor may institute suit for patent infringement against the ~~Parties shall discuss whether~~ infringer. 15.4 Any recovery or ~~not to institute an infringement action~~ settlement received in connection with ~~respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such~~ any suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall will first be shared by Licensor and the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, Licensee equally to cover any litigation costs each incurred and any remaining recovery shall ~~first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to~~ be paid to Licensor or the Licensee equally.. 15.5 Each party will cooperate with the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, litigation proceedings instituted hereunder but at the expense of ~~Par. Par shall bear all~~ the ~~cost and expense of~~ party who initiated the suit (unless such suit ~~and Par shall retain all payment, costs and damages received as a result thereof, whether~~ is being jointly prosecuted by ~~judgment, settlement compromise or otherwise Par shall not have~~ the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicableparties). Any ~~Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first~~ litigation proceedings will be ~~used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared~~ controlled by the ~~Parties equally, with such share of~~ party bringing the ~~Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages~~suit. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Exclusive License Agreement (Target Group Inc.)

Infringement. ~~11.2.1 Par~~ 19.1. Subject to the limitations set forth in this Section, National will indemnify, defend and ~~Advancis shall inform each other promptly in writing~~ hold DSP harmless against any claim, suit or proceeding brought against DSP, and against all damages, losses, liabilities, and costs (including, without limitation, reasonable attorneys' fees) arising out of or resulting from a claim that the exercise of any ~~alleged~~ right or ~~suspected~~ license granted to DSP under this Agreement (including, without limitation, the licensing of the Licensed Technology by DSP under Section 3 and the use of the Licensed Technology by DSP under Section 5) constitutes an infringement ~~by a Third Party~~ of any intellectual property right enforceable in [*]. IN NO EVENT SHALL NATIONAL'S LIABILITY UNDER THIS SECTION 19.1 WITH RESPECT TO THIRD PARTY CLAIMS OF PATENT INFRINGEMENT EXCEED THE TOTAL AMOUNT OF FEES PAID BY DSP TO NATIONAL UNDER THIS AGREEMENT. 19.2. Subject to the limitations set forth in this Section, National will defend any claim, suit or proceeding brought against any DSP Sublicensee and pay damages and costs awarded against such DSP Sublicensee, if based on a claim that the exercise of ~~Advancis Patent Rights~~the rights granted to such DSP Sublicensee by DSP pursuant to this Agreement and in accordance with the terms of this Agreement constitutes an infringement of any intellectual property right enforceable in [*]. IN NO EVENT SHALL NATIONAL'S LIABILITY UNDER THIS SECTION 19.2 WITH RESPECT TO THIRD PARTY CLAIMS OF PATENT INFRINGEMENT EXCEED THE TOTAL AMOUNT OF FEES PAID BY A DSP SUBLICENSEE TO DSP AND REMITTED TO NATIONAL PURSUANT TO THIS AGREEMENT. The Parties agree to each DSP Sublicensee shall be an intended third party beneficiary of National's obligations herein. In addition, ~~Advancis Know-How or Program Developments~~upon DSP's written request, National agrees to provide confirmation to potential DSP Sublicensees of National's obligations to DSP Sublicensees under this section 19.2. 19.3. National's obligations under this Section 19.0 are conditioned upon receiving prompt written notice from DSP and/or the DSP Sublicensee, as applicable, and being given full and complete authority, information and assistance (at National's expense) for defense of same. National will pay damages and costs therein awarded against DSP or the DSP Sublicensee, as applicable, but will not be responsible for any compromise made without its written consent. In providing such defense, or in the event that the use or sale of any ~~available evidence thereof. 11.2.2 Subject~~ Compliant Product incorporating, embodying or based upon the Licensed Technology is held to ~~Sections 11.2.3~~ constitute infringement and ~~11.2.4~~the use or sale of such Compliant Product is enjoined, ~~Advancis may~~National shall, at its sole ~~option~~ discretion, [*] ------------------- [*] Omitted pursuant to a confidential treatment request. The material has been filed separately with the Securities and ~~expense~~Exchange Commission. [*] 19.4. National's defense and indemnity obligations herein do not extend to any claim, ~~prosecute the~~ suit or proceeding based upon an infringement or alleged infringement of an intellectual property right by: (i) a manufacturing process of DSP or a DSP Sublicensee; (ii) any ~~Advancis Patent Rights, Advancis Know-How~~ modification of the Licensed Technology not made by National; or ~~Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In~~ (iii) the ~~event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or~~ use of ~~a Product in~~ the ~~Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether~~ Licensed Technology or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any ~~remainder shall be shared by the Parties equally, with such share~~ derivatives arising out of the ~~Damages to be paid to the other party, as applicable, as soon as practicable upon receipt~~ use of the ~~Damages. 11.2.4 In the event that only Advancis does~~ Licensed Technology, in combination with other equipment, technology or software not ~~agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged~~ purchased or ~~suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis~~licensed from National, provided that ~~Par can demonstrate through any industry recognized survey that~~ such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall claims would not have ~~the right to settle~~ occurred but for such process, combination, modification or ~~compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis~~enhancement. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Technology License Agreement (DSP Group Inc /De/)

Infringement. ~~11.2.1 Par and Advancis shall inform each other promptly in writing of any alleged~~ (a) If a third party makes, uses or ~~suspected infringement by~~ sells a ~~Third Party of~~ XENOGRAFT PRODUCT that infringes any of ~~Advancis Patent Rights~~the BTI PATENTS under which LOXO is licensed, ~~Advancis Know-How or Program Developments,~~ LOXO shall have the right and ~~of any available evidence thereof. 11.2.2 Subject~~ option but not the obligation to ~~Sections 11.2.3 and 11.2.4, Advancis may~~bring an action for infringement, at its sole ~~option and~~ expense, ~~prosecute~~ against such third party in the ~~infringement~~ name of LOXO, and to join the owner of the BTI PATENT as a party plaintiff if required. LOXO shall promptly notify BTI of any ~~Advancis Patent Rights~~such infringement and shall keep BTI informed as to the prosecution of any action for such infringement and shall not institute any infringement action without providing BTI with thirty (30) days prior written notice. No settlement, ~~Advancis Know-How~~ consent judgment or ~~Program Developments~~other voluntary final disposition of the suit may be entered into without the consent of BTI, which consent shall not unreasonably be withheld. ~~29 --------------------------------------------------------------------------------~~The rights granted under this Section 7.1 are subject to the terms and conditions of the THIRD PARTY AGREEMENTS with respect to BTI PATENTS licensed under THIRD PARTY AGREEMENTS. Any recovery of damages by LOXO for any such suit shall be applied first in satisfaction of obligations under THIRD PARTY AGREEMENTS. The balance, if any, remaining from any such recovery shall be retained by LOXO. ~~11.2.3~~ 7.2. In the event that ~~a Third Party infringes Advancis Patent Rights~~LOXO elects not to pursue an action for infringement pursuant to Section 7.1, ~~Advancis Know-How~~ or ~~Program Developments owned~~ does not do so within sixty (60) days after written notice by ~~Advancis by manufacture, sale or use~~ BTI that an unlicensed third party is an infringer of a ~~Product in~~ BTI PATENT licensed to LOXO, BTI or its licensor(s) shall have the ~~Territory (a "PRODUCT INFRINGEMENT")~~right and option, ~~then~~ but not the ~~Parties shall discuss whether or not~~ obligation at its cost and expense to initiate infringement litigation and to retain any recovered damages. 7.3. In any infringement suit either PARTY may institute ~~an infringement action with respect~~ to ~~such Product Infringement. If~~ enforce the ~~Parties agree~~ BTI PATENTS pursuant to ~~institute such a suit~~this Agreement, ~~then Advancis shall institute and control such suit including~~ the ~~settlement or compromise thereof. Par~~ other PARTY hereto shall, at the request of ~~Advancis~~the PARTY initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like. ~~Advancis may join Par as a party, and Par shall execute all papers and perform~~ All reasonable out-of-pocket costs of the other PARTY incurred in connection with rendering such ~~acts as may be reasonably required. The cost and expense of such suit~~ cooperation shall be ~~shared~~ paid by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damagesrequesting PARTY. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Shareholder Agreement (Biotransplant Inc)

Infringement. ~~11.2.1 Par and Advancis~~ (a) MWCC shall ~~inform each other~~ notify MW promptly ~~in writing~~ of any ~~alleged~~ infringements, imitations or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or unauthorized use of ~~a Product in~~ the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared Licensed Marks by ~~the Parties equally. Any royalties, payments, damages, expense, fees or other awards~~ any credit provider(s) (collectively, "~~DAMAGES~~Infringements")) of which MWCC becomes aware. MW shall take such steps as it deems reasonable in the circumstances to ▇▇▇▇▇ such Infringements. Except as provided below, ~~received by Advancis and/or Par as a result of such suit, whether through judgment or settlement,~~ MW shall ~~first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by~~ have the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par maysole right, at its ~~option and expense prosecute such infringement~~ expense, to bring any action on account of any ~~Advancis Patent Rights~~infringements, ~~Advancis Know-How or Program Developments owned~~ and MWCC shall cooperate with MW as MW may request (and at MW's expense), in connection with any such action reasonably brought by ~~Advancis~~MW. MW may settle infringements at its sole discretion (but shall use best efforts not to settle in a manner that conflicts with MWCC's rights hereunder, and may retain any and all resulting damages and/or other compensation paid by the infringer(s). If MW does not undertake appropriate steps to ▇▇▇▇▇ an Infringement within ninety (90) calendar days after notice thereof from MWCC, MWCC may prosecute the same, at its expense, provided that ~~Par can demonstrate through any industry recognized survey that such sales~~ no settlement shall be made without the prior written approval of ~~Product by the alleged or suspected infringer in the Territory exceeds [***]~~ MW. MWCC shall advise MW periodically of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense status of such ~~suit~~ action and ~~Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have~~ promptly of any material developments. MW reserves the right to ~~settle or compromise~~ participate at any time in such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expenseproceedings. In the event that ~~Advancis does not so elect to take over the sole defense of the~~ any damage, settlement and/or compensation are paid in connection with any such action at brought by MWCC, MWCC shall first retain an amount reimbursing its ~~own expense~~expenses, ~~Par~~ any remaining amount shall be ~~free to proceed~~ divided equally between MW and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the DamagesMWCC. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par (b) MW shall have the ~~right~~ sole right, at its expense, to ~~select separate counsel to participate in~~ defend and settle any action that may be commenced against MW or MWCC alleging that use of the Licensed Marks infringe any rights of others. In such ~~legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party~~ event, MWCC shall, at the ~~other~~reasonable direction of MW, promptly discontinue its use of the Licensed Marks alleged to infringe rights of others. If MW does not give notice to MWCC of its intent to defend or settle such action against MWCC or affecting MWCC's ~~request~~use of the Licensed Marks within ninety (90) calendar days after notice thereof from MWCC, ~~provide to it reasonable assistance and cooperation with respect to any such suit~~MWCC may defend the same, at its expense, provided that no settlement shall be made without the prior written approval of MW. To MWCC shall advise MW periodically of the ~~extent that any Damages become payable to any third party as a result~~ status of such ~~action, whether through judgment~~ action and promptly of any material developments. MW reserves the right to participate at any time in such proceedings. It is understood that nothing in this Section 5.16(6)(b) is intended to limit or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damagesmodify MW's indemnification obligation under SECTION 5.16(7)(a) hereof. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Account Purchase Agreement (Montgomery Ward Holding Corp)

Infringement. 11.2.1 Par and Advancis shall inform each other promptly in writing of any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 A. In the event that a third part appears to be infringing one or more of the Licensed Patents, CONVATEC shall bring such infringement to the attention of LICENSOR. If LICENSOR does not institute infringement proceedings against such third party ~~institutes any suit against Par and/or Advancis for patent infringement involving~~ within ninety (90) days after written notice from CONVATEC that such third party appears to be infringing one or more of the ~~Products~~Licensed Patents, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par CONVATEC shall have the right to ~~select separate counsel~~ take whatever steps in its own and sole discretion it shall deem advisable, including but not limited to, settlement or the filing of suit for damages or to enjoin such sales or offers for sale by such third party. LICENSOR agrees to perform all acts which may become necessary or desirable to vest in CONVATEC the right to institute any such suit and shall, upon reasonable notice, cooperate and, to the extent deemed necessary or desirable by CONVATEC and at CONVATEC’s expense, participate in any suit to enjoin such ~~legal defenses on Par's behalf~~infringement and to collect, for the benefit of CONVATEC, damages, profits and awards of any nature recoverable for such infringement. The ~~Parties shall share the cost~~ costs and ~~expense~~ expenses of such ~~defense equally~~suit or settlement shall be borne by CONVATEC. ~~Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to~~ Recovery of damages in any such ~~suit. To the extent that any Damages become payable to~~ suit or settlement with any third party ~~as a result~~ shall inure to the benefit of CONVATEC; however, CONVATEC shall after first recouping its reasonable attorneys' fees and costs incurred in connection with such suit or settlement apply any excess recovered damages to reimbursing LICENSOR, to the extent of such ~~action, whether through judgment or settlement~~excess, the ~~Parties shall bear such Damages equally~~royalties that would have been payable to LICENSOR but for application of Article V, ~~and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as~~ Paragraph E, hereof. B. LICENSOR agrees should a ~~result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such~~ third party institute a patent infringement suit ~~not otherwise reimbursed and then~~ in any ~~remainder shall be shared by the Parties equally, with such share~~ country of the ~~Damages to be paid to the other party, as applicable, as soon as practicable upon receipt~~ Territory against CONVATEC or a Subsidiary or sublicensee of ~~the Damages. 11.2.8 If either Party becomes aware of a patent~~ CONVATEC predicated on CONVATEC’s or ~~patent application that, when issued, might provide a basis for a Third Party argument that~~ its ~~valid rights are being infringed by the~~ Subsidiaries' or sublicensees’ manufacture, use or sale of Product, CONVATEC shall have the ~~Products hereunder, then~~ right to reduce by fifty percent (50%) royalties due to LICENSOR in such ~~Party shall promptly inform~~ country hereunder with respect to such Product. In the ~~other Party of~~ event such ~~patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a~~ third party ~~are likely~~ suit is successfully defended by CONVATEC, it shall, upon final determination thereof, pay to ~~be infringed~~ LICENSOR all royalties that would have been payable to LICENSOR if such suit had not been instituted, less reasonable attorneys’ fees and costs incurred by CONVATEC in connection with such suit, which shall not exceed the ~~manufacture, use or sale~~ total amount of ~~the Products hereunder~~royalties payable to LICENSOR by virtue of said successful defense and final determination. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement (Bioprogress PLC)

Infringement. 11.2.1 Par and Advancis shall inform each other promptly in writing of any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 8.1 In the event that ~~a Third Party infringes Advancis Patent Rights~~there is infringement of the PATENTS, ~~Advancis Know-How or Program Developments owned~~ the PARTIES shall notify each other in writing to that effect. During the one hundred twenty (120) day period after such notice, SSC will have the right, but not the obligation to bring suit against the alleged infringer. SSC shall bear the expenses of any suit brought by ~~Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties~~ it and shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute retain all ~~papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees~~ damages or other ~~awards (collectively, "DAMAGES"),~~ monies awarded or received ~~by Advancis and/or Par as a result~~ in settlement of such suit. If SSC elects to bring suit, ~~whether through judgment or settlement~~SSC shall have the final decision on all matters relating to litigation and any settlement discussions; provided, ~~shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally~~however, ~~with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event~~ that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par SSC shall not ~~prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee~~enter into any settlement agreement or take any position in litigation, and ~~if agreement can~~shall take reasonable efforts to prevent Tyco from entering into any settlement or taking any position in litigation, that compromises or adversely impacts the rights granted to LICENSEE under this Agreement (including, but not ~~be reached~~limited to, ~~such [***]~~ the exclusivity granted to LICENSEE within the field of use of angiographic guidewire introducers) without LICENSEE's prior written consent. LICENSEE will ~~be determined~~ use reasonable efforts to cooperate with SSC in ~~accordance with the dispute resolution process set forth in Section 17.2.2 herein. In~~ any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to ~~institute such an infringement suit at~~ consult with SSC and be represented by its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action own counsel at its own expense. All reasonable costs incurred by LICENSEE associated with providing such cooperation to SSC will be paid by SSC. In the event either SSC or Tyco, without LICENSEE's prior written consent, enters into any settlement agreement or takes any position in litigation that ~~Advancis does not so elect~~ eliminates the exclusivity granted to ~~take over~~ LICENSEE within the ~~sole defense~~ field of use of angiographic guidewire introducers, the ~~action at its own expense~~minimum annual royalties specified in Section 5.2 hereof shall automatically be reduced by one-half. If, ~~Par shall be free to proceed and solely control such defense. To~~ after the ~~extent that any Damages become payable to any Third Party as a result~~ expiration of said one hundred twenty (120) days from the date of such ~~action~~notice, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement SSC has not brought suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that against a third party ~~institutes any~~ infringer, then LICENSEE shall have the right after such one hundred twenty (120) day notice period, but not the obligation, to bring suit against ~~Par and/or Advancis for patent infringement involving the Products, the Party sued~~ such infringer and join SSC as a party plaintiff provided that LICENSEE shall ~~promptly notify the other Party in writing. Advancis shall assume the defense~~ bear all expenses of such suit~~, provided, however, that if Par is also~~ . LICENSEE shall retain all damages or other monies awarded or received in settlement of such suit. SSC will reasonably attempt to cooperate with LICENSEE in any suit for infringement of the subject patent brought by LICENSEE against a ~~defendant in such action~~ third party and ~~Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par~~ shall have the right to ~~select separate counsel~~ consult with LICENSEE and to participate in and be represented by independent counsel in such ~~legal defenses on Par's behalf~~litigation at its own expense. ~~The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it~~ All reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received costs incurred by ~~Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses~~ SSC associated with ~~such infringement suit not otherwise reimbursed and then any remainder~~ providing cooperation to LICENSEE shall be ~~shared~~ paid by LICENSEE. Where it is necessary for LICENSEE to have standing to file the ~~Parties equally~~suit, ~~with such share~~ SSC shall assign limited concurrent rights to the licensed PATENTS for the terms of the ~~Damages~~ suit. 8.2 In the event LICENSEE has decided to ~~be paid~~ bring suit against an infringer, it shall use reasonable commercial efforts to ▇▇▇▇▇ such infringement. It is understood that the term best efforts under this Paragraph 8.2 shall include the filing for injunctive relief and all other ~~party~~actions which could bring about an early abatement of the infringing activity. Notwithstanding the foregoing, ~~as applicable~~LICENSEE shall not enter into any settlement agreement, ~~as soon as practicable upon~~ or take any position in litigation which adversely impacts SSC's rights under this Agreement without written consent by SSC. During the period commencing with LICENSEE's filing of a complaint for infringement of the licensed PATENTS (or the PARTIES' receipt of ~~the Damages. 11.2.8 If either Party becomes aware of~~ a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license filed complaint from a third ~~party is necessary to avoid infringement~~ party) and ending on a court's issuance of ~~patents~~ a final non-appealable decision or other termination of the proceeding, LICENSEE's royalty obligation under Paragraph 5.2 shall be reduced by the costs and expenses LICENSEE has incurred in enforcing and protecting the PATENTS against infringement by third ~~party,~~ parties. 8.3 In the ~~Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms~~ event of such ~~a license~~infringement, ~~3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license~~ LICENSEE's remedies against SSC shall be ~~borne by the Parties. If the Executive Committee cannot agree with regard~~ limited to ~~any responsibility~~ those remedies expressly set forth in this Article 8. It is also understood and agreed that infringement proceedings referenced in this section includes proceedings challenging the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------validity of the PATENTS.

Appears in 1 contract

Sources: License Agreement (Specialized Health Products International Inc)

Infringement. ~~11.2.1 Par~~ 7.1 The LICENSOR and ~~Advancis~~ the LICENSEE shall ~~inform each other promptly in writing~~ notify one another as soon as they become aware of any ~~alleged or suspected~~ infringement of the AGREEMENT PATENTS by a ~~Third Party~~ THIRD PARTY. They shall supply one another with all items available to them in order to examine the nature and extent of ~~any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof~~this. ~~11.2.2 Subject~~ 7.2 If one of the Parties believes that the observed infringement is liable significantly to ~~Sections 11.2.3 and 11.2.4~~disrupt the LICENSEE’S use of the AGREEMENT PATENTS, ~~Advancis may, at its sole option and expense, prosecute~~ they shall approach the other Party in order to discuss the most appropriate measures in order to bring the infringement ~~of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 --------------------------------------------------------------------------------~~to an end. 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. 7.3 If the Parties ~~agree to institute such a suit~~decide, ~~then Advancis~~ by joint agreement, that they shall ~~institute and control such suit including~~ initiate legal proceedings against the ~~settlement or compromise thereof~~THIRD PARTY they shall determine if these legal proceedings should be initiate jointly. ~~Par shall, at the request of Advancis, provide reasonable cooperation and,~~ The proceedings shall be dealt with jointly. For any issues pertaining to the ~~extent possible~~protection of the AGREEMENT PATENTS, ~~have its employees testify when requested~~ the LICENSOR shall be nominated as the “leader” and ~~make available relevant records~~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, ~~papers~~in particular the assessment of their damages, ~~information, Samples, specimens~~ the latter shall be nominated as “leader” and shall act following consultation with the ~~like~~LICENSOR and shall take account of any reasonable comments made by the latter. ~~Advancis may join Par as a party, and Par~~ The Parties to the proceedings shall ~~execute all papers and perform such acts as~~ ascertain the fees to be paid between them in advance. The indemnities that may be ~~reasonably required. The cost and expense of such suit~~ awarded by the courts to both parties to the AGREEMENT shall be shared by between them in the ~~Parties equally. Any royalties~~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, ~~payments~~the LICENSEE may, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid after having given formal notice to the ~~other party~~LICENSOR for which no response has been received, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the pursue action at its own ~~expense~~initiative and in its own name. ~~In the event that Advancis does not so elect to take over~~ The fees for such proceedings shall be payable by the sole ~~defense~~ LICENSEE. The awards, including any possible damages of ~~the action at its own expense~~a punitive nature, ~~Par~~ shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared irrevocably acquired by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writingLICENSEE. ~~Advancis shall assume the defense of such suit, provided~~It is, however, agreed that ~~if Par~~ after deducting external costs incurred by the LICENSEE for successfully win the legal proceedings, the indemnities, to the 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 ~~also a defendant in such action and Par shall have reasonably concluded~~ furthermore agreed that ~~there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have~~ the LICENSOR reserves the right to ~~select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the~~ intervene at their cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damagesrisk. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Patent License Agreement (Cellectis S.A.)

Infringement. ~~11.2.1 Par and Advancis shall inform each other promptly in writing~~ (a) If any of ~~any alleged~~ the patents under which OSIRIS is licensed or ~~suspected infringement~~ sublicensed hereunder is infringed by the sale by a ~~Third Party~~ THIRD PARTY of ~~any~~ a THERAPEUTIC PRODUCT or DIAGNOSTIC PRODUCT, subject to the provisions of ~~Advancis Patent Rights~~the BIOWHITTAKER AGREEMENT with respect to sublicensed patents, ~~Advancis Know-How or Program Developments,~~ OSIRIS shall have the first right and ~~of any available evidence thereof. 11.2.2 Subject~~ option but not the obligation to ~~Sections 11.2.3 and 11.2.4, Advancis may~~bring an action for such infringement, at its sole ~~option and~~ expense, ~~prosecute~~ against such THIRD PARTY in the ~~infringement~~ name of OSIRIS and/or in the name of BIOWHITTAKER and/or in the name of a licensor of BIOWHITTAKER, as the case may be, and to join BIOWHITTAKER or its licensor as a party plaintiff if required. OSIRIS shall promptly notify BIOWHITTAKER of any ~~Advancis Patent Rights~~such infringement and shall keep BIOWHITTAKER informed as to the prosecution of any action for such infringement. No settlement, ~~Advancis Know-How~~ consent judgment or ~~Program Developments. 29 --------------------------------------------------------------------------------~~other voluntary final disposition of the suit which adversely affects a patent licensed or sublicensed to OSIRIS hereunder may be entered into without the consent of BIOWHITTAKER, which consent shall not unreasonably be withheld. ~~11.2.3~~ (b) In the event that OSIRIS shall undertake enforcement under Section 8.1(a), any recovery of damages by OSIRIS for any such suit shall be applied first in satisfaction of any out of pocket expenses and legal fees of OSIRIS regarding such suit, and BIOWHITTAKER shall receive ten percent (10%) of the remaining amount. 8.2 In the event that OSIRIS elects not to pursue an action for infringement under Section 8.1, upon written notice to OSIRIS by BIOWHITTAKER, BIOWHITTAKER shall have the right and option, but not the obligation at its cost and expense to initiate infringement litigation and to retain any recovered damages. (a) If any of the patents under which BIOWHITTAKER is licensed or sublicensed hereunder is infringed by the sale by a ~~Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use~~ THIRD PARTY of a ~~Product~~ MSC PRODUCT in the ~~Territory (a "PRODUCT INFRINGEMENT")~~BIOWHITTAKER FIELD, ~~then~~ subject to the ~~Parties shall discuss whether or not to institute an infringement action~~ provisions of the OSIRIS AGREEMENTS with respect to sublicensed patents, BIOWHITTAKER shall have the right and option but not the obligation to bring an action for such ~~Product Infringement~~infringement, at its sole expense, against such THIRD PARTY in the name of BIOWHITTAKER and/or in the name of OSIRIS and/or in the name of a licensor of OSIRIS, as the case may be, and to join OSIRIS or its licensor as a party plaintiff if required. If BIOWHITTAKER shall promptly notify OSIRIS of any such infringement and shall keep OSIRIS informed as to the ~~Parties agree~~ prosecution of any action for such infringement. No settlement, consent judgment or other voluntary final disposition of any suit that is brought which adversely affects a patent licensed or sublicensed to ~~institute~~ BIOWHITTAKER hereunder may be entered into without the consent of OSIRIS, which consent shall not unreasonably be withheld. (b) If, after permission, BIOWHITTAKER shall undertake enforcement under Section 8.3(a), any recovery of damages by BIOWHITTAKER for any such a suit shall be applied first in satisfaction of any out of pocket expenses and legal fees of BIOWHITTAKER regarding such suit, ~~then Advancis~~ and OSIRIS shall receive ten percent (10%) of the remaining amount. 8.4 If, after permission is granted, BIOWHITTAKER elects not to pursue an action for infringement under Section 8.3, upon written notice to BIOWHITTAKER by OSIRIS, OSIRIS shall have the right and option, but not the obligation at its cost and expense to initiate infringement litigation and to retain any recovered damages. 8.5 In any infringement suit either PARTY may institute ~~and control such suit including~~ to enforce a patent pursuant to this Agreement, the ~~settlement or compromise thereof. Par~~ other PARTY hereto shall, at the request of ~~Advancis~~the PARTY initiating such suit, ~~provide reasonable cooperation~~ reasonably cooperate and, to the extent reasonably possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens and the like. Advancis may join Par as a party~~specimens, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------the

Appears in 1 contract

Sources: Marketing, Collaboration and License Agreement (Osiris Therapeutics, Inc.)

Infringement. ~~11.2.1 Par and Advancis shall inform each other promptly in writing of any alleged or suspected infringement by a Third~~ If either Party of determines that any of ~~Advancis~~ the Patent ~~Rights~~Rights have been infringed by the Manufacture or Marketing in the Territory of a product containing metformin as its sole active ingredient, ~~Advancis Know-How or Program Developments~~such Party shall give to the other Party notice of such alleged infringement, ~~and~~ in which event Depomed may at its discretion take such steps as it may consider necessary to prosecute such infringement. Depomed may not settle any such litigation in a manner that adversely affects the rights of ~~any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4~~BLS hereunder without the consent of BLS, ~~Advancis may~~which consent shall not be unreasonably withheld. BLS shall have the right, at its ~~sole option and~~ own expense, ~~prosecute the infringement of~~ to be represented by counsel in any ~~Advancis Patent Rights~~such litigation. If Depomed, ~~Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights~~after such notice, ~~Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or~~ elects not to ~~institute an infringement action with respect~~ bring suit, it shall notify BLS of such election within thirty days after receipt of such notice and BLS shall then have the right to ~~such Product Infringement~~bring suit at its own expense. If BLS shall also have the ~~Parties agree~~ right to bring suit if Depomed fails to institute ~~such a suit, then Advancis shall institute and control such~~ suit ~~including~~ within ninety days from the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share date of the ~~Damages to be paid to the other party, as applicable, as soon as practicable upon receipt~~ original notice of infringement by BLS. In furtherance and not in limitation of the ~~Damages. 11.2.4 In the event that only Advancis does not agree~~ foregoing provisions of this Section 5.1, BLS may at its discretion take such steps as it may consider necessary to ~~institute a suit against a Product Infringement pursuant to Section 11.2.3 within~~ prosecute any THE SYMBOL [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN OMITTED AND ~~FOR WHICH~~ FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN ~~REQUESTED~~REQUESTED WITH RESPECT TO THE OMITTED PORTION. ~~ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934~~infringement of any patent or other intellectual property rights owned or Controlled by BLS by the Manufacture or Marketing outside of the Territory of any product containing metformin as the sole active ingredient, ~~AS AMENDED. 30 -------------------------------------------------------------------------------- at its option,~~ and Depomed shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the no right to ~~select separate counsel to~~ prosecute, or otherwise participate in ~~such legal defenses on Par's behalf. The Parties shall share~~ the ~~cost and expense of such defense equally. Each Party shall~~prosecution of, ~~at the other's request, provide to it reasonable assistance and cooperation with respect to~~ any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damagesinfringement. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Manufacturing Transfer Agreement (Depomed Inc)

Infringement. ~~11.2.1 Par and Advancis shall inform each other promptly in writing~~ (a) If any of ~~any alleged or suspected infringement~~ the IXSYS PATENTS under which MEDIMMUNE is licensed hereunder is infringed by the sale by a ~~Third Party~~ THIRD PARTY of ~~any~~ a PRODUCT, subject to the provisions of ~~Advancis Patent Rights~~the IXSYS LICENSE AGREEMENTS, ~~Advancis Know-How or Program Developments,~~ MEDIMMUNE shall have the right and ~~of any available evidence thereof. 11.2.2 Subject~~ option but not the obligation to ~~Sections 11.2.3 and 11.2.4, Advancis may~~bring an action for such infringement, at its sole ~~option and~~ expense, ~~prosecute~~ against such THIRD PARTY in the ~~infringement~~ name of IXSYS and/or in the name of MEDIMMUNE and/or in the name of a licensor of IXSYS, as the case may be, and to join IXSYS or its licensor as a party plaintiff if required. MEDIMMUNE shall promptly notify IXSYS of any ~~Advancis Patent Rights~~such infringement and shall keep IXSYS informed as to the prosecution of any action for such infringement. No settlement, ~~Advancis Know-How~~ consent judgment or ~~Program Developments. 29 --------------------------------------------------------------------------------~~other voluntary final disposition of the suit which adversely affects IXSYS PATENTS may be entered into without the consent of IXSYS, which consent shall not unreasonably be withheld. ~~11.2.3~~ (b) In the event that ~~a Third Party infringes Advancis Patent Rights~~MEDIMMUNE shall undertake the enforcement under Section 7.1(a) of the IXSYS PATENTS by litigation, ~~Advancis Know-How or Program Developments owned~~ subject to the provisions of the IXSYS LICENSE AGREEMENTS, any recovery *** CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION. of damages by ~~Advancis~~ MEDIMMUNE for any such suit shall be applied first pro rata in satisfaction of any unreimbursed out of pocket expenses and legal fees of MEDIMMUNE regarding such suit. The balance remaining from any such recovery shall be divided between MEDIMMUNE and IXSYS, as follows (i) for that portion, if any, based on lost profits, IXSYS shall recover the royalty IXSYS would have received under this Agreement if such sales had been made by ~~manufacture~~MEDIMMUNE; and (ii) for any other recovery, ~~sale or use~~ IXSYS shall receive *** of the remaining amount. 7.2 In the event that MEDIMMUNE elects not to pursue an action for infringement, upon written notice to IXSYS by MEDIMMUNE that an unlicensed THIRD PARTY is an infringer of a ~~Product in~~ VALID PATENT CLAIM of IXSYS PATENTS licensed to MEDIMMUNE, IXSYS shall have the ~~Territory (a "PRODUCT INFRINGEMENT")~~right and option, ~~then~~ but not the ~~Parties shall discuss whether or not~~ obligation at its cost and expense to initiate infringement litigation and to retain any recovered damages. 7.3 In any infringement suit either party may institute ~~an infringement action with respect~~ to ~~such Product Infringement. If~~ enforce the ~~Parties agree~~ IXSYS PATENTS pursuant to ~~institute such a suit~~this Agreement, ~~then Advancis shall institute and control such suit including~~ the ~~settlement or compromise thereof. Par~~ other party hereto shall, at the request of ~~Advancis~~the party initiating such suit, ~~provide reasonable cooperation~~ reasonably cooperate and, to the extent reasonably possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like. ~~Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit~~ All reasonable out-of-pocket costs incurred in connection with rendering cooperation requested hereunder shall be ~~shared~~ paid by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damagesparty requesting cooperation. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement (Applied Molecular Evolution Inc)

Infringement. 11.2.1 Par and Advancis shall inform each other promptly in writing of any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 (a) In the event that a ~~Third~~ Party ~~infringes Advancis Patent Rights, Advancis Know-How~~ becomes aware of any alleged or ~~Program Developments owned by Advancis by manufacture, sale or use~~ threatened infringement of ~~a Product~~ the Licensed Patents in the ~~Territory (a "PRODUCT INFRINGEMENT")~~Territory, ~~then~~ such Party shall promptly notify the ~~Parties~~ other Party in writing. Shionogi shall ~~discuss whether~~ have the right, but not the obligation, at its discretion and expense, to enforce the Licensed Patents against such infringement, and to defend the Licensed Patents against any claims of invalidity or ~~not to institute an infringement action~~ unenforceability in the Territory. Peninsula shall give Shionogi all reasonable information and assistance with respect to such ~~Product Infringement~~enforcement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par Except as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"set forth in Section 12.3(b), any damages or remuneration received ~~by Advancis and/or Par~~ as a result of such ~~suit~~action shall be [*] after reimbursing for the costs and expenses incurred by Peninsula for its assistance. (b) Peninsula shall have the right, ~~whether through judgment~~ but not the obligation, at its discretion and expense, to join in such action and seek damages for its lost profits caused by such infringement. Any damages or ~~settlement,~~ remuneration received as a result of such action shall be applied first ~~be used~~ to reimburse each Party for ~~its~~ the costs and expenses ~~associated with~~ incurred in such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within action. Any [***] ~~of being notified of such alleged or suspected infringement~~= CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, ~~Par may~~MARKED BY BRACKETS, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND ~~FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN~~ FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE ~~24b-2 UNDER~~ 406 OF THE SECURITIES ~~EXCHANGE~~ ACT OF ~~1934~~1933, AS AMENDED. ~~30 -------------------------------------------------------------------------------- at its option~~remaining amount of such damages or remuneration shall be allocated by the Parties [*] of the Parties. (c) If Shionogi does not take any legal action for any reason with respect to such infringement within one hundred twenty (120) days following Peninsula's notification, Peninsula shall have the ~~right, within [***] after commencement of such action,~~ right to ~~take over~~ bring any appropriate suit or action against the ~~sole defense of the action~~ infringer at ~~its own~~ Peninsula's expense. ~~In the event that Advancis does not so elect~~ Shionogi shall give Peninsula all reasonable information and assistance with respect to ~~take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control~~ such ~~defense~~infringement. ~~To the extent that any Damages become payable to any Third Party~~ Any damages or remuneration received as a result of such ~~action, whether through judgment or settlement, the Parties~~ action shall ~~bear such Damages equally,~~ be [*] after reimbursing any cost and ~~shall contribute such share as promptly as practicable. Any Damages received~~ expenses incurred by ~~Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party~~ Shionogi for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damagesassistance. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement (Peninsula Pharmaceuticals Inc)

Infringement. ~~11.2.1 Par and Advancis~~ 7.1 LICENSEE shall inform ~~each other~~ M.I.T. promptly in writing of any alleged ~~or suspected~~ infringement of the PATENT RIGHTS by a ~~Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments,~~ third party and of any available evidence thereof. ~~11.2.2 Subject~~ 7.2 During the term of this Agreement, LICENSEE shall have the right, but shall not be obligated, to ~~Sections 11.2.3 and 11.2.4~~prosecute at its own expense any such infringements of the PATENT RIGHTS and, ~~Advancis~~ in furtherance of such right, M.I.T. hereby agrees that LICENSEE may join M.I.T. as a party plaintiff in any such suit, without expense to M.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. 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 defended 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, 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 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 any royalties past due or withheld and applied pursuant to this Article VII. The balance remaining from any such recovery attributable to damages for lost sales shall be divided according to the royalty percentages set forth in Section 4.1; any remaining balance shall be paid to LICENSEE. 7.4 If within six (6) months after having been notified of any alleged infringement, LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE shall notify M.I.T. at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, M.I.T. shall have the right, but shall not be obligated, to prosecute at its ~~sole option and expense, prosecute the~~ own expense any infringement of the PATENT RIGHTS, and, in furtherance of such right, LICENSEE hereby agrees that M.I.T. may include LICENSEE as a party plaintiff in any ~~Advancis Patent Rights~~such suit, ~~Advancis Know-How~~ without expense to LICENSEE. The total cost of any such infringement action commenced or ~~Program Developments. 29 --------------------------------------------------------------------------------~~defended solely by M.I.T. shall be borne by M.I.T., and M.I.T. shall keep any recovery or damages for past infringement derived therefrom. ~~11.2.3~~ 7.5 In the event that a ~~Third Party infringes Advancis Patent Rights~~declaratory judgment action alleging invalidity or noninfringement of any of the PATENT RIGHTS shall be brought against LICENSEE, ~~Advancis Know-How or Program Developments owned by Advancis by manufacture~~M.I.T., ~~sale or use~~ at * CONFIDENTIAL TREATMENT REQUESTED 11 its option, shall have the right, within sixty (60) days after commencement of ~~a Product~~ such action, to join in the ~~Territory (a "PRODUCT INFRINGEMENT")~~defense of the action at its own expense. 7.6 In any infringement suit as either party may institute to enforce the PATENT RIGHTS pursuant to this Agreement, ~~then~~ the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par other party hereto shall, at the request and expense of ~~Advancis~~the party initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, specimens and the like~~. Advancis may join Par as a party~~. 7.7 LICENSEE, ~~and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense~~ during the period of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlementthis Agreement, shall ~~first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by~~ have the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined sole right in accordance with the ~~dispute resolution process set forth in Section 17.2.2 herein. In~~ terms and conditions herein to sublicense any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense infringer for future use of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the DamagesPATENT RIGHTS. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement (Metabolix Inc)

Infringement. ~~11.2.1 Par and Advancis~~ 7.1 Each PARTY shall inform ~~each~~ the other PARTY promptly in writing of any alleged ~~or suspected~~ infringement of PATENT RIGHTS by a ~~Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments,~~ third party and of any available evidence thereof. ~~11.2.2 Subject~~ 7.2 During the term of this Agreement, LICENSEE shall have the first right, but shall not be obligated to ~~Sections 11.2.3 and 11.2.4~~prosecute at its own expense, ~~Advancis~~ all infringements or misappropriations of TECHNOLOGY. LICENSEE may, for such purposes, include CURF as party plaintiff, if necessary, without expense to CURF. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of CU RF, which consent shall not unreasonably be withheld. The total cost of any such infringement or misappropriation action commenced or defended solely by LICENSEE shall be borne by LICENSEE, and LICENSEE shall keep any recovery or damages for past infringement or misappropriation derived therefrom subject to the payment of a percentage on any recoveries net of costs and expenses as an "other payment" in accordance with Section 4.l (e). LICENSEE shall indemnify CURF against any order for costs that may be made against CURF in such proceedings. 7.3 If within three (3) months after having been notified of any alleged infringement, LICENSEE is unsuccessful in persuading the alleged infringer to desist and has not brought or is not diligently pursuing an infringement action or if LICENSEE notifies CURF at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, CURF shall have the right, but shall not be obligated, to prosecute at its ~~sole option~~ own expense all infringements or misappropnat10ns of TECHNOLOGY and ~~expense~~CURF may, ~~prosecute the~~ for such purposes, include LICENSEE as a party plaintiff in any such suit, without expense to LICENSEE. The total cost of such infringement of action commenced or defended solely by CURF shall be borne by CURF and CURF shall keep any ~~Advancis Patent Rights, Advancis Know-How~~ recovery or ~~Program Developments. 29 --------------------------------------------------------------------------------~~damages for past infringement derived therefrom. ~~11.2.3~~ 7.4 In the event that ~~a Third Party infringes Advancis Patent Rights~~LICENSEE shall undertake the enforcement and/or defense of the TECHNOLOGY by litigation, ~~Advancis Know-How~~ LICENSEE may withhold up to fifty percent (50%) of the payments otherwise due CURF under Article 4 hereunder and apply the same toward payment of up to half of LICENSEE's expenses, including reasonable attorney ' s fees, in connection therewith. LICENSEE shall modify the Royalty Report form to reflect any withholdings. 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 CURF for any payments under Article 4 past due or ~~Program Developments owned by Advancis by manufacture, sale or use~~ withheld and applied pursuant to this Section 7.4. LICENSEE shall keep the balance remaining from any such recovery subject to the payment of a ~~Product~~ percentage as an "other payment" in accordance with Section 4.l (e). 7.5 In any infringement or misappropriation suit that either PARTY may institute to enforce the ~~Territory (a "PRODUCT INFRINGEMENT")~~PATENT RIGHTS pursuant to this Agreement, ~~then~~ the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par other PARTY hereto shall, at the request and expense of ~~Advancis~~the PARTY initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, specimens and the like~~. Advancis may join Par as a party~~. 7.6 LICENSEE, ~~and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense~~ during the exclusive period of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlementthis Agreement, shall ~~first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by~~ have the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined sole right in accordance with the ~~dispute resolution process set forth in Section 17.2.2 herein. In~~ terms and conditions herein to sublicense any ~~such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at~~ alleged infringer for the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT FIELD OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense USE for future use of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicablePATENT RIGHTS. Any ~~Damages received by Advancis and/or Par~~ upfront fees as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms pai1 of such a ~~license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license~~ sublicense shall be ~~borne by the Parties. If the Executive Committee cannot agree with regard~~ treated pursuant to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------Article 4.

Appears in 1 contract

Sources: Settlement and Patent License Agreement (Organovo Holdings, Inc.)

Infringement. ~~11.2.1 Par~~ If a third party claims or alleges that a Product, or any component thereof or any other material provided or developed by Venture hereunder, infringes its patent, copyright, trade m▇▇▇, trade secret, industrial design, topographies or other Intellectual Property rights anywhere in the world, Venture shall and ~~Advancis shall inform each~~ does hereby indemnify and hold the Hypercom Indemnified Parties harmless from and against all claims or allegations and other ~~promptly~~ amounts incurred by the Hypercom Indemnified Parties in ~~writing of~~ connection with such third party claim, including without limitation any ~~alleged or suspected infringement~~ monetary relief awarded against the Hypercom Indemnified Parties by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees court or other ~~awards (collectively~~judicial, ~~"DAMAGES")~~legal or arbitral process, ~~received by Advancis and/or Par~~ authority or jurisdiction, or a final settlement amount, if any, as a result of such ~~suit~~third party claim and Venture shall also, ~~whether through judgment or settlement~~at Venture’s cost, ~~shall first~~ defend the Hypercom Indemnified Parties against the third party claim, during which defense, the Hypercom Indemnified Parties may be ~~used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared~~ independently represented, at Venture’s cost, by ~~the Parties equally, with such share~~ counsel of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within Hypercom Indemnified Parties’ selection. The Hypercom Indemnified Parties shall [****] ~~of being notified~~ Confidential Treatment Requested promptly notify Venture of such ~~alleged or suspected infringement, Par may~~claim and, at ~~its option and expense prosecute such infringement of any Advancis Patent Rights~~Venture’s cost, ~~Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer~~ cooperate in the ~~Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***]~~ defense and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 hereinall related negotiations. In ~~any such infringement suit Par may institute~~ addition to ~~enforce Advancis Patent Rights~~the other obligations set out in this Section, ~~Advancis Know-How or Program Developments owned by Advancis, Advancis~~ Venture shall~~, at the request and expense of Par, provide reasonable cooperation and~~, to the extent ~~possible~~legally allowable, ~~have~~ continue to supply Products and shall use its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably requiredcommercially reasonable efforts, at its own cost, to procure for the ~~expense of Par. Par shall bear all the cost~~ Hypercom Indemnified Parties and ~~expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have~~ its customers the right to ~~settle~~ continue using, importing, exporting and selling a Product; or ~~compromise such action or take any steps that adversely affect~~ with the ~~scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written~~ consent of ~~Advancis. 11.2.5 In~~ the ~~event that only Par does not agree to institute suit against~~ Hypercom Indemnified Parties, replace the same with a comparable non-infringing Product or modify a Product ~~Infringement pursuant~~ so as to ~~Section 11.2.3 within [***]~~ avoid the infringement. Where Venture has not been able to successfully procure one of ~~being notified of such alleged~~ the aforementioned remedies Venture shall, in addition to its indemnification obligations hereunder, promptly refund to the Hypercom Indemnified Parties all amounts paid to Venture under this Agreement and the Hypercom Indemnified Parties may, in its sole discretion and without any penalty, liability or ~~suspected infringement~~charge, ~~then Advancis~~ notwithstanding any other term or provision hereof, immediately by written notice to Venture, terminate this Agreement. Notwithstanding the foregoing, except for Improvements or New Technology solely created by Venture hereunder, Venture shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid no obligation to the ~~other party, as applicable, as soon as practicable upon receipt of~~ Hypercom Indemnified Parties under this Section 17.2 where the ~~Damages~~claims relate solely to Hypercom’s Property or Hypercom Product designs provided to Venture. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Contract Manufacturing Agreement (Hypercom Corp)

Infringement. ~~11.2.1 Par and Advancis shall inform each other promptly in writing~~ (a) If HPI learns of any ~~alleged or suspected~~ substantial infringement ~~by a Third Party~~ of ~~any of Advancis~~ the 412 Patent Rights, ~~Advancis Know-How or Program Developments~~HPI shall so inform Callisto. During the Term, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis Callisto shall have the right to ~~institute such an infringement suit~~ prosecute in its own name and at its ~~cost~~ own expense any infringement of any of the 412 Patent Rights. HPI or the Inventors may voluntarily join such suit and ~~expense~~ may be represented by counsel of their choice, each at their own expense. Callisto may not join HPI or the Inventors in a suit initiated by Callisto without such party's prior written consent, PROVIDED, HOWEVER, that if HPI or the Inventors are determined by a court to be a necessary or required party in any such suit, then no consent shall be required. If, in a suit initiated by Callisto, HPI or the Inventors are involuntarily joined other than by Callisto, or if HPI or the Inventors are joined because they are deemed to be a necessary or required party, then Callisto will pay the reasonable costs incurred by HPI or the Inventors, as applicable, arising out of such suit, including but not limited to, any reasonable legal fees of counsel that HPI or the Inventors select and retain to ~~retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise~~represent them in the suit. ~~11.2.6~~ (b) Recoveries from actions brought by Callisto pursuant to Paragraph 5.2(a) shall belong to the Callisto, PROVIDED, HOWEVER, that the amount by which such recoveries exceed Callisto's expenses for such actions shall be subject to the royalty in Section 3.2 above as if the net amount of any such recovery is considered to be "Net Sales." In the event that ~~a declaratory judgment action alleging invalidity~~ Callisto does not elect to exercise its right to prosecute an infringement on the 412 Patent Rights pursuant to this Section 5.2, after written consent by Callisto, which such consent shall not be unreasonably withheld or ~~non-infringement of any Advancis Patent Rights~~delayed, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action HPI may do so at its own expense, controlling such action. In the event that ~~Advancis~~ HPI does not so elect to ~~take over~~ exercise its right to prosecute an infringement on the ~~sole defense of~~ 412 Patent Rights pursuant to this Section 5.2, then the ~~action~~ Inventors may do so at ~~its~~ their own expense, ~~Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of~~ controlling such action~~, whether through judgment~~ . Recoveries from such actions brought by HPI or ~~settlement,~~ the ~~Parties~~ Inventors shall ~~bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment~~ belong entirely to HPI or ~~settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by~~ the ~~Parties equally, with such share of the Damages to be paid to the other party~~Inventors, as applicable~~, as soon as practicable upon receipt of the Damages~~. ~~11.2.7 In the event that a third~~ (c) Each party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with ~~each~~ the other ~~so that each Party can determine whether valid rights~~ in litigation proceedings at the expense of ~~a third~~ the party ~~are likely to~~ bringing suit. Litigation shall be ~~infringed~~ controlled by the ~~manufacture~~party bringing the suit, ~~use or sale~~ except that HPI and the Inventors may be represented by counsel of ~~the Products hereunder~~their choice in any suit brought by Callisto. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Sublicense Agreement (Callisto Pharmaceuticals Inc)

Appears in 1 contract

Sources: License Agreement (Diversa Corp)

Infringement. ~~11.2.1 Par~~ 13.1 ECHOMAIL shall defend, indemnify and ~~Advancis shall inform each~~ hold harmless CUSTOMER from all costs, expenses, damages, suits and other ~~promptly~~ proceedings incurred by CUSTOMER, its officers, directors, employees or agents in ~~writing~~ connection with any claim that the Licensed Software infringes any patent, copyright, trade secret or other proprietary rights of any ~~alleged or suspected infringement by a Third Party~~ third party, provided that (a) CUSTOMER promptly informs ECHOMAIL of any ~~of Advancis Patent Rights, Advancis Know-How or Program Developments~~such action, and of (b) CUSTOMER furnishes to ECHOMAIL all information and assistance in connection therewith which may be reasonably requested by ECHOMAIL from time to time. ECHOMAIL shall have the sole right to settle, defend, or otherwise handle any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developmentssuch claim. ~~29 -------------------------------------------------------------------------------- 11.2.3~~ In the event ~~that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or~~ the use of ~~a Product in the Territory (a "PRODUCT INFRINGEMENT")~~any Licensed Software is enjoined, then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par ECHOMAIL shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party either (a) procure for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have CUSTOMER the right to ~~select separate counsel~~ continue to ~~participate in~~ use such ~~legal defenses on Par's behalf. The Parties shall share~~ Licensed Software, (b) replace or modify the ~~cost~~ same to make it non-infringing, or (c) terminate the license to such Licensed Software and ~~expense~~ provide a pro rata refund to CUSTOMER of all amounts paid by CUSTOMER for the allegedly infringing Licensed Software to ECHOMAIL hereunder, based upon a five (5) year life of such ~~defense equally~~Licensed Software. 13.2 ECHOMAIL’S obligations under this Section 13.0 shall be only for the benefit of CUSTOMER. ~~Each Party shall~~ECHOMAIL shall not be obligated to defend or to be liable under this Section 13.0 to the extent the infringement asserted arises out of (a) compliance with specification originating with CUSTOMER, at (b) use or combination of Licensed Software with items not provided by ECHOMAIL to the ~~other's request, provide to it reasonable assistance~~ extent such infringement would not have occurred but for such use or combination with such other items; (c) use of other than the latest unmodified version of Licensed Software if such infringement would have been avoided by the use of such later version; or (d) modification of Licensed Software other than by ECHOMAIL. 13.3 This Section 13.0 states the exclusive remedy of CUSTOMER and ~~cooperation~~ the entire liability of ECHOMAIL with respect to infringement of any ~~such suit. To the extent that any Damages become payable to any third party as a result of such action~~patent, ~~whether through judgment~~ copyright, or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid proprietary rights of a third ~~party are likely to be infringed~~ parties by ~~the manufacture, use or sale of the Products hereunder~~items furnished by ECHOMAIL ▇▇▇▇▇▇▇▇▇. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Master License and Services Agreement

Infringement. ~~11.2.1 Par and Advancis~~ 7.1. The parties shall inform each other ~~promptly~~ promptly, in ~~writing~~ writing, of any alleged ~~or suspected~~ infringement of the Patent Rights by a ~~Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments~~third party, and of any available evidence thereof. * Confidential Treatment Requested 7.2. During the term of this Agreement, 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 and, in furtherance of such right, RESEARCH FOUNDATION hereby agrees that LICENSEE may join 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. ~~11.2.2 Subject~~ 7.3. If within [...***...] months after notifying an alleged infringer of any alleged infringement, LICENSEE shall have been unsuccessful in persuading the alleged infringer to ~~Sections 11.2.3~~ desist and ~~11.2.4~~shall not have brought and shall not be diligently prosecuting an infringement action, ~~Advancis may~~or if LICENSEE shall notify RESEARCH FOUNDATION at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, RESEARCH FOUNDATION shall have the right, but shall not be obligated, to prosecute at its ~~sole option and expense, prosecute the~~ own expense any infringement of ~~any Advancis~~ the Patent Rights, ~~Advancis Know-How~~ and RESEARCH FOUNDATION may, for such purposes, use the name of LICENSEE as party plaintiff. No settlement, consent judgment or ~~Program Developments~~other voluntary final disposition of the suit may be entered into without the consent of the other party, which consent shall not unreasonably be withheld. 7.4. ~~29 -------------------------------------------------------------------------------- 11.2.3~~ In the event that a ~~Third Party infringes Advancis~~ declaratory judgment action alleging invalidity or noninfringement of any of the Patent ~~Rights~~Rights shall be brought against RESEARCH FOUNDATION, ~~Advancis Know-How or Program Developments owned by Advancis by manufacture~~LICENSEE at its option, ~~sale or use~~ shall have the right within [...***...] after commencement of ~~a Product in~~ such action, to intervene and take over the ~~Territory (a "PRODUCT INFRINGEMENT")~~sole defense of the action at its own expense. 7.5. In any infringement suit as either party may institute to enforce the Patent Rights pursuant to this Agreement, ~~then~~ the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par other party hereto shall, at the request and expense of ~~Advancis~~the party initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. ~~11.2.4 In~~ 7.6. RESEARCH FOUNDATION warrants and represents that it has the ~~event~~ lawful right to grant the license provided in this Agreement and that ~~only Advancis does~~ it has not ~~agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***]~~ granted rights or licenses in derogation of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided this Agreement. RESEARCH FOUNDATION agrees that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the ~~most recently completed [***] and [***]. However~~term of this Agreement, ~~Par~~ or any license granted hereunder, RESEARCH FOUNDATION shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance enter into any other agreements that conflict with the ~~dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How~~ rights or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products obligations provided hereunder, ~~then such Party shall promptly inform the other Party~~ including any rights and obligations that survive termination of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Partiesthis Agreement. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------* Confidential Treatment Requested

Appears in 1 contract

Sources: License Agreement (Genetronics Biomedical LTD)

Infringement. ~~11.2.1 Par~~ 7.1 The LICENSOR and ~~Advancis~~ the LICENSEE shall ~~inform each other promptly in writing~~ notify one another as soon as they become aware of any ~~alleged or suspected~~ infringement of the AGREEMENT PATENTS by a ~~Third~~ THIRD 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, they shall approach the 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 ~~Advancis Patent Rights~~the LICENSEE’S commercial interests, ~~Advancis Know-How or Program Developments~~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 ~~available evidence thereof~~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 11 PATENT LICENSE AGREEMENT n°C-00061901 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 punitive nature, shall be irrevocably acquired by the LICENSEE. It is, however, agreed that after deducting external costs incurred by the LICENSEE for successfully win the legal proceedings, the indemnities, to the 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 furthermore agreed that the LICENSOR reserves the right to intervene at their cost and risk. ~~11.2.2 Subject~~ 7.5 If the LICENSOR wishes to ~~Sections 11.2.3~~ initiate legal proceedings and ~~11.2.4~~the LICENSEE does not wish to, ~~Advancis may~~the LICENSOR may then pursue matters at its own initiative and in its own name. The fees for such proceedings shall be payable by the sole LICENSOR. The awards, including any possible damages of a punitive nature, shall be irrevocably and wholly acquired by the LICENSOR. This provision does not however prevent the LICENSEE from taking part in proceedings, at its ~~sole option and~~ expense, ~~prosecute~~ in order to obtain compensation rightly due for damages. 7.6 If an action by the ~~infringement~~ LICENSEE in accordance with Article 7.4 above must be declared to be inadmissible because of ~~any Advancis Patent Rights~~the plaintiffs inability to act or if it can reasonably be anticipated that the LICENSEE plans to take in accordance with Article 7.4 above, ~~Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In~~ is declared inadmissible for this reason, the ~~event that~~ LICENSOR shall then provide the LICENSEE upon request and in a ~~Third Party infringes Advancis Patent Rights~~timely manner, ~~Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product~~ all powers required for them to act in the ~~Territory (a "PRODUCT INFRINGEMENT"), then~~ name and on behalf of the ~~Parties~~ LICENSOR. The costs pertaining to this action shall ~~discuss whether or not to institute an infringement action with respect to such Product Infringement~~be payable by the LICENSEE. ~~If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall,~~ The indemnities that may be allocated at the ~~request~~ end of ~~Advancis~~the proceedings shall be split as set out in Article 7.4 above. 7.7 The Parties jointly undertake to supply all documents, ~~provide reasonable cooperation and, to the extent possible, have its employees testify when requested~~ powers of attorney and ~~make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as~~ signatures that may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used required in order to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined carry out their actions successfully in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of ~~such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties~~this Article. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------12 PATENT LICENSE AGREEMENT n°C-00061901

Appears in 1 contract

Sources: Patent License Agreement (Cellectis S.A.)

Infringement. 11.2.1 Par and Advancis shall inform each other promptly in writing of any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 12.1 In the event that ~~a Third Party~~ any third party infringes ~~Advancis Patent Rights, Advancis Know-How~~ or ~~Program Developments owned~~ attempts to infringe any rights acquired by ~~Advancis by manufacture, sale~~ the Licensee hereunder during the Term the Licensee shall inform FAPL of such infringement or ~~use of a Product in~~ attempted infringement as soon as the ~~Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not~~ relevant facts are known to ~~institute an infringement action with respect to such Product Infringement~~it. If FAPL decides (in its absolute discretion) that proceedings shall be commenced the ~~Parties agree to institute such a suit, then Advancis~~ Licensee shall ~~institute and control such suit including the settlement or compromise thereof. Par shall,~~ at the request of ~~Advancis,~~ FAPL and at the Licensee's own expense give full co-operation and provide ~~reasonable cooperation and,~~ all information and assistance to FAPL as FAPL may reasonably consider necessary. If FAPL decides not to commence proceedings the ~~extent possible,~~ Licensee shall not have any right to do so in its ~~employees testify when requested~~ own name or otherwise whether pursuant to sections 30 or 31 of the Trade Marks Act 1994 or otherwise. FAPL shall bear the costs of any such proceedings (save only the Licensee's costs of assistance therewith as set out above) and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be ~~shared by~~ entitled to retain any recovery therefrom to cover such costs any balance being divided between the ~~Parties equally. Any royalties, payments, damages, expense, fees or~~ parties in accordance with the Royalty percentages as set out in this Agreement 12.2 If at any time during the Term the Licensee becomes aware that any other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by Person alleges that the ~~Parties equally, with such share~~ use of the ~~Damages~~ Property infringes any rights of another party the Licensee shall immediately give to FAPL full particulars in writing thereof and shall make no comment or admission to any third party in respect thereof. FAPL will in consultation with the Licensee take such steps as it considers reasonably necessary to defend any such allegation but shall not be ~~paid~~ obliged to ~~the other party, as applicable, as soon as practicable upon receipt of the Damages.~~take any steps if it decides in its absolute discretion not to do so ~~11.2.4~~ 12.3 In the event that ~~only Advancis does~~ any third party infringes or attempts to infringe any rights of the Licensee in connection with the Licensed Products (not ~~agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of~~ being ~~notified~~ rights acquired by the Licensee hereunder and/or the Materials) during the Term FAPL shall inform the Licensee of such ~~alleged~~ infringement or ~~suspected infringement, Par may, at its option and expense prosecute such~~ attempted infringement ~~of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided~~ as soon as the relevant facts are known to it. If the Licensee decides that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation proceedings shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, commenced FAPL shall at the request of the Licensee give full co-operation and ~~expense of Par,~~ provide ~~reasonable cooperation and,~~ all information and assistance to the ~~extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and~~ Licensee as the ~~like~~Licensee may reasonably consider necessary. ~~Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par~~ The Licensee shall bear ~~all~~ the ~~cost~~ costs of any such proceedings (including FAPL's reasonable costs of assistance therewith as set out above) and ~~expense~~ shall be entitled to retain any recovery therefrom 12.4 If at any time during the Term FAPL becomes aware that any other Person alleges that the use of the Topps Name and Logo in the Licensed Articles infringes any rights of another party FAPL shall immediately give to the Licensee full particulars in writing thereof and shall make no comment or admission to any third party in respect thereof. The Licensee will in consultation with FAPL take such ~~suit and Par shall retain all payment, costs and damages received~~ steps as ~~a result thereof, whether by judgment, settlement compromise or otherwise Par~~ it considers reasonably necessary to defend any such allegation but shall not ~~have the right~~ be obliged to ~~settle or compromise such action or~~ take any steps ~~that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis.~~if it decides in its absolute discretion not to do so ~~11.2.5~~ 12.5 In the event that ~~only Par~~ any third party infringes or attempts to infringe any rights in or in connection with the Materials which are the subject matter of joint copyright hereunder during the Term or at any time thereafter until the expiry of all relevant copyrights any party which becomes aware of the same shall inform the other of such infringement or attempted infringement as soon as the relevant facts are known to it. If either party ("the first party") decides (in its absolute discretion) that proceedings shall be commenced it shall notify the other ("the second party") in writing of that decision and the second party (in the event that it does not agree terms with the first party to ~~institute suit against a Product Infringement pursuant~~ participate as joint claimant in the said proceedings) shall at the request of the first party give full co-operation and provide all information and assistance to ~~Section 11.2.3 within [***]~~ the first party as the first party may reasonably consider necessary. The first party shall bear the costs of ~~being notified~~ any such proceedings (including the second party's reasonable costs of ~~such alleged or suspected infringement, then Advancis~~ assistance therewith as set out above) and shall ~~have the right to institute such an infringement suit at its cost and expense and~~ be entitled to retain any recovery therefrom 12.6 If at any time during the Term or at any time thereafter until the expiry of all ~~payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In~~ relevant copyrights either party becomes aware that any other Person alleges that the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense use of the ~~action at its own expense. In~~ Materials which are the ~~event~~ subject of joint copyright hereunder infringes any rights of another party that ~~Advancis does not so elect to take over the sole defense of the action at its own expense, Par~~ party shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid immediately give to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued full particulars in writing thereof and shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from make no comment or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable admission to any third party in respect thereof. The parties will in consultation with each other take such steps as ~~a result~~ they consider reasonably necessary to defend any such allegation and in the event of ~~such action, whether through judgment or settlement,~~ any dispute between the ~~Parties shall bear such Damages equally, and shall contribute such share~~ parties as ~~promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used~~ to ~~reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then~~ any ~~remainder shall be shared by the Parties equally, with such share of the Damages~~ action to be ~~paid~~ taken neither party shall make any admission or compromise any proceedings arising therefrom or fail to take any step to defend any such allegation and/or proceedings arising therefrom without first giving written notice to the other ~~party, as applicable, as soon as practicable upon receipt~~ party of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then their intention to do so such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely notice to be ~~infringed by~~ given in sufficient time to give the ~~manufacture, use~~ notified party the opportunity to take such action as it may reasonably consider appropriate to restrain such admission compromise or ~~sale~~ failure to act. For the avoidance of doubt the ~~Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement~~ contents of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license this clause shall be ~~borne~~ without prejudice to the Licensee's indemnity given to FAPL pursuant to clause 9.1 and any indemnity given by ~~the Parties. If the Executive Committee cannot agree with regard~~ FAPL pursuant to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------clause 10.1.12

Appears in 1 contract

Sources: Licensing Agreement (Topps Co Inc)

Infringement. ~~11.2.1 Par and Advancis~~ 7.1 If any claims in the PATENT RIGHTS are believed to be infringed by a third party, the party to this AGREEMENT first having knowledge of such infringement shall ~~inform~~ promptly so notify the other party to this AGREEMENT in writing. Such notice shall set forth in reasonable detail the facts of that infringement as are then known. The parties shall keep each other ~~promptly~~ informed on a timely basis of all developments within their knowledge in ~~writing~~ relation to such infringement. 7.2 BIOMIRA shall have the primary right, but not the obligation, to initiate, prosecute, and control any action or proceeding with respect to such infringement. UA agrees to cooperate and give reasonable assistance including executing all necessary documents and being named a party plaintiff and to vest in BIOMIRA the right to institute any such suit. To the extent BIOMIRA exercises its rights under this section 7.2, BIOMIRA shall bear all costs and expenses incurred by it in the foregoing regard. Any recoveries as a result of such proceedings shall belong to BIOMIRA, provided that if BIOMIRA's recoveries exceed BIOMIRA's costs and expenses with respect to such infringement action, such excess recoveries shall be considered NET SALES and subject to the applicable royalty obligations under section 4.1.2. 7.3 Decisions or actions concerning or governing any final disposition of the complaint shall be taken in consultation with UA. 7.4 During the term of this AGREEMENT, if BIOMIRA fails in a reasonably timely manner to or chooses not to prosecute infringers, UA shall have the right, but shall not be obligated, to prosecute at its own expense all infringers of the PATENT RIGHTS and, in furtherance of such right, BIOMIRA hereby agrees that UA may include BIOMIRA as a party plaintiff in any such suit, without expense to BIOMIRA. The total cost of any ~~alleged~~ such infringement action commenced or ~~suspected~~ defended solely by UA shall be borne by UA and UA shall keep any recovery or damages for past infringement ~~by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof~~derived therefrom. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 7.5 In the event that a ~~Third Party infringes Advancis Patent Rights~~declaratory judgment action alleging invalidity of or infringement of third party rights by any of the PATENT RIGHTS shall be brought against BIOMIRA and/or UA, ~~Advancis Know-How~~ and BIOMIRA fails to or ~~Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or~~ chooses not to defend such action in a reasonably timely manner, UA, at its option, shall have the right, within [+] after commencement of such action, to intervene and take over the defense of the action at its own expense. 7.6 In any infringement suit that either party may institute ~~an infringement action with respect~~ to ~~such Product Infringement. If~~ enforce the ~~Parties agree~~ PATENT RIGHTS pursuant to ~~institute such a suit~~this AGREEMENT, ~~then Advancis shall institute and control such suit including~~ the ~~settlement or compromise thereof. Par~~ other party hereto shall, at the request and expense of ~~Advancis~~the party initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement (Biomira CORP)

Infringement. ~~11.2.1 Par~~ A. Licensee and ~~Advancis~~ CMCC shall each inform ~~each~~ the other promptly in writing of any alleged ~~or suspected~~ infringement by a ~~Third Party~~ third party of ~~any~~ the Patent Rights in the Field of ~~Advancis Patent Rights, Advancis Know-How or Program Developments,~~ Use within the scope of this Agreement and of any available evidence thereof. ~~11.2.2 Subject to Sections 11.2.3 and 11.2.4~~B. During the Term of this Agreement, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, CMCC shall have the right, ~~within [***] after commencement of such action~~but shall not be obligated, to ~~take over the sole defense of the action~~ prosecute at its own ~~expense. In the event that Advancis does not so elect to take over the sole defense~~ expense any infringement of the Patent Rights and, in furtherance of such right, Licensee hereby agrees that CMCC may 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. Any recovery of damages by CMCC for such suit shall be applied first in satisfaction of any unreimbursed expenses and legal fees of CMCC hereunder. CMCC shall keep any recovery or damages for past infringement derived therefrom, except recovery that is awarded with respect to lost sales of Licensed Products, which amount of recovery will be paid to Licensee, less any amount of royalty that would have been due to CMCC if such amount were Net Sales made by Licensee, its Affiliates or Sublicensees. CMCC agrees not to enter into any settlement, consent judgment or other voluntary final disposition of the suit referenced above without first consulting Licensee. C. If within three (3) months after having been notified of any alleged infringement, CMCC shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if CMCC shall notify Licensee of its intention not to bring suit against any alleged infringer then, Licensee shall have the right, but shall not be obligated, to prosecute at its own ~~expense, Par shall be free to proceed and solely control such defense. To the extent that~~ expense any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement ~~suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share~~ of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suitPatent Rights, provided, however, that ~~if Par is also a defendant~~ such right to bring such an infringement action shall remain in ~~such action and Par shall have reasonably concluded that there~~ effect only for so long as the license granted hereunder remains exclusive. No settlement, consent judgment or other voluntary final disposition of the suit may be ~~legal defenses available to it that are different from or additional to those available to Advancis~~entered into without the consent of CMCC, ~~Par~~ which consent shall ~~have the right to select separate counsel to participate in such legal defenses on Par's behalf~~not be unreasonably withheld. ~~The Parties~~ Licensee shall ~~share the cost~~ indemnify CMCC and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------M.

Appears in 1 contract

Sources: Exclusive License Agreement (Zafgen, Inc.)

Infringement. ~~11.2.1 Par and Advancis~~ 8.1 Each party shall ~~inform each~~ promptly give written notice to the other ~~promptly in writing~~ party of: (i) any suspected infringement of a Licensed Technology; (ii) the threat of or filing of any ~~alleged or suspected infringement~~ declaratory judgment action by a ~~Third Party~~ third party alleging the invalidity, unenforceability, or noninfril). gement of ~~any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof~~the Licensed Technology. ~~11.2.2 Subject~~ 8.2 LICENSEE shall have the first right (but not the obligation) to ~~Sections 11.2.3~~ notify an entity or individual of using the Trade Secrets and ~~11.2.4, Advancis may, at its sole option and expense, prosecute~~ initiate legal proceedings to ▇▇▇▇▇ the infringement of a Licensed Technology within LICENSEE'S Field of Use. Avalon agrees to join as a party plaintiff in any ~~Advancis Patent Rights~~such lawsuit initiated by LICENSEE, ~~Advancis Know-How or Program Developments~~if requested to do so by LICENSEE, with all costs, attorneys' fees, and expenses of Avalon to be paid by LICENSEE. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or Should LICENSEE elect not to institute such an action to enforce the Licensed Technology against infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request within LICENSEE's Field of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards Use within ninety (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon 90) days after receipt of ~~the Damages. 11.2.4 In the event that only Advancis does not agree~~ written notice from Avalon of Avalon's intention to ~~institute a~~ bring suit ~~against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of~~ for such ~~alleged or suspected~~ infringement, ~~Par may,~~ Aval on shall have the right (but not the obligation) at its ~~option~~ own expense to take those steps on behalf of itself and ~~expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis~~LICENSEE, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis LICENSEE shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action participate at its own ~~expense. In~~ expense in any action brought by Avalon. 8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the ~~event that Advancis does not so elect to take over the sole defense~~ infringement of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages Licensed Technology received by ~~Advancis and/or Par as a result of such action, whether through judgment or settlement,~~ LICENSEE shall first be ~~used~~ applied to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on ParLICENSEE's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the unreimbursed expenses of such ~~a license~~ proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. If Avalon leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology shall be ~~borne by~~ first applied to reimburse Avalon's unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to the ~~Parties. If~~ extent the ~~Executive Committee cannot agree with regard~~ same pertains to ~~any responsibility set forth in~~ an infringement of the ~~preceding sentence, such issue~~ Licensed Technology shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------divided between the LICENSEE and Avalon as mutually agreed.

Appears in 1 contract

Sources: Exclusive License Agreement (AFS Holdings, Inc.)

Infringement. 11.2.1 Par and Advancis shall inform each other promptly in writing of any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 9.1 In the event that there is infringement within the Field by a ~~Third Party infringes Advancis Patent Rights~~third party of any patent licensed to JJMI hereunder, ~~Advancis Know~~JJMI shall notify BIO-~~How~~ PLEXUS in writing to that effect, including with such written notice, evidence establishing a prima facie case of infringement by such third party. If, prior to the expiration of one hundred twenty (120) days from the date of such notice, BIO-PLEXUS overcomes the prima facie case of infringement, obtains a discontinuance of such infringement or ~~Program Developments owned by Advancis by manufacture, sale or use of a Product in~~ brings suit against the ~~Territory (a "PRODUCT INFRINGEMENT")~~third party infringer, then the ~~Parties~~ obligation of JJMI to pay royalties under such Licensed Patent shall ~~discuss whether or not to institute an infringement action with respect to such Product Infringement~~continue unabated. If BIO-PLEXUS shall bear the ~~Parties agree to institute such a suit~~expenses of any suit brought by it, ~~then Advancis~~ shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute retain all ~~papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees~~ damages or other ~~awards (collectively, "DAMAGES"),~~ monies awarded or received ~~by Advancis and/or Par as a result~~ in settlement of such suit~~, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated~~ . JJMI will cooperate with BIO-PLEXUS in any such ~~infringement~~ suit and If, after the expiration of said one hundred twenty (120) days from the date of such notice, BIO-PLEXUS has not overcome the prima facie case of infringement, obtained a discontinuance of infringement, or brought suit against a third party infringer, then JJMI shall be relieved of all obligation to make payment of further royalties under the patent being infringed until such time as either the third party infringement has ceased or suit for infringement has been filed by BIO-PLEXUS. In addition, JJMI shall have the right after such one hundred twenty (120) day notice period, but not the obligation, to bring suit against such infringer and join BIO-PLEXUS as a party plaintiff provided that JJMI shall bear all expenses of such suit. BIO-PLEXUS will cooperate with JJMI in any suit for infringement of the Licensed Patent brought by JJMI against a third party and shall have the right to consult with JJMI and to participate in and be represented by independent counsel in such litigation at its own expense. JJMI shall incur no liability to BIO-PLEXUS as a consequence of such litigation or any unfavorable decision resulting therefrom, including any decision holding BIO-PLEXUS' patent invalid or unenforceable. Damages awarded or received in settlement shall be paid to JJMI in satisfaction of all expenses of such suit; any remainder shall be shared ~~by the Parties equally, with such share of the Damages~~ fifty percent (50%) to ~~be paid~~ JJMI and fifty percent (50%) to ~~the other party, as applicable, as soon as practicable upon receipt of the Damages~~BIO-PLEXUS. ~~11.2.4 In the event~~ 9.2 BIO-PLEXUS warrants that ~~only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***]~~ it is presently aware of ~~being notified of such alleged~~ no patents or ~~suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments~~ patent applications owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party ~~institutes~~ which would present any ~~suit against Par and/or Advancis for patent~~ issue of infringement ~~involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense~~ by reason of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale SNAs portion of the ~~Products hereunder. 11.2.9 If either Party believes that~~ Licensed Product. In the event JJMI is charged with such infringement by a ~~license from a third party is necessary to avoid infringement of patents of the~~ third party, JJMI shall have the ~~Executive Committee shall: 1~~right to defend against such charge of infringement, and during the period in which such litigation is pending, JJMI shall have the right to apply Fifty Percent (50%) ~~determine whether~~ of the royalties due BIO-PLEXUS on sales of the allegedly infringing Licensed Product against its litigation expenses. If, as a result of judgment in the litigation or ~~not~~ settlement with a third party, JJMI is required to ~~seek~~ pay royalties or other monies to such ~~a license~~third party, 2JJMI may thereafter deduct from the amount of royalties due BIO-PLEXUS on Unit Sales of the Licensed Product charged to infringe, an amount which is the lesser of all sums paid by JJMI to such third party, or Fifty Percent (50%) ~~appoint a negotiator~~ of all royalty payments otherwise payable to ~~negotiate~~ BIO-PLEXUS on the ~~terms~~ Unit Sales of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------Licensed Product.

Appears in 1 contract

Sources: Development and License Agreement (Bio Plexus Inc)

Infringement. ~~11.2.1 Par and Advancis shall inform each other promptly in writing of any alleged~~ (a) If a third party makes, uses or ~~suspected infringement by~~ sells a ~~Third Party of~~ XENOGRAFT PRODUCT that infringes any of ~~Advancis Patent Rights~~the LOXO PATENTS under which NOVARTIS is licensed, ~~Advancis Know-How or Program Developments,~~ NOVARTIS shall have the right and ~~of any available evidence thereof. 11.2.2 Subject~~ option but not the obligation to ~~Sections 11.2.3 and 11.2.4, Advancis may~~bring an action for infringement, at its sole ~~option and~~ expense, ~~prosecute~~ against such third party in the ~~infringement~~ name of NOVARTIS, and to join the owner of the LOXO PATENT as a party plaintiff if required. NOVARTIS shall promptly notify LOXO of any ~~Advancis Patent Rights~~such infringement and shall keep LOXO informed as to the prosecution of any action for such infringement and shall not institute any infringement action without providing LOXO with thirty (30) days prior written notice. No settlement, ~~Advancis Know-How~~ consent judgment or ~~Program Developments~~other voluntary final disposition of the suit may be entered into without the consent of LOXO, which consent shall not unreasonably be withheld. ~~29 --------------------------------------------------------------------------------~~The rights granted under this Section are subject to the terms and conditions of the THIRD PARTY AGREEMENTS and with respect, to LOXO PATENTS licensed under THIRD PARTY AGREEMENTS , only as permitted thereunder. Any recovery of damages by NOVARTIS for any such suit shall be applied first in satisfaction of obligations under THIRD PARTY AGREEMENTS. The balance, if any, remaining from any such recovery shall be retained by NOVARTIS and treated as NET SALES upon which royalties are to be paid to LOXO. ~~11.2.3~~ 8.2. In the event that ~~a Third Party infringes Advancis Patent Rights~~NOVARTIS elects not to pursue an action for infringement pursuant to Section 8.1, ~~Advancis Know-How~~ or ~~Program Developments owned~~ does not do so within sixty (60) days after written notice by ~~Advancis by manufacture, sale or use~~ LOXO that an unlicensed third party is an infringer of a ~~Product in~~ LOXO PATENT RIGHT licensed to NOVARTIS, LOXO or its licensor(s) shall have the ~~Territory (a "PRODUCT INFRINGEMENT")~~right and option, ~~then~~ but not the ~~Parties shall discuss whether or not~~ obligation at its cost and expense to initiate infringement litigation and to retain any recovered damages. 8.3. In any infringement suit either PARTY may institute ~~an infringement action with respect~~ to ~~such Product Infringement. If~~ enforce the ~~Parties agree~~ LOXO PATENTS pursuant to ~~institute such a suit~~this Agreement, ~~then Advancis shall institute and control such suit including~~ the ~~settlement or compromise thereof. Par~~ other PARTY hereto shall, at the request of ~~Advancis~~the PARTY initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like. ~~Advancis may join Par as a party, and Par shall execute all papers and perform~~ All reasonable out-of-pocket costs of the other PARTY incurred in connection with rendering such ~~acts as may be reasonably required. The cost and expense of such suit~~ cooperation shall be ~~shared~~ paid by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damagesrequesting PARTY. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Shareholder Agreement (Biotransplant Inc)

Infringement. ~~11.2.1 Par and Advancis~~ 8.1 The Parties shall ~~inform~~ promptly notify each other ~~promptly in writing~~ of any ~~alleged or~~ suspected infringement ~~by a Third Party~~ of any ~~of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof~~Licensed Patents. ~~11.2.2 Subject to Sections 11.2.3 and 11.2.4~~i. During the Term, ~~Advancis may~~COMPANY shall, at its ~~sole option and~~ expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to ~~settle~~ enforce any Licensed Patents against such infringer and may defend any declaratory judgment action brought against it alleging the invalidity of a Licensed Patent. COMPANY agrees to defend EMORY against any counterclaim brought against it in such action. EMORY shall cooperate with COMPANY in such effort, at COMPANY'S expense, including being joined as a party to such action, if necessary. COMPANY shall reimburse EMORY for any costs incurred, including reasonable attorneys’ fees, as part of any action brought by COMPANY. ii. COMPANY shall not enter into any settlement agreement, voluntary dismissal, consent judgment or ~~compromise such~~ other voluntary final disposition in any action ~~or take any steps that adversely affect~~ regarding the ~~scope~~Licensed Patents, ~~validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How~~ including without the express written consent of ~~Advancis~~EMORY. Any amounts received for punitive or exemplary damages shall be shared equally between EMORY and COMPANY and any other amounts received, including compensatory damages or damages based on a loss of revenues which exceed the out-of-pocket costs and expenses incurred by COMPANY, shall be deemed to be the proceeds of Sales of Licensed Products in the fiscal quarter received. ~~11.2.5 In the event~~ 8.2 If COMPANY fails, within one hundred twenty (120) days after receiving notice of a potential infringement, to institute an action against such infringer or notifies EMORY that ~~only Par~~ it does not ~~agree~~ plan to institute ~~suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of~~ such ~~alleged or suspected infringement~~action, then ~~Advancis~~ EMORY shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action do so at its own expense. In COMPANY shall cooperate with EMORY in such effort including being joined as a party to such action if necessary. EMORY shall be entitled to retain all damages or costs awarded in such action. Should either EMORY or COMPANY be a party to a suit under the ~~event that Advancis does not so~~ provisions of this Article and thereafter elect to ~~take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control~~ abandon such ~~defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement~~suit, the ~~Parties~~ abandoning party shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid give timely notice to the other ~~party~~party who may, ~~as applicable~~at its discretion, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense continue prosecution of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement

Infringement. ~~11.2.1 Par and Advancis shall inform each other promptly~~ If any Services, Work Product and/or Vendor Proprietary Information becomes, or in ~~writing~~ Vendor’s reasonable opinion is likely to become, the subject of any ~~alleged~~ claim or ~~suspected infringement by a Third Party of any of Advancis Patent Rights~~action for infringement, ~~Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may,~~ then Vendor shall have the right at its ~~sole option~~ discretion and ~~expense~~expense either to: (a) procure for Customer the right to continue to use and exploit such Services, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Work Product and/or Vendor Proprietary Information in the ~~Territory~~ manner as contemplated in this Agreement; or (~~a "PRODUCT INFRINGEMENT")~~b) modify such Services, ~~then the Parties shall discuss whether~~ Work Product and/or Vendor Proprietary Information to render them non-infringing, provided that such modification does not adversely affect Customer’s use or ~~not to institute an infringement action with respect to such Product Infringement~~exploitation thereof, or any other Customer rights as contemplated hereunder. If neither of these remedies are reasonably available to Vendor, Vendor may require Customer to cease using the ~~Parties agree to institute such a suit~~infringing Services, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis Work Product and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within Vendor PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED SEPARATELY WITH THE SECRETARY OF THE COMMISSION PURSUANT TO AN APPLICATION FOR CONFIDENTIAL TREATMENT UNDER RULE 24B-2 OF THE SECURITIES EXCHANGE ACT; [***] ~~of being notified of such alleged~~ DENOTES OMISSIONS Proprietary Information and Vendor will issue Customer a pro-rated refund based on a 5 year amortization schedule for the infringing Services, Work Product and/or Vendor Proprietary Information. Vendor shall have no liability for any infringement claim based upon: (i) any alteration or ~~suspected infringement, Par may, at its option and expense prosecute such infringement~~ modification of any ~~Advancis Patent Rights~~Services, ~~Advancis Know-How~~ Work Product and/or Vendor Proprietary Information not provided by Vendor, if the infringement would not have occurred but for the unauthorized alteration or ~~Program Developments owned~~ modification by ~~Advancis,~~ Customer provided ~~that Par can demonstrate through~~ any ~~industry recognized survey that such sales of Product~~ authorization must be expressly provided in writing by ~~the alleged or suspected infringer in the Territory exceeds [***]~~ Vendor; (ii) unauthorized use by Customer of the ~~sales~~ Services, Work Product and/or Vendor Proprietary Information in ~~the Territory of the Product~~ combination with other programs or data not intended by ~~Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall~~ Vendor to be ~~conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance~~ used with the ~~dispute resolution process set forth in Section 17.2.2 herein. In any such~~ Services, Work Product and/or Vendor Proprietary Information(s), as the case may be, if the infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall would not have ~~the right to settle or compromise~~ occurred but for such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated unauthorized use in combination with such programs or data; provided any authorization must be expressly provided in writing by Vendor; (iii) Vendor’s compliance with Customer’s designs, specifications or instructions; or (iv) any Customer provided intellectual property if the infringement ~~suit~~ would not ~~otherwise reimbursed and then any remainder shall be shared by~~ have occurred but for the ~~Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages~~Customer intellectual property. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Master Professional Services Agreement (Virtusa Corp)

Infringement. ~~11.2.1 Par~~ 7.1 GENERAL will protect its interests in LICENSED PATENTS from infringement and ~~Advancis~~ prosecute infringement when, in its judgment, such action may be reasonably necessary, proper and justified. LICENSEE (or its SUBLICENSEE) shall ~~inform each other promptly~~ also have the right to bring and litigate in ~~writing~~ its own name (or jointly in the names of ~~any alleged~~ LICENSEE and the GENERAL, if required by law) such suits for infringement of LICENSED PATENTS as LICENSEE or ~~suspected~~ its SUBLICENSEE sees fit in its discretion. 7.2 If GENERAL shall have supplied LICENSEE with written evidence demonstrating to LICENSEE's reasonable satisfaction prima facie infringement of a claim of a LICENSED PATENT by a ~~Third Party~~ third party, GENERAL may by notice request LICENSEE to take steps to protect the LICENSED PATENT. LICENSEE shall notify GENERAL within three (3) months of ~~any~~ the receipt of ~~Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject~~ such notice whether LICENSEE intends to ~~Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense,~~ prosecute the alleged infringement. If LICENSEE notifies GENERAL that it intends to so prosecute, LICENSEE shall, within three (3) months of its notice to GENERAL either (i) cause infringement ~~of any Advancis Patent Rights, Advancis Know-How~~ to terminate or ~~Program Developments~~(ii) initiate legal proceedings against the infringer. ~~29 -------------------------------------------------------------------------------- 11.2.3~~ In the event LICENSEE notifies GENERAL that ~~a Third Party infringes Advancis Patent Rights~~LICENSEE does not intend to prosecute said infringement or fails to initiate legal proceedings within said three month period, ~~Advancis Know-How~~ GENERAL may, upon notice to LICENSEE, initiate legal proceedings against the infringer at GENERAL's expense and in LICENSEE's name if so required by law. No settlement, consent judgment or ~~Program Developments owned~~ other voluntary final disposition of the suit which invalidates or restricts the claims of such PATENT RIGHTS may be entered into without the consent of GENERAL, which consent shall not be unreasonably withheld. COMPANY shall indemnify GENERAL against any order for payment that may be made against GENERAL in such proceedings, so long as such order does not result from any malfeasance by ~~Advancis by manufacture~~GENERAL. 7.4 For the purpose of the proceedings referred to in this Article 7, ~~sale or~~ the GENERAL and LICENSEE shall permit the use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute their names and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute ~~all papers~~ such documents and ~~perform~~ carry out such other acts as may be ~~reasonably required~~necessary. The ~~cost and expense~~ party initiating or carrying on such legal proceedings shall keep the other party informed of the progress of such ~~suit~~ proceedings and said other party shall be ~~shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of~~ entitled to counsel in such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action proceedings but at its own expense, ~~Par shall~~ said reasonable expenses to be ~~free to proceed and solely control such defense. To the extent that~~ off-set against any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages damages received by ~~Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement~~ the party bringing suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------the foregoing paragraph 7.3. 7.5 Confidential information omitted and filed separately with the Commission.

Appears in 1 contract

Sources: License Agreement (Ergo Science Corp)

Infringement. ~~11.2.1 Par and Advancis~~ 7.1. Each party shall inform ~~each~~ the other promptly in writing of any alleged ~~or suspected~~ infringement of the PATENT RIGHTS by a ~~Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments,~~ third party and of any available evidence thereof. ~~11.2.2 Subject~~ 7.2. During the term of this Agreement, TEPHA shall have the right, but shall not be obligated, to ~~Sections 11.2.3 and 11.2.4, Advancis may,~~ prosecute at its ~~sole option and expense~~own expense all infringements of the PATENT RIGHTS in the FIELD OF USE and, ~~prosecute the infringement~~ in furtherance of such right, METABOLIX * CONFIDENTIAL TREATMENT REQUESTED hereby agrees that TEPHA may join METABOLIX as a party plaintiff in any such suit, without expense to METABOLIX. The total cost of any ~~Advancis Patent Rights, Advancis Know-How or Program Developments~~such infringement action commenced solely by TEPHA shall be borne by TEPHA. ~~29 -------------------------------------------------------------------------------- 11.2.3~~ In the event that ~~a Third Party infringes Advancis Patent Rights~~TEPHA shall have exercised its right to bring an action, ~~Advancis Know-How~~ TEPHA shall be responsible for defending against any counterclaims alleging invalidity or ~~Program Developments owned by Advancis by manufacture, sale or use~~ unenforceability of a ~~Product~~ PATENT RIGHT and for prosecuting the action through to settlement or other final disposition. *. 7.3. If within six (6) months after having been notified of any alleged infringement, TEPHA shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if TEPHA shall notify METABOLIX at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events, only, METABOLIX shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the PATENTS RIGHTS in the ~~Territory (~~FIELD of USE. In furtherance of such right, TEPHA hereby agrees that METABOLIX may include TEPHA as a ~~"PRODUCT INFRINGEMENT")~~party plaintiff in any such suit, ~~then~~ without expense to TEPHA. The total cost of any such infringement action commenced or defended solely by METABOLIX shall be borne by METABOLIX, and METABOLIX shall be responsible for defending against any counterclaims alleging invalidity or unenforceability of a PATENT RIGHT. 7.4. Any recovery of damages by the ~~Parties~~ prosecuting party for any such suit shall ~~discuss whether~~ be applied first in satisfaction of any unreimbursed expenses and legal fees of such party relating to the suit, and next toward reimbursement of METABOLIX for any royalties past due or withheld and applied pursuant to Paragraph 7.2, if applicable. *. 7.5. In the event of the institution of any suit by a third party against METABOLIX, TEPHA or its sublicensees for patent infringment involving the PATENT RIGHTS in the FIELD OF USE, the party sued shall promptly notify the other party in writing. TEPHA shall have the right, but not the obligation, to defend such suit at its own expense. If TEPHA shall elect not to ~~institute an infringement action with respect~~ defend, TEPHA shall * CONFIDENTIAL TREATMENT REQUESTED promptly notify METABOLIX. METABOLIX shall have the right, but not the obligation, to defend such ~~Product Infringement~~suit at its expense. 7.6. If TEPHA shall exercise its rights pursuant to Section 7.5 to defend the PATENT RIGHTS, *: 7.6.1. If the ~~Parties agree~~ enforceability of all material claims in such PATENT RIGHT claiming the LICENSED PRODUCT or PROCESS is upheld by a court or other legal or administrative tribunal from which no appeal is or can be taken, * or 7.6.2. If one or more claims in such PATENT RIGHT covering the LICENSED PRODUCT or PROCESS shall be held to be invalid or otherwise unenforceable by a court or other legal or administrative tribunal in any country from which no appeal is or can be taken or the scope thereof is modified and, as a result such PATENT RIGHT no longer offers substantial protection to a LICENSED PRODUCT or PROCESS in such country, *. 7.7. In any suit as either party may institute ~~such a suit~~to enforce or defend the PATENT RIGHTS pursuant to this Agreement, ~~then Advancis shall institute and control such suit including~~ the ~~settlement or compromise thereof. Par~~ other party hereto shall, at the request and expense of ~~Advancis~~the party initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, specimens and the like. ~~Advancis may join Par as a party, and Par~~ The parties shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share keep one another informed of the ~~Damages to be paid to~~ status of and of their respective activities regarding any litigation or settlement thereof concerning the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer PATENT RIGHTS in the ~~Territory exceeds [***]~~ FIELD of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How USE or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise LICENSED PRODUCTS or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, PROCESSES ; provided, however, that ~~if Par is also~~ no settlement or consent judgement or other voluntary final disposition of any suit defended or action brought by a ~~defendant in such action and Par shall have reasonably concluded that there~~ party pursuant to this Article 7 may be ~~legal defenses available to it that are different from or additional to those available to Advancis, Par shall have~~ entered into without the ~~right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense~~ consent of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, ~~as applicable~~such consent not to be unreasonably withheld or delayed. As to the MIT PATENT RIGHTS, ~~as soon as practicable upon receipt~~ no settlement, consent judgement or other voluntary final disposition of the ~~Damages~~suit may be entered into without the consent of MIT which consent shall not unreasonably be withheld. TEPHA shall indemnify MIT against any order for * CONFIDENTIAL TREATMENT REQUESTED costs that may be made against MIT in proceedings commenced and defended solely by TEPHA. ~~11.2.8 If either Party becomes aware~~ 7.8. TEPHA, during the period of ~~a patent or patent application that~~this Agreement, ~~when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by~~ shall have the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration sole right in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT the terms and conditions herein to sublicense any alleged infringer for future use of the PATENT RIGHTS in the FIELD OF ~~1934, AS AMENDED. 31 --------------------------------------------------------------------------------~~USE.

Appears in 1 contract

Sources: License Agreement (Metabolix, Inc.)

Infringement. ~~11.2.1 Par~~ 13.1 ECHOMAIL shall defend, indemnify and ~~Advancis shall inform each~~ hold harmless CUSTOMER from all costs, expenses, damages, suits and other ~~promptly~~ proceedings incurred by CUSTOMER, its officers, directors, employees or agents in ~~writing~~ connection with any claim that the Licensed Software infringes any patent, copyright, trade secret or other proprietary rights of any ~~alleged or suspected infringement by a Third Party~~ third party, provided that (a) CUSTOMER promptly informs ECHOMAIL of any ~~of Advancis Patent Rights~~such action, ~~Advancis Know-How~~ and (b) CUSTOMER furnishes to ECHOMAIL all information and assistance in connection therewith which may be reasonably requested by ECHOMAIL from time to time. ECHOMAIL shall have the sole right to settle, defend, or ~~Program Developments, and of~~ otherwise handle any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developmentssuch claim. ~~29 -------------------------------------------------------------------------------- 11.2.3~~ In the event ~~that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or~~ the use of ~~a Product in the Territory (a "PRODUCT INFRINGEMENT")~~any Licensed Software is enjoined, then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par ECHOMAIL shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party either (a) procure for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have CUSTOMER the right to ~~select separate counsel~~ continue to ~~participate in~~ use such ~~legal defenses on Par's behalf. The Parties shall share~~ Licensed Software, (b) replace or modify the ~~cost~~ same to make it non-infringing, or (c) terminate the license to such Licensed Software and ~~expense~~ provide a pro rata refund to CUSTOMER of all amounts paid by CUSTOMER for the allegedly infringing Licensed Software to ECHOMAIL hereunder, based upon a five (5) year life of such ~~defense equally~~Licensed Software. 13.2 ECHOMAIL’S obligations under this Section 13.0 shall be only for the benefit of CUSTOMER. ~~Each Party shall~~ECHOMAIL shall not be obligated to defend or to be liable under this Section 13.0 to the extent the infringement asserted arises out of (a) compliance with specification originating with CUSTOMER, at (b) use or combination of Licensed Software with items not provided by ECHOMAIL to the ~~other's request, provide to it reasonable assistance~~ extent such infringement would not have occurred but for such use or combination with such other items; (c) use of other than the latest unmodified version of Licensed Software if such infringement would have been avoided by the use of such later version; or (d) modification of Licensed Software other than by ECHOMAIL. 13.3 This Section 13.0 states the exclusive remedy of CUSTOMER and ~~cooperation~~ the entire liability of ECHOMAIL with respect to infringement of any ~~such suit. To the extent that any Damages become payable to any third party as a result of such action~~patent, ~~whether through judgment~~ copyright, or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid proprietary rights of a third ~~party are likely to be infringed~~ parties by ~~the manufacture, use or sale of the Products~~ items furnished by ECHOMAIL hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Master License and Services Agreement

Infringement. ~~11.2.1 Par~~ 11.1 During the term of this Agreement, LICENSEE shall have the first option to police the Licensed Patents and ~~Advancis~~ Products against infringement within the Field of Use by other parties. This right to police includes defending any action for declaratory judgment of noninfringement or invalidity; and prosecuting, defending or settling all infringement and declaratory judgment actions at its expense and through counsel of its selection, except that any such settlement shall ~~inform each other promptly~~ only be made with the advice and consent of MICHIGAN. MICHIGAN shall provide reasonable assistance to LICENSEE with respect to such actions, provided LICENSEE shall reimburse MICHIGAN for out-of-pocket expenses incurred in ~~writing~~ connection with any such assistance rendered at LICENSEE’ request or reasonably required by MICHIGAN. In the event LICENSE elects to institute any such action or suit, MICHIGAN agrees to be named as a nominal party therein. MICHIGAN retains the right to participate, with counsel of its own choosing, in any ~~alleged or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof~~action under this Paragraph 11.1. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 11.2 In the event that ~~a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use~~ LICENSEE shall institute an action for infringement of a ~~Product in the Territory (~~License Patent or defend a ~~"PRODUCT INFRINGEMENT"), then the Parties shall discuss whether~~ declaratory judgment or ~~not to institute an infringement~~ other action with respect to ~~such Product Infringement. If the Parties agree~~ a Licensed Patent, any portion of any resulting settlement payments or damages awarded which is received by LICENSEE, less LICENSEE’s actual outside attorney fees and other direct, out-of-pocket litigation expenses, including expenses due MICHIGAN for its participation in said litigation as provided under Paragraph 11.1 (not to ~~institute such a suit~~include any compensation paid to employees of LICENSEE or Sublicensees) paid and unrecovered by LICENSEE, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used paid 75% to ~~reimburse each Party for its expenses associated with such infringement suit~~ LICENSEE and ~~then any remainder shall be shared by the Parties equally, with such share~~ 25% to MICHIGAN within 30 days of the ~~Damages to be paid to the other party, as applicable, as soon as practicable upon~~ receipt ~~of the Damages~~thereof. ~~11.2.4~~ 11.3 In the event that ~~only Advancis does not agree~~ LICENSEE fails to ~~institute a suit against a Product Infringement pursuant~~ take action to ~~Section 11.2.3 within [***] of being notified of such~~ ▇▇▇▇▇ any alleged ~~or suspected infringement, Par may, at its option and expense prosecute such~~ infringement of a License Patent within sixty (60) days of a request by MICHIGAN to do so (or within such shorter period which might be required to preserve the legal rights or MICHIGAN under the laws of any ~~Advancis Patent Rights, Advancis Know-How~~ relevant government or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result political subdivision thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement), then ~~Advancis~~ MICHIGAN shall have the right to ~~institute~~ take such ~~an infringement suit~~ action (including prosecution of a suit) at its ~~cost and~~ expense and LICENSEE shall use reasonable efforts to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of cooperate in such action, ~~to take over the sole defense of the action~~ at ~~its own~~ LICENSEE’s expense. In the event ~~that Advancis does not so elect~~ MICHIGAN elects to ~~take over the sole defense of the~~ *** Material has been omitted pursuant to a request for confidential treatment. institute any such action ~~at its own expense~~or suit, ~~Par shall~~ LICENSEE agrees to be ~~free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party~~ named as a ~~result of~~ nominal party therein. MICHIGAN shall have full authority to settle on such ~~action~~terms as MICHIGAN shall determine, ~~whether through judgment or settlement, the Parties~~ except that MICHIGAN shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not ~~otherwise reimbursed and then~~ reach any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that settlement whereby it licenses a third party ~~institutes~~ under any ~~suit against Par and/or Advancis~~ Licensed Patents in the Field of Use without the consent of LICENSEE, which consent can be withheld for ~~patent infringement involving~~ any reason. Any portion of any resulting settlement payments or damages awarded which is received by MICHIGAN, less MICHIGAN’s actual outside attorney fees and other direct, out-of-pocket litigation expenses (not to include nay compensation paid to employees of MICHIGAN) paid and unrecovered by MICHIGAN, and after payment to LICENSEE (such payment not to exceed the ~~Products, the Party sued shall promptly notify the other Party~~ recovery or settlement amounts actually received by MICHIGAN) of any unrecovered expenses paid by LICENSEE at MICHIGAN’s request to third parties in ~~writing. Advancis shall assume the defense~~ furtherance of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlementactions, shall ~~first~~ be ~~used~~ paid 25% to ~~reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed~~ LICENSEE and ~~then any remainder shall be shared by the Parties equally, with such share~~ 75% to MICHIGAN within 30 days of the ~~Damages to be paid to the other party, as applicable, as soon as practicable upon~~ receipt ~~of the Damages~~thereof. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement (Intralase Corp)

Infringement. 11.2.1 Par and Advancis shall inform each other promptly in writing of any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis mayCompany will defend, at its ~~sole option and~~ own expense, ~~prosecute~~ any action against MassRoots based on a claim that the ~~infringement of any Advancis Patent Rights~~CannaRegs Non-Cannabis Intellectual Property infringes a United States or foreign patent, ~~Advancis Know-How~~ or ~~Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How~~ United States or ~~Program Developments owned by Advancis by manufacture, sale~~ foreign copyright or ~~use~~ involves misappropriation of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, trade secret to the extent ~~possible, have its employees testify when requested~~ that such claim relates to Company’s usage of the CannaRegs Non-Cannabis Intellectual Property. Company will pay such damages or costs as are finally awarded against MassRoots for such infringement or misappropriation provided that MassRoots gives Company: (a) prompt written notice of any such action and ~~make available relevant records, papers, information, Samples, specimens~~ of all prior related claims; (b) sole control of the defense and ~~the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense~~ settlement of such ~~suit shall be shared by the Parties equally. Any royalties, payments, damages,~~ action; and (c) full cooperation (at Company’s expense~~, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment~~ ) in any defense or settlement. Company shall not be liable for any fees, ~~shall first be used~~ costs or damages incurred without such prior written notice, control and cooperation and/or that do not relate to ~~reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share~~ Company’s usage of the ~~Damages~~ CannaRegs Non-Cannabis Intellectual Property. Should any CannaRegs Non-Cannabis Intellectual Property become, or in Company's opinion be likely to ~~be paid to~~ become, the ~~other party~~subject of a claim of infringement or trade secret misappropriation as set forth herein, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par mayCompany shall, at its option and expense ~~prosecute such~~ either: (a) obtain for itself the right to continue using the CannaRegs Non-Cannabis Intellectual Property; (b) replace or modify the CannaRegs Non-Cannabis Intellectual Property so its use becomes non-infringing or otherwise lawful; or (c) discontinue using the infringing portion of the CannaRegs Non-Cannabis Intellectual Property. MassRoots shall have no liability for any claim of infringement of ~~any Advancis Patent Rights~~a patent, ~~Advancis Know-How~~ copyright or ~~Program Developments owned by Advancis~~other intellectual property right or trade secret misappropriation, ~~provided that Par can demonstrate through any industry recognized survey that such sales of Product by~~ based on the ~~alleged or suspected infringer in the Territory exceeds [***]~~ use of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis KnowCannaRegs Non-~~How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and,~~ Cannabis Intellectual Property under this Agreement to the extent ~~possible~~that the CannaRegs Non-Cannabis Intellectual Property is held by CannaRegs immediately prior to the Merger. This Section 6 states Company’s exclusive remedy and MassRoots’ sole liability for the CannaRegs Non-Cannabis Intellectual Property, ~~have its employees testify when requested and make available relevant records~~that is held by CannaRegs immediately prior to the Merger, ~~papers, information, Samples, specimens and~~ infringing on the ~~like. Par may join Advancis as~~ intellectual property rights of third parties or constituting a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense misappropriation of the ~~action at its own expense. In the event that Advancis does not so elect to take over the sole defense~~ trade secrets of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damagesthird parties. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement (MassRoots, Inc.)

Infringement. ~~11.2.1 Par and Advancis shall inform each other promptly in writing~~ (a) In the event either PARTY becomes aware of any ~~alleged~~ actual or ~~suspected~~ threatened material infringement by or use of the LICENSED TECHNOLOGY, that PARTY shall promptly notify the other PARTY and provide it with full details. The PARTIES shall meet to discuss the appropriate course of action and may collaborate on pursuing such course of action. Notwithstanding the foregoing, if the PARTIES fail to agree on a ~~Third Party~~ course of action, LICENSEE shall have primary responsibility for the prosecution, prevention or termination of any infringement of ~~Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may~~the LICENSED TECHNOLOGY, at its ~~sole option and~~ own expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If LICENSEE determines that it is necessary for the ~~Parties agree~~ UNIVERSITIES to ~~institute such a~~ join any suit, ~~then Advancis shall institute and control such suit including~~ action or proceeding, the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par UNIVERSITIES shall execute all papers and perform such other acts as may be reasonably ~~required~~required in the circumstances, at the LICENSEE's expense. (b) In the event that any third party files an action claiming an alleged infringement of intellectual property rights, either against the UNIVERSITIES or against LICENSEE as a consequence of or derived from the performance of any of the operations set out in this Agreement, LICENSEE shall indemnify, defend and hold the UNIVERSITIES harmless. LICENSEE shall defend the case and shall bear all costs associated with it. (c) Upon receipt of any claim in respect of which an obligation to hold a PARTY harmless exists under this Article, the PARTY receiving the claim ("recipient") shall promptly inform the other. The ~~cost~~ recipient shall be entitled to appoint counsel to defend its own case, but shall make sure that the other PARTY is given access to all the documents related to the case and ~~expense~~ that it is also able to participate in defending the case. Either PARTY, as the case may be, shall provide the other with any reasonable assistance requested of it in connection with the defence of such action. LICENSEE further agrees that it shall at all times take any and all legal steps, and in particular file any and all appeals available, to contest any claim, interim decision, injunction, order, judgement, etc., especially in the event that such an act contests the safety, efficacy or quality of the product. LICENSEE shall not be entitled to waive its rights of appeal or settle any claim without the UNIVERSITIES’s prior consent. (d) LICENSEE shall bear the cost of any such proceeding or suit ~~shall be shared~~ brought by the ~~Parties equally~~UNIVERSITIES as well as the expenses the UNIVERSITIES have incurred. ~~Any royalties, payments, damages, expense, fees~~ Recoveries or ~~other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement,~~ reimbursements from litigation shall first be used to reimburse ~~each Party~~ LICENSEE for ~~its expenses associated with such infringement suit and then any remainder~~ all litigation costs. Any remaining recoveries or reimbursements shall be ~~shared by the Parties equally, with such share of the Damages to be paid to the other party,~~ treated as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products NET SALES hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement

Infringement. 11.2.1 Par and Advancis shall inform each other promptly in writing of any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program DevelopmentsThe CenTrak Products are provided with all faults, and the entire risk as to satisfactory quality, performance, accuracy, and effort is with End User. Neither CenTrak nor its licensors represent or warrant that the CenTrak Products are without defect or error. In addition, End User acknowledges that CenTrak does not represent, warrant or covenant that it is or will be familiar with End User’s environment or any third party products or technologies with which the CenTrak Products may be combined and that, other than setting forth applicable restrictions on use herein, CenTrak does not control, or have knowledge of, the use of the CenTrak Products by End User. THE CENTRAK PRODUCTS ARE NOT INTENDED IN ANY WAY TO BE A SUBSTITUTE FOR PROFESSIONAL MEDICAL ADVICE, NOR SHOULD THEY BE RELIED UPON FOR MEDICAL DIAGNOSIS OR TREATMENT. CENTRAK MAKES NO REPRESENTATIONS, WARRANTIES OR COVENANTS AS TO FITNESS OR SUITABILITY OF THE CENTRAK PRODUCTS FOR ANY PARTICULAR PURPOSE OR SETTING. End User will indemnify, defend and hold CenTrak harmless from and against any ~~available evidence thereof. 11.2.2 Subject~~ and all claims, demands, suits, liabilities, causes of action, losses, expenses, damages, fines, penalties, court costs and reasonable attorneys’ fees arising from or relating to ~~Sections 11.2.3 and 11.2.4~~End User’s environment, ~~Advancis may~~use of End User or third party products or technologies with the CenTrak Products, ~~at its sole option and expense~~use of the CenTrak Products for medical advice, ~~prosecute the infringement of any Advancis Patent Rights~~diagnosis or treatment, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of ~~a Product~~ the CenTrak Products for particular purposes or in particular settings. Certain of the CenTrak Products have been designed for use to assist in the ~~Territory~~ prevention of elopements (~~a "PRODUCT INFRINGEMENT"~~wander prevention) and abductions (infant protection), ~~then~~ personnel and/or patients in summoning help when they may be are under personal duress (call point and call assist), in the ~~Parties shall discuss whether~~ location of assets and/or prevent the loss of an asset, in monitoring temperatures (temperature tags) and/or hand hygiene. The CenTrak Products are dependent on the conditions in which they operate and user dependent and therefore CenTrak cannot guarantee that patients will not elope or be abducted, an asset not be located or lost, personnel and/or patients not be located, or reported when they call for assistance, temperature status or hand washings be missed, miscounted, and/or mismeasured. CenTrak elopement and abduction prevention products when used and maintained properly, can provide information and alarm notification to ~~institute~~ alert the End User’s staff that a tag has either penetrated a protected portal and/or has been tampered with (applies to supervised tags only). Regular testing and maintenance for the CenTrak Products, as supplied and presented in the applicable Documentation, is essential to verify the system is operating correctly and to ensure that the probability of detecting an ~~infringement action with respect~~ alarm and locating the tag are maximized. Failure to ~~such Product Infringement~~undertake regular testing or problem detection and lack of consistent testing and maintenance by the End User will increase the risk of not identifying a system failure and could result in failing to detect infant abduction, loss of assets, wandering patient egress attempts, personnel and/or patient duress attempts or events, temperature and/or hand hygiene events. ~~If the Parties agree~~ The CenTrak Products are not intended in any way to ~~institute such~~ be a ~~suit~~substitute for standard security and staffing, ~~then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall~~temperature maintenance and/or monitoring, ~~at the request of Advancis~~and/or hand hygiene procedures, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par nor should they be relied upon as a ~~party~~replacement of such standard procedures. End User acknowledges and agrees: That quoted CenTrak Products are intended to provide additional safeguards to assist the End User in the prevention of events such as infant abductions, wandering patients, personnel and/or patient duress events, theft, temperature misalignments, hand hygiene failures, or any other event that they may have been purchased for. CenTrak advocates that companies and healthcare facilities establish a comprehensive program of policy and procedures; education of and teamwork by staff, security, and ~~Par shall execute all papers~~ risk-management personnel; and ~~perform such acts as may be reasonably required~~coordination of various elements of physical and electronic security. ~~The cost and expense of such suit shall be shared by the Parties equally. Any royalties~~IN NO EVENT WILL CENTRAK OR ITS LICENSORS OR SUPPLIERS BE LIABLE TO END USER OR ANY THIRD PARTY FOR ANY DIRECT, ~~payments~~SPECIAL, ~~damages~~INDIRECT, ~~expense~~CONSEQUENTIAL, ~~fees or other awards (collectively~~PUNITIVE DAMAGES, ~~"DAMAGES")~~OR OTHER DAMAGES INCLUDING BUT NOT LIMITED TO, ~~received by Advancis and/or Par as a result of such suit~~LOSS OF REVENUES, ~~whether through judgment or settlement~~LOSS OF PROFITS OR LOSS OF DATA, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT EVEN IF CENTRAK HAS BEEN ~~OMITTED~~ ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. SHOULD THE FOREGOING LIMITATION BE DETERMINED TO BE UNENFORCEABLE IN ANY RESPECT, THE UNENFORCEABLE PART WILL BE DEEMED REMOVED, AND THE REMAINDER WILL REMAIN IN EFFECT; IN ADDITION, IN SUCH CASE, THE TOTAL LIABILITY OF CENTRAK OR ITS LICENSORS OR SUPPLIERS TO END USER OR ANY THIRD PARTY FOR ~~WHICH CONFIDENTIAL TREATMENT~~ ANY DAMAGES IS LIMITED TO THE AMOUNT PAID DURING THE PRECEDING TWELVE (12) MONTHS TO CENTRAK FOR THE SPECIFIC CENTRAK PRODUCTS CAUSING THE LIABILITY, EVEN IF CENTRAK HAS BEEN ~~REQUESTED. ALL~~ ADVISED OF THE POSSIBILITY OF SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the DamagesDAMAGES. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: End User License Agreement

Infringement. 11.2.1 Par and Advancis shall inform each other promptly in writing of any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 (a) Subject to ~~Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute~~ clause 9.2(b): (i) if under the Project Legislation an infringement notice is caused to be served but further proceedings are not taken in respect of ~~any Advancis Patent Rights, Advancis Know-How~~ the relevant offence (or ~~Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In~~ alleged offence under the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"Project Legislation), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of ~~such suit~~the payment of an amount sufficient to expiate the notice, ~~whether through judgment or settlement~~the State shall pay to Project Co an amount equal to the “TU Amount” (as determined and re-determined) under clause 9.2 of the Concession Deed (TU Amount) within 20 Business Days of that payment; (ii) Project Co shall, ~~shall first be used~~ however, refund any amount so paid to ~~reimburse each Party for~~ it in accordance with clause 9.2(a)(i) within 5 Business Days of its ~~expenses associated with such infringement suit and then any remainder shall be shared~~ being requested by the ~~Parties equally, with such share~~ State to do so if the relevant infringement notice is withdrawn by the enforcement officer under the Project Legislation; (iii) the State and Project Co will adjust for any GST payable in respect of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined TU Amount in accordance with the ~~dispute resolution process~~ same procedure as set ~~forth~~ out in ~~Section 17.2.2 herein. In any such infringement suit Par may institute~~ clause 9.2(ra) of the CityLink Concession Deed; and (iv) Project Co will not be entitled to ~~enforce Advancis Patent Rights, Advancis Know-How~~ TU Amounts in respect of a WGT/CityLink Trip in relation to which the Company has already received TU Amounts. (b) If there has been a termination of the CityLink Concession Deed or ~~Program Developments owned by Advancis, Advancis shall, at~~ an expiry of the ~~request and expense of Par, provide reasonable cooperation and,~~ Concession Period (as defined in the CityLink Concession Deed) prior to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense expiry of the ~~action at its own expense. In~~ Term, the ~~event~~ TU Amount will be the same as it was immediately prior to that ~~Advancis does not so elect to take over~~ termination or expiry, except that: (i) the ~~sole defense~~ elements of the ~~action at its own expense, Par shall~~ TU Amount which were subject to indexation under the CityLink Concession Deed will continue to be ~~free~~ indexed on the same basis; and (ii) the State may make any determination or redetermination in relation to ~~proceed and solely control such defense. To~~ the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share elements of the ~~Damages~~ TU Amount not subject to ~~be paid~~ indexation, on the same basis that it would have been entitled to make that determination or redetermination under clause 9.2(r) of the CityLink Concession Deed immediately prior to that termination or expiry. M80 – West Gate Fwy to Greensborough Bypass Minus Sunshine Ave-Calder Fwy Section Widening (to 6 or 8 Lanes) M80 - Tullamarine Fwy to ▇▇▇▇▇▇ Vale Rd New Exit Ramp to ▇▇▇▇▇▇ Vale Rd (2 Lanes) Dingley Arterial West - Warrigal Rd to ▇▇▇▇▇▇▇ ▇▇ New Route (6 Lanes Divided); Includes Duplication of South Rd Extension Tullamarine Freeway - Mickleham Road to M80 Widening (6 Lanes) Tullamarine Freeway - Melbourne Airport to Mickleham Road Widening (6 Lanes) Eastern Freeway - North-East Link to Doncaster Rd Widening (10 Lanes) Eastern Freeway - Doncaster Rd to Springvale Rd Widening (8 Lanes) CityLink/Tullamarine Widening Project Widening (8 to 11 Lanes) M80 - Sunshine Ave to Calder Fwy Section Widening (to 8 Lanes) Calder Freeway - Keilor Park Dr to ▇▇▇▇▇▇ Hwy Widening (6 lanes divided) North-East Link New route (6-8 lane motorway) EastLink - Maroondah Hwy to Dingley Arterial Widening (8 lanes) Outer Melbourne Ring Road - Ballan Rd to East- West Freeway New route (4 lane motorway) Outer Western Motorway - OMR to Deer Park Bypass New route (4 lane motorway) Dingley Arterial - South Gippsland Hwy to South Gippsland Fwy New route (6 lanes divided) South Gippsland Fwy/Monash Fwy Interchange Ramp New ramp (south to east) Mornington Peninsula Fwy - EastLink to Springvale Rd Widening (6 lanes) Western Port Hwy - North Rd to ▇▇▇▇▇▇ Tooradin Rd Duplication (4 lanes divided) Western Fwy - ▇▇▇▇▇▇▇ ▇▇ to Leakes Rd Widening (6 lanes) Tullamarine Freeway - Melbourne Airport to OMR New route (6 lane motorway) Melbourne Metro Rail Project Metropolitan train service between South Kensington to South Yarra Airport Rail Link Metropolitan train service to airport Western Freeway Connection (M80 to CityLink) New route (3 lane motorway) Eastern Freeway Extension (Eastern Freeway to CityLink) New route (3 lane motorway) Western Port Hwy - South Gippsland Hwy to Cranbourne-Frankston Rd (excludes Wedge Rd interchange) Conversion to motorway (4 lanes) Mornington Peninsula Fwy - Springvale Road to Dingley Fwy New route (4 lane motorway) Koo Wee Rup Rd, new motorway - Princes Fwy at Pakenham to South Gippsland Highway at Koo Wee Rup Conversion to motorway (4 lanes) Calder Fwy - Vineyard Rd to ▇▇▇▇▇▇ Hwy Widening (6 lanes) OMR - Sunbury Rd to ▇▇▇▇ Fwy New route (4 lane motorway) Western Port Hwy - Cranbourne-Frankston Rd to Graydens Rd Conversion to motorway (4 lanes) OMR - Princes Fwy to Ballan Rd New route (4 lane motorway) E6 – M80 to Findon Rd New route (4 lane motorway) This Schedule 30 outlines exceptions or qualifications to the ~~other party, as applicable, as soon as practicable upon receipt~~ requirements of ~~the Damages~~clause 52 (Intellectual Property Rights) in relation to specific Project Intellectual Property Rights supplied by specific Subcontractors. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: WGT Osars Interface Agreement

Infringement. ~~11.2.1 Par~~ 9.1 LICENSEE and ~~Advancis~~ PRINCETON shall promptly inform ~~each~~ the other ~~promptly~~ in writing of any alleged ~~or suspected~~ infringement of which it shall have notice by a ~~Third Party~~ third party of any patents within the Patent Rights and provide such other with any available evidence of ~~Advancis~~ infringement. 9.2 During the term of this Agreement, LICENSEE shall have the right, but shall not be obligated, to prosecute at its own expense any such infringements of the Patent Rights and, in furtherance of such right, PRINCETON hereby agrees that LICENSEE may join PRINCETON as a party plaintiff in any such suit, without expense to PRINCETON, provided, however, that notwithstanding the foregoing, Merck shall have the rights set forth in Paragraph 4 of the Side Agreement. The total cost of any such infringement action commenced or defended solely by LICENSEE shall be borne by LICENSEE, and LICENSEE shall keep any recovery or damages for past infringements derived therefrom. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of PRINCETON, which consent shall not unreasonably be withheld. LICENSEE shall indemnify PRINCETON against any order for costs that may be made against PRINCETON in such proceedings. 9.3 If within six (6) months after having been notified of any alleged infringement, LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE shall notify PRINCETON at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, PRINCETON shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Patent Rights, ~~Advancis Know-How or Program Developments~~and PRINCETON may, for such purposes, join LICENSEE as party plaintiff, provided, however, that notwithstanding the foregoing, Merck shall have the rights set forth in Paragraph 4 of the Side Agreement. 9.4 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 royalties otherwise thereafter due PRINCETON hereunder and apply the same toward reimbursement of its expenses, including reasonable attorneys' fees, in connection therewith. Any recovery of damages by LICENSEE for 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 PRINCETON for any ~~available evidence thereof~~royalties past due or withheld and applied pursuant to this Article IX. The balance remaining from any such recovery shall be divided equally between LICENSEE and PRINCETON. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 9.5 In the event that a ~~Third Party infringes Advancis~~ declaratory judgment action alleging invalidity or non-infringement of any of the Patent ~~Rights~~Rights shall be brought against LICENSEE, ~~Advancis Know-How or Program Developments owned by Advancis by manufacture~~and LICENSEE is not diligently defending such action, ~~sale or use~~ PRINCETON, at its option, shall have the right, within ninety (90) days after commencement of ~~a Product~~ such action, to intervene and take over the sole defense of the action at its own expense, provided, however, that notwithstanding the foregoing, Merck shall have the rights set forth in Paragraph 4 of the ~~Territory (a "PRODUCT INFRINGEMENT")~~Side Agreement. 9.6 In any infringement suit as either party may institute to enforce the Patent Rights pursuant to this Agreement, ~~then~~ the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par other party hereto shall, at the request and expense of ~~Advancis~~the party initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like~~. Advancis may join Par as a party~~. 9.7 LICENSEE, ~~and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense~~ during the exclusive period of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlementthis Agreement, shall ~~first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by~~ have the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined sole right in accordance with the ~~dispute resolution process set forth in Section 17.2.2 herein. In~~ terms and conditions herein to sublicense any ~~such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at~~ alleged infringer under the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights ~~or Advancis Know-How without the written consent of Advancis~~for future infringements. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement (Intercardia Inc)

Infringement. ~~11.2.1 Par~~ 8.1 LICENSEE or its SUBLICENSEE(s) has the right to prosecute in their own name and ~~Advancis~~ at their own expense any infringement of the PATENT RIGHTS, so long as the license is exclusive when the legal action is commenced. LICENSOR agrees to notify LICENSEE promptly of each infringement of the PATENT RIGHTS of which LICENSOR becomes aware. Before LICENSEE or its SUBLICENSEES commences an action for infringement, LICENSEE or SUBLICENSEE shall ~~inform each other promptly in writing~~ notify LICENSOR and carefully consider the views of ~~any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments,~~ LICENSOR and ~~of any available evidence thereof~~the public interest. ~~11.2.2 Subject~~ 8.2 LICENSOR agrees to ~~Sections 11.2.3 and 11.2.4~~join, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, subject to the ~~extent possible~~approval of the Ohio Attorney General, ~~have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par~~ as a ~~party~~party plaintiff in any lawsuit initiated by LICENSEE, ~~and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared~~ if requested by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equallyLICENSEE, with ~~such share of the Damages~~ all costs, attorney fees and expenses to be paid ~~to the other party, as applicable, as soon as practicable upon receipt of the Damages~~by LICENSEE. ~~11.2.4 In~~ 8.3 If LICENSEE undertakes to enforce and/or defend the ~~event that only Advancis does not agree~~ PATENT RIGHTS by litigation, LICENSEE may withhold up to ~~institute a suit against a Product Infringement pursuant to Section 11.2.3 within~~ [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and percent ([***]%) of the payments otherwise thereafter due during the course of such litigation to LICENSOR under Article 3. ~~However~~LICENSEE may apply the amounts withheld to reimburse up to half of LICENSEE's litigation expenses, ~~Par shall not prosecute such infringement if Advancis [***]~~including reasonable attorneys’ fees. ~~Such negotiation~~ If LICENSEE recovers damages in the patent litigation, the award shall be ~~conducted between~~ applied first to satisfy LICENSOR’s and LICENSEE’S unreimbursed expenses and legal fees for the ~~Advancis and Par designees of the Executive Committee~~litigation, and ~~if agreement cannot~~ next to reimburse LICENSOR for any payments under Article 3 which are past due or were withheld pursuant to this Article 8. The remaining balance shall be ~~reached, such [***] will be determined~~ shared in accordance with the ~~dispute resolution process set forth~~ percentages described in Section ~~17.2.2 herein. In any~~ 4.3, except for such ~~infringement~~ amounts attributable for lost sales which amounts shall be paid in accordance with earned royalties described in Section 3.3. 8.4 No settlement, consent judgment or other voluntary final disposition of the suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be ~~reasonably required~~entered into without LICENSOR’s consent, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par which shall not ~~have the~~ be unreasonably withheld. 8.5 If LICENSEE and its SUBLICENSEE(s) elect not to exercise their right to ~~settle~~ prosecute or ~~compromise~~ defend an infringement of the PATENT RIGHTS, LICENSOR may do so at its own expense, controlling such action ~~or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis~~and retaining all recoveries. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that 8.6 If a declaratory judgment action alleging invalidity ~~or non-infringement~~ of any ~~Advancis Patent Rights, Advancis Know-How or Program Developments shall be~~ of the PATENT RIGHTS is brought against ~~Advancis and/or Par~~LICENSEE or LICENSOR, ~~Advancis~~then LICENSOR, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its sole option, ~~shall have~~ has the ~~right, within [***] after commencement of such action,~~ right to intervene and take over the ~~sole~~ defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement (Arno Therapeutics, Inc)

Infringement. ~~11.2.1 Par~~ A. LICENSEE and ~~Advancis~~ CMCC shall each inform ~~each~~ the other promptly in writing of any alleged ~~or suspected~~ infringement by a ~~Third Party~~ third party of ~~any~~ the Patent Rights in the Field of ~~Advancis Patent Rights, Advancis Know-How or Program Developments,~~ Use and of any available evidence thereof. ~~11.2.2 Subject~~ B. During the term of this License Agreement, LICENSEE shall have the right, but not the obligation, to ~~Sections 11.2.3 and 11.2.4, Advancis may~~prosecute and/or defend, at its ~~sole option~~ own expense and ~~expense~~utilizing counsel of its choice, ~~prosecute~~ any infringement of, and/or challenge to, the ~~infringement~~ Patent Rights; provided, however that CMCC shall have the right to approve LICENSEE's choice of counsel, such approval not to be unreasonably withheld. In furtherance of such right, CMCC hereby agrees that LICENSEE may join CMCC as a party in any such suit, without expense to CMCC. No settlement, consent,,, judgment or other voluntary final disposition of any ~~Advancis Patent Rights, Advancis Know-How or Program Developments~~such suit may be entered into without the consent of CMCC which consent shall not unreasonably be withheld. ~~29 --------------------------------------------------------------------------------~~LICENSEE shall indemnify CMCC against any order for costs that may be made against CMCC in any such suit. ~~11.2.3~~ C. In the event that ~~a Third Party infringes Advancis~~ LICENSEE shall undertake the enforcement and/or defense of the Patent Rights, ~~Advancis Know-How~~ as provided in Paragraph 7.2, LICENSEE may withhold up to fifty percent (50%) of the royalties otherwise thereafter due CMCC in Article *** and apply such amount toward reimbursement of LICENSEE's expenses, including attorneys' fees, in connection therewith. Any recovery of damages by LICENSEE, 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 CMCC for any royalties past due or ~~Program Developments owned by Advancis by manufacture~~withheld and applied pursuant to this paragraph. Any balance remaining from any such recovery shall be apportioned 50% to LICENSEE and 50% to CMCC. D. If within six (6) months after receiving notice of any alleged infringement, ~~sale~~ LICENSEE shall have been unsuccessful in persuading the alleged infringement to desist, or ~~use~~ shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE shall notify CMCC, at any time prior thereto, of ~~a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or~~ its intention not to ~~institute an~~ bring suit against the alleged infringer, then, and in those events only, CMCC shall have the right, but not the obligation, to prosecute, at its own expense and utilizing counsel of its choice, any cost of any such infringement action ~~with respect~~ commenced solely by CMCC shall be borne by CMCC and CMCC shall keep any recovery or damages for past infringement derived therefrom. CMCC shall indemnify LICENSEE against any order for costs that may be made against LICENSEE in any such suit. E. In any suit to ~~such Product Infringement. If~~ enforce and/or defend the ~~Parties agree~~ Patent Rights pursuant to ~~institute such a suit~~this License Agreement, ~~then Advancis shall institute and~~ the party not in control of such suit ~~including the settlement or compromise thereof. Par~~ shall, at the request and expense of ~~Advancis~~the controlling party, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like~~. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense~~ . F. LICENSEE during the period of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlementthis License Agreement, shall ~~first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally~~have the- sole right, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the ~~dispute resolution process set forth in Section 17.2.2~~ terms and conditions herein~~. In~~ , to sublicense any ~~such infringement suit Par may institute to enforce Advancis~~ alleged infringer for future use of the Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Exclusive License Agreement (Boston Life Sciences Inc /De)

Infringement. ~~11.2.1 Par and Advancis~~ 7.1. Each party shall inform ~~each~~ the other promptly in writing of any alleged ~~or suspected~~ infringement of the PATENT RIGHTS by a ~~Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments,~~ third party and of any available evidence thereof. ~~11.2.2 Subject~~ 7.2. During the term of this Agreement, TEPHA shall have the right, but shall not be obligated, to ~~Sections 11.2.3 and 11.2.4, Advancis may,~~ prosecute at its ~~sole option and expense~~own expense all infringements of the PATENT * CONFIDENTIAL TREATMENT REQUESTED RIGHTS in the FIELD OF USE and, ~~prosecute the infringement~~ in furtherance of such right, METABOLIX hereby agrees that TEPHA may join METABOLIX as a party plaintiff in any such suit, without expense to METABOLIX. The total cost of any ~~Advancis Patent Rights, Advancis Know-How or Program Developments~~such infringement action commenced solely by TEPHA shall be borne by TEPHA. ~~29 -------------------------------------------------------------------------------- 11.2.3~~ In the event that ~~a Third Party infringes Advancis Patent Rights~~TEPHA shall have exercised its right to bring an action, ~~Advancis Know-How~~ TEPHA shall be responsible for defending against any counterclaims alleging invalidity or ~~Program Developments owned by Advancis by manufacture, sale or use~~ unenforceability of a ~~Product~~ PATENT RIGHT and for prosecuting the action through to settlement or other final disposition. In the event that TEPHA shall undertake the enforcement of the PATENT RIGHTS in the ~~Territory~~ FIELD OF USE by litigation, TEPHA may withhold up to * of the Running Royalties otherwise thereafter due to METABOLIX under Section 4.1.4 and apply the same toward reimbursement of up to * of TEPHA'S expenses, including reasonable attorneys' fees, in connection therewith. 7.3. If within six (6) months after having been notified of any alleged infringement, TEPHA shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if TEPHA shall notify METABOLIX at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events, only, METABOLIX shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the PATENTS RIGHTS in the FIELD of USE. In furtherance of such right, TEPHA hereby agrees that METABOLIX may include TEPHA as a "party plaintiff in any such suit, without expense to TEPHA. The total cost of any such infringement action commenced or defended solely by METABOLIX shall be borne by METABOLIX, and METABOLIX shall be responsible for defending against any counterclaims alleging invalidity or unenforceability of a PATENT RIGHT. 7.4. Any recovery of damages by the prosecuting party for any such suit shall be applied first in satisfaction of any unreimbursed expenses and legal fees of such party relating to the suit, and next toward reimbursement of METABOLIX for any royalties past due or withheld and applied pursuant to Paragraph 7.2, if applicable. * CONFIDENTIAL TREATMENT REQUESTED The balance remaining from any such recovery shall be divided with * to the non-prosecuting party and any remaining balance to the prosecuting party. 7.5. In the event of the institution of any suit by a third party against METABOLIX, TEPHA or its sublicensees for patent infringment involving the PATENT RIGHTS in the FIELD OF USE, the party sued shall promptly notify the other party in writing. TEPHA shall have the right, but not the obligation, to defend such suit at its own expense. If TEPHA shall elect not to defend, TEPHA shall promptly notify METABOLIX. METABOLIX shall have the right, but not the obligation, to defend such suit at its expense. 7.6. If TEPHA shall exercise its rights pursuant to Section 7.5 to defend the PATENT RIGHTS, then * of TEPHA'S Running Royalty obligation in Section 4.1.4 during the pendency of defense in the proceeding shall be held in an interest-bearing escrow account by TEPHA until a final decision shall be rendered by a court or administrative tribunal of competent jurisdiction from which no appeal can be or is taken provided that: 7.6.1. If the enforceability of all material claims in such PATENT RIGHT claiming the LICENSED PRODUCT ~~INFRINGEMENT")~~or PROCESS is upheld by a court or other legal or administrative tribunal from which no appeal is or can be taken, then the ~~Parties~~ amount of Running Royalties withheld during the period of escrow, plus all accrued interest, shall ~~discuss whether~~ be promptly paid to METABOLIX; or 7.6.2. If one or more claims in such PATENT RIGHT covering the LICENSED PRODUCT or PROCESS shall be held to be invalid or otherwise unenforceable by a court or other legal or administrative tribunal in any country from which no appeal is or can be taken or the scope thereof is modified and, as a result such PATENT RIGHT no longer offers substantial protection to a LICENSED PRODUCT or PROCESS in such country, then the amount of Running Royalties withheld during the period of escrow shall not be owed to ~~institute an infringement action~~ METABOLIX; TEPHA shall be entitled to all payments and accrued interest in the escrow account; and the Running * CONFIDENTIAL TREATMENT REQUESTED Royalties otherwise payable shall be abated in their entirety with respect to NET SALES of LICENSED PRODUCTS covered only by such ~~Product Infringement~~PATENT RIGHT in the country in which such claims were so held invalid or unenforceable or so modified. 7.7. If In any suit as either party may institute to enforce or defend the ~~Parties agree~~ PATENT RIGHTS pursuant to ~~institute such a suit~~this Agreement, ~~then Advancis shall institute and control such suit including~~ the ~~settlement or compromise thereof. Par~~ other party hereto shall, at the request and expense of ~~Advancis~~the party initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, specimens and the like. ~~Advancis may join Par as a party, and Par~~ The parties shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share keep one another informed of the ~~Damages to be paid to~~ status of and of their respective activities regarding any litigation or settlement thereof concerning the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer PATENT RIGHTS in the ~~Territory exceeds [***]~~ FIELD of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How USE or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise LICENSED PRODUCTS or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, PROCESSES ; provided, however, that ~~if Par is also~~ no settlement or consent judgement or other voluntary final disposition of any suit defended or action brought by a ~~defendant in such action and Par shall have reasonably concluded that there~~ party pursuant to this Article 7 may be ~~legal defenses available to it that are different from or additional to those available to Advancis, Par shall have~~ entered into without the ~~right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense~~ consent of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, ~~as applicable~~such consent not to be unreasonably withheld or delayed. As to the MIT PATENT RIGHTS, ~~as soon as practicable upon receipt~~ no settlement, consent judgement or other voluntary final disposition of the ~~Damages~~suit may be entered into without the consent of MIT which consent shall not unreasonably be withheld. TEPHA shall indemnify MIT against any order for costs that may be made against MIT in proceedings commenced and defended solely by TEPHA. ~~11.2.8 If either Party becomes aware~~ 7.8. TEPHA, during the period of ~~a patent or patent application that~~this Agreement, ~~when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by~~ shall have the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration sole right in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT the terms and conditions herein to sublicense any alleged infringer for future use of the PATENT RIGHTS in the FIELD OF ~~1934, AS AMENDED. 31 --------------------------------------------------------------------------------~~USE.

Appears in 1 contract

Sources: License Agreement (Metabolix, Inc.)

Infringement. 11.2.1 Par and Advancis shall inform each other promptly in writing of any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 11.1 In the event that there is infringement within the Field by a ~~Third Party infringes Advancis Patent Rights~~third party of any patent licensed to JJMI hereunder, ~~Advancis Know-How or Program Developments owned~~ JJMI shall notify SHP in writing to that effect, including with such written notice, evidence establishing a prima facia case of infringement by ~~Advancis~~ such third party. During the one hundred twenty (120) day period after notice to SHP by ~~manufacture~~JJMI, ~~sale or use~~ SHP will have the right, but not the obligation to bring suit against the alleged infringer. SHP shall bear the expenses of ~~a Product in the Territory (a "PRODUCT INFRINGEMENT")~~any suit brought by it, ~~then the Parties~~ shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute retain all ~~papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees~~ damages or other ~~awards (collectively, "DAMAGES"),~~ monies awarded or received ~~by Advancis and/or Par as a result~~ in settlement of such suit~~, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated~~ . JJMI will cooperate with SHP in any such ~~infringement~~ suit and shall have the right to consult with SHP and be represented by its own counsel at its own expense. If, after the expiration of said one hundred twenty (120) days from the date of such notice, SHP has not brought suit against a third party infringer, then JJMI shall have the right after such one hundred twenty (120) day notice period, but not the obligation, to bring suit against such infringer and join SHP as a party plaintiff provided that JJMI shall bear all expenses of such suit. SHP will cooperate with JJMI in any suit for infringement of the Licensed Patent brought by JJMI against a third party and shall have the right to consult with JJMI and to participate in and be represented by independent counsel in such litigation at its own expense. JJMI shall incur no liability to SHP as a consequence of such litigation or any unfavorable decision resulting therefrom, including any decision holding SHP's patent(s) invalid or unenforceable. Damages awarded or received in settlement shall be paid to JJMI in satisfaction of all expenses of such suit; any remainder shall be shared ~~by the Parties equally, with such share of the Damages~~ fifty percent (50%) to ~~be paid~~ JJMI and fifty percent (50%) to ~~the other party, as applicable, as soon as practicable upon receipt of the Damages~~SHP. ~~11.2.4 In the event~~ 11.2 SHP warrants that ~~only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***]~~ it is presently aware of ~~being notified of such alleged~~ no patents or ~~suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments~~ patent applications owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party ~~institutes~~ which would present any ~~suit against Par and/or Advancis for patent~~ issue of infringement ~~involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense~~ by reason of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the ~~Products hereunder~~Referenced BCN Products. In the event JJMI is charged with such infringement by a third party, ~~then~~ JJMI shall have the right to defend against such ~~Party shall promptly inform the other Party~~ charge of ~~such patent or patent application~~infringement, and during the ~~Parties~~ period in which such litigation is pending, JJMI shall ~~cooperate~~ have the right to apply Fifty Percent (50%) of the royalties due SHP on sales of the allegedly infringing Licensed Product against its litigation expenses. JJMI shall reimburse SHP for all royalties diverted to litigation expenses to the extent funds are recovered in such litigation. If, as a result of judgment in the litigation or settlement with ~~each other so that each Party can determine whether valid rights of~~ a third party ~~are likely~~ without litigation, JJMI is required to ~~be infringed by the manufacture, use~~ pay royalties or ~~sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary~~ other monies to ~~avoid infringement of patents of the~~ such third party, JJMI may thereafter deduct from the ~~Executive Committee shall: 1~~amount of royalties due SHP on unit sales of the Licensed Product charged to infringe, an amount which is the lesser of all sums paid by JJMI to such third party, or Fifty Percent (50%) ~~determine whether or not~~ of all royalty payments otherwise payable to ~~seek such a license, 2) appoint a negotiator to negotiate~~ SHP on the ~~terms~~ Net Sales of such ~~a license~~Licensed Product. Notwithstanding anything else in this Article 11, ~~3) determine whether or not to enter into such a license as negotiated by~~ in no event shall JJMI pay less than 50% of the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------royalties due SHP on sales.

Appears in 1 contract

Sources: Development and License Agreement (Specialized Health Products International Inc)

Infringement. ~~11.2.1 Par~~ A. Company and ~~Advancis shall inform~~ University agree to notify each other promptly ~~in writing~~ of ~~any alleged~~ each infringement or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the possible infringement of ~~any Advancis~~ the licensed Patent ~~Rights, Advancis Know-How~~ Rights or ~~Program Developments~~subsequently issued patent of which either party becomes aware. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with With respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or ~~Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement~~ subsequently issued patent under which Company is exclusively licensed pursuant to ~~Section 11.2.3 within [***] of being notified of such alleged~~ this Agreement, Company or ~~suspected infringement, then Advancis~~ its sublicensee shall have the right to ~~institute~~ prosecute in its own name and at its own expense, any infringement of such Patent Rights or subsequently issued patent. Before Company or its sublicensee commences an action with respect to any such infringement, Company shall contact University to obtain University’s view concerning any potential effects such an action may bring and shall report such views to the appropriate sublicensees. University shall have a continuing right, but not an obligation, to intervene in any suit for patent infringement involving the Patent Rights. Neither Company nor its sublicensee shall take any action to compel University to initiate a suit ~~at its cost and expense and~~ or to ~~retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment~~ join any suit for patent infringement except if part of an action alleging ~~invalidity or non-infringement~~ breach of ~~any Advancis Patent Rights~~University’s obligation contained in the [ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, ~~Advancis Know-How or Program Developments shall be brought against Advancis and/or Par~~MARKED BY BRACKETS, ~~Advancis, [***] INDICATES MATERIAL THAT~~ HAS BEEN OMITTED AND ~~FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN~~ FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE ~~24b-2 UNDER~~ 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. ~~30 --------------------------------------------------------------------------------~~ following sentence. Company or its sublicensee may request that University join in such suit if necessary to avoid dismissal of the suit, and University shall join in such suit if necessary to avoid dismissal. Neither Company (nor its sublicensee) nor any attorney engaged by Company (or its sublicensee) shall prosecute the infringement in the name of the University, the State of Oregon, or any agency of the State of Oregon, nor purport to act as legal representative of the University, the State of Oregon or any of its agencies, without the prior written consent of the Oregon Attorney General, which shall not be unreasonably withheld . The University may, at its ~~option~~election, assume its own defense and settlement in the event the University determines that Company or its sublicensee is prohibited from representing the University or is not adequately protecting its interests. B. If Company or its sublicensee elects to commence an action as described above and University is a legal party to such action, University shall have the ~~right~~right to assign to Company all of University’s rights, ~~within [***] after commencement~~ title and interest in licensed Patent Rights (subject to all University’s obligations to the government and others having rights in such licensed Patent Rights). In that event, such assignment shall be irrevocable and such action by Company on that patent shall thereafter be brought or continued in the name of Company. Notwithstanding any such assignment to Company by University, University shall cooperate fully with Company in connection with any such action. Regardless of any licensed Patent Rights assigned to Company by this clause, Company shall be required to continue to meet its obligations to University under this Agreement as if licensed Patent Rights were still licensed in the name of University. C. If Company or its sublicensee elects to commence an action described above and University is a legal party to such action, University may, but shall not be obligated to, join the action as a co-plaintiff. Upon so doing, University shall jointly control the action with Company or its sublicensee. D. Company shall reimburse University for any legal expenses and costs, including attorney fees (“litigation costs”), it reasonably incurs as part of an action brought by Company or its sublicensee, irrespective of whether University shall become a party to ~~take over the sole defense~~ such action. Company shall reimburse University for litigation costs within thirty (30) days of receipt of University’s invoices. E. If Company or its sublicensee elects to commence an action as described above, Company may offset up to [ * ] of the litigation costs of such action ~~at its own expense~~against up to [ * ] of each payment of royalty fees described in Sections V.A due to University. In the event that ~~Advancis does not so elect~~ such[ * ] of such litigation costs exceed the amount of royalties withheld by Company for any calendar year, Company may, to ~~take over~~ that extent, reduce the ~~sole defense~~ royalties due to University from Company in succeeding calendar years, but never by more than [ * ] of the ~~action at its own expense~~royalty due in any one calendar year. F. No settlement, ~~Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through~~ consent judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share voluntary final disposition of the ~~Damages to be paid~~ suit, which imposes any obligations or restrictions on University or grants any rights to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there Patent Rights may be ~~legal defenses available to it that are different from or additional to those available to Advancis~~entered into without the consent of University, ~~Par~~ which consent shall ~~have the right to select separate counsel to participate in such legal defenses on Par's behalf~~not be unreasonably withheld. ~~The Parties shall share the cost and expense of such defense equally. Each Party shall~~[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, ~~at the other's request~~MARKED BY BRACKETS, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND ~~FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN~~ FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE ~~24b-2 UNDER~~ 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. ~~31 --------------------------------------------------------------------------------~~G. Recoveries or reimbursements from such action shall first be applied to reimburse Company and University for their respective litigation costs. For purposes of this Section X.G, Company’s litigation costs shall consist of litigation costs incurred by Company, plus litigation costs incurred by University and reimbursed by Company pursuant to Section X.D, less the amount of litigation costs recovered by Company by withholding royalties pursuant to Section X.E. For purposes of this Section X.G, University’s litigation costs shall consist of any litigation costs incurred by University but not reimbursed by Company pursuant to Section X.D. To the extent recoveries or reimbursements from such action are less than the parties’ aggregate litigation costs, such recoveries and reimbursements shall be apportioned pro rata based on the percentage that each party’s litigation costs bear to the total litigation costs of both parties, and then to reimburse University for royalties withheld pursuant to Section X.E. Any remaining recoveries or reimbursements shall be shared [ * ] to Company and [ * ] to University.

Appears in 1 contract

Sources: Exclusive License Agreement (Kosan Biosciences Inc)

Infringement. ~~11.2.1 Par~~ 12.1 CONECTUS and ~~Advancis~~ LICENSEE shall inform each other ~~promptly~~ in writing promptly with respect of any ~~alleged or suspected~~ THIRD PARTY infringement ~~by a Third Party~~ in relation to the PATENTS of which they may become aware and/or of any ~~of Advancis Patent Rights, Advancis Know-How~~ infringement claims or ~~Program Developments, and of any available evidence thereof~~actions which may be taken against them. ~~11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the~~ 12.2 Should there be a THIRD PARTY infringement of ~~any Advancis Patent Rights~~the PATENTS, ~~Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In~~ CONECTUS and/or the ~~event~~ ESTABLISHMENTS may at their sole expense undertake legal action against the infringing party with the understanding that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. ~~However, Par~~ The foregoing shall not ~~prosecute such~~ prevent LICENSEE from taking action against any THIRD PARTY infringement ~~if Advancis~~ of the PATENTS in its name or in the name of CONECTUS [***] for seeking compensation for prejudice which it has incurred. Any expenses, losses, indemnification or damages which may be awarded by court decision for said prejudice will [***]. ~~Such negotiation~~ If an action is taken in the name of CONECTUS, CONECTUS shall ~~be conducted between~~ timely provide any required power of attorney and LICENSEE shall indemnify CONECTUS of any Third Party’s claim against CONECTUS in relation with this action. 12.3 Should the ~~Advancis~~ ESTABLISHMENTS and ~~Par designees~~ CONECTUS decide not to undertake a legal action against THIRD PARTY infringement of the ~~Executive Committee~~PATENTS, and if LICENSEE wishes to undertake such legal action, CONECTUS shall use reasonable efforts to cause the ESTABLISHMENTS to give LICENSEE the power of attorney to undertake a legal action in the name of the ESTABLISHMENTS. If the ESTABLISHMENTS choose not to give such power of attorney to LICENSEE, then CONECTUS shall cause the ESTABLISHMENTS to work with the THIRD PARTY infringer to reach an acceptable solution to remedy such THIRD PARTY infringing activity (e.g. in the way of a license, agreement ~~can~~to cease and desist, etc.) and as long as a solution acceptable to LICENSEE is not be reached, ~~such [***] will be determined in accordance with~~ the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par PATENTS shall not ~~have the right~~ longer be subject to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancisroyalty pursuant to this Agreement. ~~11.2.5~~ 12.4 In the ~~event that only Par does not agree to institute suit~~ case where LICENSEE undertakes legal action against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-THIRD PARTY infringement of ~~any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis~~the PATENTS, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally], and ~~shall contribute such share~~ CONECTUS agrees to cooperate fully with LICENSEE as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably ~~concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate~~ requested in such legal ~~defenses on Par's behalf~~action, including, without limitation, providing any documents necessary or helpful for such legal action. The ~~Parties shall share~~ stipulations set out above are applicable subject to the ~~cost and expense of such defense equally. Each Party shall, at~~ legal imperative provisions applicable in the ~~other's request, provide to it reasonable assistance and cooperation~~ country where the infringement occurs. 12.5 Should any infringement suit be brought against LICENSEE and/or its AFFILIATES and/or its SUBLICENSEES with respect to ~~any such suit. To~~ the ~~extent that any Damages become payable~~ exploitation of LICENSED PRODUCTS due to ~~any third party as a result~~ the use of ~~such action~~the PATENTS or other rights granted to LICENSEE in the present Agreement, ~~whether through judgment or settlement~~CONECTUS shall cooperate fully with LICENSEE in LICENSEE’s defense, including without limitation providing LICENSEE with the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first documents which may be ~~used to reimburse each Party~~ required for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2defence. [***] ~~INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED~~Certain information in this document has been excluded pursuant to Regulation S-K, Item 601(b)(10). ~~ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934~~Such excluded information is not material and would likely cause competitive harm to the registrant if publicly disclosed. Should LICENSEE be found guilty for said infringement, ~~AS AMENDED. 31 --------------------------------------------------------------------------------~~CONECTUS shall not be called in warranty by LICENSEE or be liable to indemnify, reimburse or reduce any of the sums due by LICENSEE at the moment of the final legal decision, except as otherwise set forth in Article 13 herein. 12.6 It is hereby declared that the conditions of the present Agreement shall not apply to infringement of the PATENTS outside the FIELD and the TERRITORY which is the sole responsibility of the ESTABLISHMENTS, CONECTUS or any THIRD PARTY appointed by them. 12.7 The PARTIES agree to provide any documents and elements and reasonable cooperation to the other PARTY, which may be necessary for the above-mentioned action to the other PARTY.

Appears in 1 contract

Sources: Exclusive Patent Sublicense Agreement (Dynacure S.A.)

Infringement. ~~11.2.1 Par and Advancis~~ 23.1. LICENSEE shall ~~inform each other promptly in writing~~ have the right during the term of ~~any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject~~ this Agreement to ~~Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the~~ commence an action for infringement of the Patents against any ~~Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In~~ third party for any infringement occurring within the ~~event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use~~ Field of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by AdvancisUse, provided that ~~Par can demonstrate through any industry recognized survey that such sales~~ LICENSEE shall provide CMU 30 (thirty) days’ prior written notice of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement ~~if Advancis [***]~~and of LICENSEE’s intent to file such action. ~~Such negotiation~~ CMU shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right at its own expense to ~~settle or compromise~~ 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, CMU shall voluntarily appear at LICENSEE’s expense; provided that if such appearance subjects CMU to any unrelated action or ~~take any steps that adversely affect the scope, validity, enforceability~~ claim of a third party or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of LICENSEE in such ~~alleged or suspected infringement~~jurisdiction, then ~~Advancis~~ CMU shall have the right to ~~institute~~ decline such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement appearance. Settlement of any ~~Advancis Patent Rights~~action brought by LICENSEE shall require the consent of CMU and LICENSEE, ~~Advancis Know-How~~ which neither shall unreasonably withhold from the other, and any settlement amount or ~~Program Developments~~ recovery for damages shall be ~~brought against Advancis and/or Par~~applied as follows: (i) first, ~~Advancis~~to reimburse the parties for their expenses in connection with the litigation; and (ii) second, [CMU shall receive compensation for the time of any CMU personnel involved in the action and (iii) third, CMU shall receive {***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages}. ~~11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing~~23.2. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par CMU shall have the right in its absolute discretion during the term of this Agreement to ~~select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share~~ commence or defend an action for infringement of or by the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to Patents and/or Copyrights against any third party ~~as a result~~ for any infringement occurring anywhere in the world, provided that, before commencing any such action concerning the Field of Use, CMU shall provide LICENSEE not less than 30 (thirty) days’ prior written notice of such ~~action, whether through judgment or settlement, the Parties shall bear such Damages equally,~~ infringement and ~~shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result~~ of CMU’s intent to file such action~~, whether through judgment or settlement,~~ . LICENSEE shall ~~first be used~~ have the right at its own expense to ~~reimburse each Party for~~ appear in such action by counsel of its ~~expenses associated~~ own selection. If CMU provides LICENSEE with such ~~infringement suit not otherwise reimbursed~~ notice before instituting an action concerning the Field of Use and LICENSEE fails to initiate an action against such third party prior to the commencement of an action by CMU, then any ~~remainder~~ settlement amount or recovery for damages shall ~~be shared by~~ belong entirely to CMU and CMU may settle said action without the ~~Parties equally, with such share~~ consent of ~~the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages~~LICENSEE. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement (Optical Molecular Imaging, Inc)

Infringement. ~~11.2.1 Par and Advancis~~ (a) Monogram shall ~~inform each other~~ notify MW promptly ~~in writing~~ of any ~~alleged~~ infringements, imitations or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or unauthorized use of ~~a Product in~~ the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared Licensed Marks by ~~the Parties equally. Any royalties, payments, damages, expense, fees or other awards~~ any credit provider(s) (collectively, "~~DAMAGES~~Infringements")) of which Monogram becomes aware. MW shall take such steps as it deems reasonable in the circumstances to ▇▇▇▇▇ any such Infringements. Except as provided below, ~~received by Advancis and/or Par as a result of such suit, whether through judgment or settlement,~~ MW shall ~~first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by~~ have the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par maysole right, at its ~~option and expense prosecute such infringement~~ expense, to bring any action on account of any ~~Advancis Patent Rights~~infringements, ~~Advancis Know-How or Program Developments owned~~ and Monogram shall cooperate with MW as MW may request (and at MW's expense), in connection with any such action reasonably brought by ~~Advancis~~MW. MW may settle infringements at its sole discretion (but shall use best efforts not to settle in a manner that conflicts with Monogram's rights hereunder), and may retain any and all resulting damages and/or other compensation paid by the infringer(s). If MW does not undertake appropriate steps to ▇▇▇▇▇ an Infringement within ninety (90) calendar days after notice thereof from Monogram, Monogram may prosecute the same, at its expense, provided that ~~Par can demonstrate through any industry recognized survey that such sales~~ no settlement shall be made without the prior written approval of ~~Product by the alleged or suspected infringer in the Territory exceeds [***]~~ MW. Monogram shall advise MW periodically of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense status of such ~~suit~~ action and ~~Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have~~ promptly of any material developments. MW reserves the right to ~~settle or compromise~~ participate at any time in such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expenseproceedings. In the event that ~~Advancis does not so elect to take over the sole defense of the~~ any damage, settlement and/or compensation are paid in connection with any such action at brought by Monogram, Monogram shall first retain an amount reimbursing its ~~own expense~~expenses, ~~Par~~ any remaining amount shall be ~~free to proceed~~ divided equally between MW and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the DamagesMonogram. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par (b) MW shall have the ~~right~~ sole right, at its expense, to ~~select separate counsel to participate in~~ defend and settle any action that may be commenced against MW or Monogram alleging that use of the Licensed Marks infringe any rights of others. In such ~~legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party~~ event, Monogram shall, at the ~~other~~reasonable direction of MW, promptly discontinue its use of the Licensed Marks alleged to infringe rights of others. If MW does not give notice to Monogram of its intent to defend or settle such action against Monogram or affecting Monogram's ~~request~~use of the Licensed Marks within ninety (90) calendar days after notice thereof from Monogram, ~~provide to it reasonable assistance and cooperation with respect to any such suit~~Monogram may defend the same, at its expense, provided that no settlement shall be made without the prior written approval of MW. To Monogram shall advise MW periodically of the ~~extent that any Damages become payable to any third party as a result~~ status of such ~~action, whether through judgment~~ action and promptly of any material developments. MW reserves the right to participate at any time in such proceedings. It is understood that nothing in this Section 5.15(6)(b) is intended to limit or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damagesmodify MW's indemnification obligation under SECTION 5.15(7)(a)) hereof. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Bank Credit Card Program Agreement (Montgomery Ward Holding Corp)

Infringement. ~~11.2.1 Par and Advancis~~ (a) If either party shall inform each other promptly in writing of any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use learn of a ~~Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether~~ claim or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event assertion that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of a Product in the ~~Products hereunder~~Territory infringes or otherwise violates the intellectual property rights of any Third Party or that any Third Party violates the intellectual property rights owned or Controlled by (i) Depomed in a Product and the Depomed Trademarks in the Territory or (ii) Santarus in the Santarus Trademarks, then ~~such Party~~ the party becoming so informed shall ~~promptly inform~~ promptly, but in all events within fifteen (15) days thereof, notify the other ~~Party~~ party to this Agreement of the claim or assertion. In the event either party receives a 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 ▇▇▇▇▇-▇▇▇▇▇▇ Act, with respect to any Product, such party shall provide the other party with written notice of such ~~patent~~ Paragraph IV notice within two (2) business days (each, a “Paragraph IV Notice”). (b) If warranted in the opinion of Depomed, after consultation with Santarus, Depomed shall have the right to take such legal action (“Enforcement Action”) as is advisable in Depomed’s opinion to restrain infringement of such Depomed Patent Rights related to any Product or ~~patent application~~the Depomed Trademarks in the Territory (subject, in the case of the 1000mg Product, to BLS’s rights and Depomed’s obligations with respect to the intellectual property under the BLS Agreements). Depomed will have the right to institute the Enforcement Action in its own name using counsel of its choice and, except as otherwise set forth in this Agreement, with the right to control the course of such Enforcement Action. Santarus shall cooperate fully with, and as reasonably requested by, Depomed in any Enforcement Action, and Depomed shall reimburse Santarus for its out-of-pocket expenses incurred in providing such cooperation. Santarus may be represented by counsel of its own selection at its own expense in any Enforcement Action. Depomed shall keep Santarus reasonably informed regarding material developments relating to any Enforcement Action (including by making its outside counsel available to participate in periodic status calls); provided, however, that Depomed shall obtain Santarus’ consent (which Santarus will not unreasonably withhold) in advance of (i) the ~~Parties~~ grant of any license, covenant not to ▇▇▇, right of reference, right of supply, other intellectual property right or other settlement in any Enforcement Action, and (ii) filing with the court or serving on any Third Party any pleadings (e.g., briefs, discovery requests and/or responses, expert reports, court filings and stipulations), the selection and engagement of expert witnesses, and any written or electronic correspondence with the opposing party or its counsel concerning substantive issues in the litigation, including positions taken with respect to fact, expert opinions and claim construction. If Depomed elects in writing not to bring or defend an Enforcement Action with respect to any Product in the Territory within ninety (90) days following a notification pursuant to Section 12.2(a) (provided that in the case of a Paragraph IV Notice, Depomed shall confirm in writing its election to bring such Enforcement Action no later than twenty (20) days following receipt of the Paragraph IV Notice), or if Depomed fails to bring or defend an Enforcement Action or take other reasonable action to protect the Depomed Patent Rights or the Depomed Trademarks in the Territory from such infringement, or to ▇▇▇▇▇ such infringement, then, subject to the terms and conditions of the BLS Manufacturing Transfer Agreement or other in-license agreement with respect to applicable Depomed Patent Rights licensed from a Third Party, if any, then, except as set forth in 0, Santarus shall have the right, at its sole discretion, to institute an Enforcement Action in its own name using counsel of its choice, at its own expense, and, except as otherwise set forth in this Agreement, with the right to control the course of such Enforcement Action (the “Santarus Step-In Rights”). Depomed shall cooperate ~~with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture~~fully with, ~~use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is~~ and as reasonably requested by, Santarus in any such Enforcement Action, including joining such Enforcement Action if necessary to ~~avoid infringement of patents of~~ maintain the ~~third party~~Enforcement Action, and Santarus shall reimburse Depomed for its out-of-pocket expenses incurred in providing such cooperation. Depomed shall have the ~~Executive Committee shall: 1) determine~~ right to join and participate in the Enforcement Action whether or not such joinder is requested by Santarus. Santarus shall keep Depomed reasonably informed regarding material developments relating to ~~seek~~ any such a Enforcement Action (including by making its outside counsel available to participate in periodic status calls); provided, however, that Santarus shall obtain Depomed’s consent (which Depomed will not unreasonably withhold) in advance of (i) the grant of any license, 2covenant not to ▇▇▇, right of reference, right of supply, other intellectual property right or other settlement in any Enforcement Action, and (ii) ~~appoint~~ filing with the court or serving on any Third Party any pleadings (e.g., briefs, discovery requests and/or responses, expert reports, court filings and stipulations), the selection and engagement of expert witnesses, and any written or electronic correspondence with the opposing party or its counsel concerning substantive issues in the litigation, including positions taken with respect to fact, expert opinions and claim construction. Depomed may be represented by counsel of its own selection at its own expense in any Enforcement Action brought by Santarus pursuant to the Santarus Step-In Rights. Any recovery received by a ~~negotiator~~ party as a result of any Enforcement Action shall be used first to ~~negotiate~~ reimburse the parties for their costs and expenses (including attorneys’ and professional fees) incurred in connection with such Enforcement Action (and not previously reimbursed, including any reimbursement made or required to be made to Depomed by BLS under the BLS Agreements or by any other licensor of the applicable Depomed Patent Rights or Depomed Trademarks under the terms of the respective in-license agreement, if any). Of any remaining amounts, the amount (if any) which is required to be paid to BLS pursuant to the BLS Agreements or any other licensors of the applicable Depomed Patent Rights or Depomed Trademarks under the terms of the respective in-license agreement, if any, shall then be paid to BLS or such ~~a license~~other licensor, ~~3) determine whether or not to enter into such a license as negotiated by the negotiator~~if any, and ~~4) determine how the expenses of such a license~~ any amounts remaining thereafter shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. shared [***] ~~INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED~~to Santarus and [***] to Depomed. (c) The parties acknowledge that as of the Effective Date, Depomed has ongoing patent infringement litigation with respect to Products against each of Sun Pharmaceutical Industries, Inc. (and Sun Pharma Global FZE and Sun Pharmaceutical Industries Ltd.) and Lupin Limited (and its subsidiary Lupin Pharmaceuticals Inc.) (the “Existing Infringement Cases”). ~~ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934~~Notwithstanding Section 12.2(b): (i) Santarus shall have the right upon written notice to Depomed to lead settlement negotiations for either or both of the Existing Infringement Cases within mutually agreed settlement parameters; (ii) Santarus shall be required to reimburse Depomed for seventy percent (70%) of its out-of-pocket costs paid for periods after the Effective Date in pursuing the Existing Infringement Cases; and (iii) Depomed shall be required to reimburse Santarus for thirty percent (30%) of its out-of-pocket costs paid for periods after the Effective Date in pursuing the Existing Infringement Cases; in each case, ~~AS AMENDED~~including costs and legal fees related to discovery requests. ~~31 --------------------------------------------------------------------------------~~Prior to the Effective Date, Depomed has provided to Santarus a budget for Depomed’s out-of-pocket costs relating to the conduct of the Existing Infringement Cases. Santarus’ budget for out-of-pocket costs relating to the conduct of the Existing Infringement Cases shall be consistent with the amounts Depomed has negotiated for comparable activities in connection with the Existing Infringement Cases, and Santarus shall use commercially reasonable efforts to negotiate similar arrangements. The parties agree to use commercially reasonable efforts to conduct the Existing Infringement Cases within the budgets described above. If a party believes that it will not be able to conduct the Existing Infringement Cases within such budget, such party shall promptly notify the other party thereof, and the parties shall confer in good faith regarding the handling of costs outside of such budget and use commercially reasonable efforts to minimize such excess costs. Any modifications to the budgets shall be agreed upon in advance by the parties. Any other ANDA litigation arising after the Effective Date shall be subject to the preceding provisions of this Section 12.2(c), mutatis mutandis. (d) If warranted in the opinion of Santarus, Santarus shall take such legal action as is advisable in Santarus’ opinion to restrain such infringement of the Santarus Trademarks. Depomed shall cooperate fully with, and as requested by, Santarus in Santarus’ attempt to restrain such infringement, and Santarus shall reimburse Depomed for its out-of-pocket expenses incurred in providing such cooperation. Depomed may be represented by counsel of its own selection at its own expense in any suit or proceeding brought to restrain such infringement, but Santarus shall have the right to control the suit or proceeding.

Appears in 1 contract

Sources: Commercialization Agreement (Depomed Inc)

Infringement. ~~11.2.1 Par~~ 8.1. LICENSEE or its SUBLICENSEE(s) shall have the right to prosecute in their own name and ~~Advancis~~ at their own expense any infringement of the PATENT RIGHTS, so long as the license is effective at the time such legal action is commenced. LICENSOR agrees to notify LICENSEE promptly of each infringement of the PATENT RIGHTS of which LICENSOR becomes aware. Before LICENSEE or its SUBLICENSEES commences an action for infringement, LICENSEE or SUBLICENSEE shall ~~inform each other promptly~~ notify LICENSOR and carefully consider the views of LICENSOR and the public interest. 8.2. LICENSOR agrees to join as a party plaintiff in ~~writing of~~ any ~~alleged or suspected infringement~~ lawsuit initiated by LICENSEE, if requested by LICENSEE, with all costs, attorney fees and expenses to be paid by LICENSEE. 8.3. If LICENSEE undertakes to enforce and/or defend the PATENT RIGHTS by litigation, any award paid by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par third party as a result of such ~~suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder~~ enforcement and/or defense shall be ~~shared by~~ applied first to satisfy LICENSOR’s and LICENSEE’S unreimbursed expenses and legal fees for the ~~Parties equally~~litigation, ~~with such share of the Damages~~ and any remaining balance shall be subject to ~~be paid to the other party,~~ EARNED ROYALTIES as ~~applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to~~ set forth in Section ~~11.2.3 within~~ 3.6. INFORMATION MARKED BY [***] HAS BEEN OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTION HAS BEEN SEPARATELY FILED WITH THE SECURITIES AND EXCHANGE COMMISSION. 8.4. No settlement, consent judgment or other voluntary final disposition of ~~being notified~~ the suit may be entered into without LICENSOR’s consent, which shall not be unreasonably withheld. 8.5. If LICENSEE and its SUBLICENSEE(s) elect not to exercise their right to prosecute or defend an infringement of ~~such alleged or suspected infringement~~the PATENT RIGHTS, ~~Par may,~~ LICENSOR may do so at its ~~option and expense prosecute such infringement of any Advancis Patent Rights~~own expense, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise controlling such action ~~or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis~~and retaining all recoveries. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that 8.6. If a declaratory judgment action alleging invalidity ~~or non-infringement~~ of any ~~Advancis Patent Rights, Advancis Know-How or Program Developments shall be~~ of the PATENT RIGHTS is brought against ~~Advancis and/or Par~~LICENSEE or LICENSOR, ~~Advancis~~then LICENSOR, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its sole option, ~~shall have~~ has the ~~right, within [***] after commencement of such action,~~ right to intervene and take over the ~~sole~~ defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Exclusive License Agreement (Arno Therapeutics, Inc)

Infringement. ~~11.2.1 Par and Advancis~~ RAICHEM shall ~~inform each other~~ undertake at RAICHEM's own expense the defense of any suit or action for infringement of RAICHEM's United States patents brought against ▇▇▇▇▇▇ in the United States, which suit or action results from the sale of any PRODUCTs, provided that ▇▇▇▇▇▇ shall have promptly advised RAICHEM in writing of each notice or claim of infringement received by ▇▇▇▇▇▇ and of the commencement of the suit or action. RAICHEM shall hold ▇▇▇▇▇▇ harmless from damages or other sums which may be assessed or may become payable under any ~~alleged~~ final decree or ~~suspected infringement by a Third Party~~ judgment in any such suit or action or under any settlement thereof. RAICHEM shall have sole charge and direction of the defense of any ~~of Advancis Patent Rights, Advancis Know-How~~ such suit or ~~Program Developments,~~ action and of all negotiations for such settlement, but shall use commercial reasonableness and shall consult with ▇▇▇▇▇▇ with regard to the defense or settlement of any ~~available evidence thereof. 11.2.2 Subject~~ such suit or action. ▇▇▇▇▇▇ shall be obligated to ~~Sections 11.2.3~~ render all reasonable assistance which may be required by RAICHEM at RAICHEM's expense. ▇▇▇▇▇▇ may retain counsel of its own selection and ~~11.2.4, Advancis may,~~ at its ~~sole option~~ own expense to advise and ~~expense~~consult with RAICHEM's counsel. RAICHEM may not settle any suit or action without the consent of ▇▇▇▇▇▇, ~~prosecute~~ if by such settlement ▇▇▇▇▇▇ is obligated to make any monetary payment, to part with any property or interest therein, to assume any obligation or to be subject to any injunction. The parties agree that if the ~~infringement of any Advancis Patent Rights~~PRODUCTs supplied by RAICHEM are found to be infringing on a third-party patent, ~~Advancis Know-How~~ RAICHEM will negotiate in good faith with the third party to obtain a license to use the third party's technology and, if RAICHEM fails to obtain such a license, or ~~Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that~~ if RAICHEM is subject to a ~~Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT")~~permanent injunction, then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis ▇▇▇▇▇▇ shall have the right to ~~institute such an infringement suit at its cost and expense and~~ either terminate this Agreement by giving written notice of termination to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equallyRAICHEM, and ~~shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action~~return for full credit all inventory on hand, ~~whether through judgment~~ or ~~settlement, shall first be used to reimburse each Party~~ negotiate with the infringed party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license~~, 2) appoint a negotiator to negotiate the terms of~~ . RAICHEM's indemnification resulting from any infringement on third party patent shall exclude ▇▇▇▇▇▇'▇ costs involved in negotiation with any infringed party for such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------.

Appears in 1 contract

Sources: Distribution Agreement (Hemagen Diagnostics Inc)

Infringement. ~~11.2.1 Par and Advancis~~ 8.1 Either party shall inform ~~each~~ the other promptly in writing of any alleged ~~or suspected~~ infringement of the Intellectual Property Rights by a ~~Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments,~~ third party and of any available evidence thereof. ~~11.2.2 Subject~~ 8.2 During the term of this Agreement, UTC shall have the right, but shall not be obligated, to ~~Sections 11.2.3~~ prosecute at its own expense any such infringements of the Intellectual Property Rights. If UTC prosecutes any such infringement, UTC agrees that LICENSEE may join UTC 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 UTC shall be borne by UTC and ~~11.2.4~~UTC shall keep any recovery or damages for past infringement derived therefrom. 8.3 If within six (6) months after having been notified of any alleged infringement or such shorter time prescribed by law, ~~Advancis~~ UTC shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if UTC 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 [*#*] any infringement of the Intellectual Property, and LICENSEE may, ~~at its sole option~~ for such purposes, use the name of UTC 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. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of UTC, which consent shall not unreasonably be withheld. LICENSEE shall indemnify UTC against any expenses, including attorney's fees, incurred by UTC in such proceedings commenced by LICENSEE, and ~~expense~~LICENSEE shall keep any recovery or damages for past infringement derived therefrom when the cost of such action is borne solely by LICENSEE. 8.4 In the event that LICENSEE and UTC jointly shall undertake the enforcement and/or defense of the Intellectual Property by litigation, ~~prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 --------------------------------------------------------------------------------~~then all costs and judgments shall [*#*]. ~~11.2.3~~ 8.5 In the event that a ~~Third Party infringes Advancis Patent Rights~~declaratory judgment action alleging invalidity or noninfringement of any of the Intellectual Property shall be brought against LICENSEE, ~~Advancis Know-How or Program Developments owned by Advancis by manufacture~~UTC at its option, ~~sale or use~~ shall have the right, within thirty (30) days after commencement of ~~a Product in~~ such action, to intervene and take over the ~~Territory (a "PRODUCT INFRINGEMENT")~~sole defense of the action at its own expense. 8.6 In any infringement suit as either party may institute to enforce the Intellectual Property Rights pursuant to this Agreement, ~~then~~ the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par other party hereto shall, at the request and expense of ~~Advancis~~the party initiating such suit, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like~~. Advancis may join Par as a~~ . 8.7 In the event of any infringement or likely infringement by LICENSEE's use, manufacture or sale of any of the Intellectual Property, Know How, Licensed Product, or Licensed Process of any third party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards 's intellectual property (collectively, "~~DAMAGES~~Infringing Rights"), ~~received by Advancis and/or Par as~~ UTC shall, together with LICENSEE, cooperate in good faith and on a ~~result of such suit~~mutual and reasonable basis, ~~whether through judgment or settlement, shall first be used to reimburse~~ with each ~~Party~~ party responsible for its ~~expenses associated~~ respective expenses: *#*CONFIDENTIAL TREATMENT REQUESTED (a) To negotiate and settle any dispute with any such ~~infringement suit and then any remainder shall be shared by~~ third party concerning the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Infringing Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In otherwise resolve any such infringement ~~suit Par may institute~~ and secure LICENSEE's continued rights to ~~enforce Advancis Patent~~ the Infringing Rights; and (b) To make a reasonable and equitable adjustment, ~~Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and~~if any, to the ~~extent possible~~royalties paid or otherwise due under this Agreement in respect of licenses or other rights obtained by LICENSEE from third parties under such Infringing Rights in order for LICENSEE to continue to exercise rights granted under this Agreement. 8.8 In no event shall any party to this Agreement be liable for indirect, ~~have its employees testify when requested and make available relevant records~~consequential or similar damages, ~~papers, information, Samples, specimens and~~ even if advised of the ~~like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense~~ possibility of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancisliability. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Intellectual Property License Agreement (Myogen Inc)

Infringement. ~~11.2.1 Par and Advancis~~ 8.1 Each party shall ~~inform each~~ promptly give written notice to the other ~~promptly in writing~~ party of: (i) any suspected infringement of a Licensed Technology; (ii) the threat of or filing of any ~~alleged or suspected infringement~~ declaratory judgment action by a ~~Third Party~~ third party alleging the invalidity, unenforceability, or non-infringement of ~~any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof~~the Licensed Technology. ~~11.2.2 Subject~~ 8.2 LICENSEE shall have the first right (but not the obligation) to ~~Sections 11.2.3~~ notify an entity or individual of using the Trade Secrets and ~~11.2.4, Advancis may, at its sole option and expense, prosecute~~ initiate legal proceedings to ▇▇▇▇▇ the infringement of a Licensed Technology within LICENSEE'S Field of Use, Knight agrees to join as a party plaintiff in any ~~Advancis Patent Rights~~such lawsuit initiated by LICENSEE, ~~Advancis Know-How or Program Developments~~if requested to do so by LICENSEE, with all costs, attorneys' fees, and expenses of Knight to be paid by LICENSEE. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or Should LICENSEE elect not to institute such an action to enforce the Licensed Technology against infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request within LICENSEE's Field of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards Use within ninety (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon 90) days after receipt of ~~the Damages. 11.2.4 In the event that only Advancis does not agree~~ written notice from Knight of Knight's intention to ~~institute a~~ bring suit ~~against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of~~ for such ~~alleged or suspected~~ infringement, ~~Par may,~~ Knight shall have the right (but not the obligation) at its ~~option~~ own expense to take those steps on behalf of itself and ~~expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis~~LICENSEE, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis LICENSEE shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action participate at its own ~~expense. In~~ expense in any action brought by Knight. 8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the ~~event that Advancis does not so elect to take over the sole defense~~ infringement of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages Licensed Technology received by ~~Advancis and/or Par as a result of such action, whether through judgment or settlement,~~ LICENSEE shall first be ~~used~~ applied to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on ParLICENSEE's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the unreimbursed expenses of such ~~a license~~ proceedings and then Knight's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys’ fees and court costs. If Knight leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology shall be ~~borne by~~ first applied to reimburse Knight's unreimbursed expenses of such proceedings, and then LICENSEE’s unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys’ fees and court costs. Any remainder shall, to the ~~Parties. If~~ extent the ~~Executive Committee cannot agree with regard~~ same pertains to ~~any responsibility set forth in~~ an infringement of the ~~preceding sentence, such issue~~ Licensed Technology shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------divided between the LICENSEE and Knight as mutually agreed.

Appears in 1 contract

Sources: Exclusive License Agreement (AFS Holdings, Inc.)

Infringement. ~~11.2.1 Par and Advancis shall~~ 10.1 Each party will promptly inform ~~each~~ the other ~~promptly~~ in writing of any alleged ~~or suspected~~ infringement by a ~~Third Party~~ third party or other unauthorized party of any of ~~Advancis Patent Rights, Advancis Know-How or Program Developments~~the patents comprising the Licensed Patents, and of provide such other party with any available evidence ~~thereof~~of infringement. Chondrial will not settle or compromise any claim or action, including, without limitation, any declaratory judgment action alleging invalidity or noninfringement of any of the Licensed Patents, in a manner that imposes any restrictions, limitations, responsibilities or obligations on WFUHS without WFUHS’s express written consent, which shall not be unreasonably withheld, it being understood that such decision shall take into account Chondrial’s overall marketing and commercialization plan to the extent communicated to Licensors. ~~11.2.2 Subject~~ 10.2 During the Term, Chondrial will have the first right, but not the obligation, to ~~Sections 11.2.3 and 11.2.4, Advancis may,~~ prosecute at its ~~sole option and expense~~own expense any such infringements of the Licensed Patents and, ~~prosecute~~ in furtherance of such prosecution, Chondrial may join WFUHS as a party plaintiff in any such suit, without expense to WFUHS. Similarly, during the Term, Chondrial will have the right to defend at its own expense any declaratory judgment action alleging invalidity or non-infringement of any ~~Advancis Patent Rights~~of the Licensed Patents, ~~Advancis Know-How~~ and, in furtherance thereof, Chondrial may join WFUHS as a party in any such suit, without expense to WFUHS. The total cost of any such action commenced or ~~Program Developments~~defended solely by Chondrial will be borne by Chondrial. ~~29 --------------------------------------------------------------------------------~~Any recovery of damages by Chondrial as a result of such action shall be applied first in satisfaction of any reasonable unreimbursed expenses and attorneys’ fees of Chondrial relating to the action. The balance remaining from any such recovery shall be distributed to Chondrial, provided that Chondrial will pay to WFUHS such royalties as would otherwise be applicable under Section 3.1 hereof for that portion of Chondrial’s recovery attributable to lost Net Sales. ~~11.2.3~~ 10.3 If, within One Hundred Eighty (180) days after having been notified in writing of any alleged infringement, Chondrial has been unsuccessful in persuading the alleged infringer to desist, or has not brought, or otherwise is not diligently prosecuting, an infringement action, or if Chondrial notifies WFUHS at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, WFUHS will have the right, but not the obligation, to prosecute at its own expense any infringement of the Licensed Patents. Settlement, consent judgment or other voluntary final disposition of the suit may be entered into by WFUHS without the consent of Chondrial, provided, however that WFUHS will not settle or compromise any claim or action, including without limitation any declaratory judgment action alleging invalidity or noninfringement of any of the Licensed Patents, in a manner that imposes any monetary obligations on Chondrial, without Chondrial’s express written consent. The total cost of any such infringement action commenced or defended solely by WFUHS will be borne by WFUHS and WFUHS will keep any recovery or damages, for past infringement or otherwise, derived therefrom. 10.4 Without limiting the effect of any other provision hereof, in the event an action for infringement or any declaratory judgment action alleging invalidity or noninfringement of any of the Licensed Patents, is brought arising from the practice of the Licensed Patents, Chondrial (and/or its relevant Affiliate or Sublicensee) will have the right to defend such action and will be solely responsible for all attorneys’ fees, costs of defense, and liability arising out of that action, and Chondrial will keep any recovery and damages derived therefrom or from any counterclaims asserted therein. 10.5 In the event that a ~~Third Party infringes Advancis Patent Rights~~declaratory judgment action alleging invalidity or non-infringement of any of the Licensed Patents is brought, ~~Advancis Know-How~~ and Chondrial (and/or its relevant Affiliate or ~~Program Developments owned by Advancis by manufacture, sale~~ Sublicensee) declines to defend the same or ~~use of a Product~~ otherwise is not diligently defending such action in the ~~Territory (a "PRODUCT INFRINGEMENT")~~reasonable opinion of WFUHS counsel, ~~then~~ then, and in those events only, WFUHS , at its option, will have the ~~Parties shall discuss whether~~ right to intervene and take over the sole defense of the action at its own expense and whereupon WFUHS will keep any recovery and damages derived therefrom or ~~not~~ from any counterclaims asserted therein. 10.6 In any infringement suit brought or declaratory judgment action defended by either party to ~~institute an infringement action with respect~~ protect any of the Licensed Patents pursuant to ~~such Product Infringement. If~~ this Agreement, the ~~Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall~~other party will, at the request and expense of ~~Advancis~~the party controlling such suit and at such party’s expense, ~~provide reasonable cooperation~~ cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, specimens and the like~~. Advancis may join Par as~~ . 10.7 Without limiting the foregoing provisions regarding infringement in Sections 10.1-10.6, in the event any party receives any notice during the Term relating to the development of or application for a ~~party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense~~ “biosimilar” for which a Licensed Product is the “reference product” (within the meaning of ~~such suit shall be shared by~~ the ~~Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"~~Biologics Act), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued it shall promptly notify the other ~~Party in writing. Advancis~~ parties and they shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation conduct good faith negotiations with respect to any and all responses thereto, including without limitation the sharing of information regarding the Licensed Patents and/or the Licensed Products with the applicant for such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damagesbiosimilar. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement (Larimar Therapeutics, Inc.)

Infringement. 11.2.1 Par and Advancis shall inform each other promptly in writing of any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 12.1 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an there is infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the ~~Damages~~ PATENTS, the PARTIES shall notify each other in writing to ~~be paid to the other party,~~ that effect. Except as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section ~~17.2.2 herein~~12.2, during the one hundred twenty (120) day period after such notice, SSC will have the right, but not the obligation to bring suit against the alleged infringer. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par SSC shall bear the expenses of any suit brought by it and shall retain all damages or other monies awarded or received in settlement of such suit. SSC shall have the ~~cost~~ final decision on all matters relating to litigation and ~~expense of~~ any settlement discussions. LICENSEE will use reasonable efforts to cooperate with SSC in any such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to ~~institute such an infringement suit at~~ consult with SSC and be represented by its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action own counsel at its own expense. In If, after the ~~event that Advancis does not so elect to take over~~ expiration of said one hundred twenty (120) days from the ~~sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result~~ date of such ~~action~~notice, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement SSC has not brought suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that against a third party ~~institutes any~~ infringer, then LICENSEE shall have the right after such one hundred twenty (120) day notice period, but not the obligation, to bring suit against ~~Par and/or Advancis for patent infringement involving the Products, the Party sued~~ such infringer and join SSC as a party plaintiff provided that LICENSEE shall ~~promptly notify the other Party in writing. Advancis shall assume the defense~~ bear all expenses of such suit~~, provided, however, that if Par is also a defendant~~ . LICENSEE shall retain all damages or other monies awarded or received in settlement of such ~~action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par~~ suit. SSC shall have the right to ~~select separate counsel~~ consult with LICENSEE or join as a party plaintiff to such suit at its own expense. At LICENSEE'S request, SSC will reasonably cooperate with LICENSEE in any suit for infringement of the PATENT brought by LICENSEE, including being joined as a party plaintiff to such suit, against a third party and shall have the right to consult with LICENSEE and to participate in and be represented by independent counsel in such ~~legal defenses on Par~~litigation. All reasonable costs incurred by SSC associated with providing cooperation at LICENSEE's ~~behalf~~request shall be paid by LICENSEE. ~~The Parties~~ Where it is necessary for LICENSEE to have standing to file the suit, SSC shall ~~share~~ assign limited concurrent rights to the ~~cost~~ licensed PATENTS for the terms of the suit. Notwithstanding the foregoing, LICENSEE shall not enter into any settlement agreement, or take any position in litigation which adversely impacts SSC's rights under this Agreement without the written consent by SSC. 12.2 In the event that there is infringement of the PATENTS and ~~expense of~~ such ~~defense equally. Each Party~~ infringement affects the FIELD, LICENSEE shall, at during the ~~other's request~~one hundred twenty (120) day period after notice thereof, ~~provide~~ have the same rights as SSC has pursuant to ~~it reasonable assistance~~ its Development and ~~cooperation~~ License Agreement with ~~respect~~ Tyco Healthcare Group ("Tyco Agreement"), but not the obligation, to ~~any~~ bring suit against such infringer and join SSC as a party plaintiff provided that LICENSEE shall bear all expenses of such suit. To SSC will not waive or relinquish any rights it may have under the Tyco Agreement to bring suits against infringers of the PATENTS, where any such waiver or relinquishment would adversely impact LICENSEE's rights under this Section. LICENSEE shall retain the greater of (i) all damages or other monies awarded or received in settlement of such suit and attributable to the infringement of its FIELD and (ii) an amount equal to its and SSC's, if any, reasonable costs and expenses (including legal fees and expenses) of prosecuting such suit or settlement. SSC will reasonably attempt to cooperate with LICENSEE in any such suit for infringement of the PATENTS and shall have the right to consult with LICENSEE and to participate in and be represented by independent counsel in such litigation at its own expense. All reasonable costs incurred by SSC associated with providing cooperation to LICENSEE at LICENSEE's request shall be paid by LICENSEE to the extent not paid for by any monies awarded or received in settlement of such suit. Where it is necessary for LICENSEE to have standing to file the suit, SSC shall assign limited concurrent rights to the licensed PATENTS for the terms of the suit. Notwithstanding the foregoing, LICENSEE shall not enter into any settlement agreement, or take any position in litigation which adversely impacts SSC's rights under this Agreement without the written consent by SSC. 12.3 In the event that ~~any Damages become payable to~~ any third party brings proceedings challenging the validity of the PATENTS, SSC shall provide prompt notice of such proceedings to LICENSEE and LICENSEE shall, during the one hundred twenty (120) day period after notice thereof, have the same rights as SSC has pursuant to the Tyco Agreement, but not the obligation, to contest such proceedings and join SSC as a ~~result~~ party provided that LICENSEE shall bear all expenses of such ~~action~~suit. SSC will not waive or relinquish any rights it may have under the Tyco Agreement to contest such proceedings, ~~whether through judgment~~ where any such waiver or ~~settlement,~~ relinquishment would adversely impact LICENSEE's rights under this Section. SSC will reasonably attempt to cooperate with LICENSEE in any such proceedings challenging the ~~Parties shall bear such Damages equally,~~ validity of the PATENTS and shall ~~contribute~~ have the right to consult with LICENSEE and to participate in and be represented by independent counsel in such ~~share as promptly as practicable~~litigation at its own expense. ~~Any Damages received~~ All reasonable costs incurred by ~~Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses~~ SSC associated with ~~such infringement suit not otherwise reimbursed and then any remainder~~ providing cooperation to LICENSEE at LICENSEE's request shall be ~~shared~~ paid by LICENSEE. Where it is necessary for LICENSEE to have standing to contest the ~~Parties equally~~proceedings, ~~with such share of the Damages to be paid~~ SSC shall assign limited concurrent rights to the ~~other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis~~ licensed PATENTS for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of ~~such a license~~the proceedings. Notwithstanding the foregoing, ~~3) determine whether or~~ LICENSEE shall not to enter into ~~such a license as negotiated by the negotiator~~any settlement agreement, ~~and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to~~ or take any ~~responsibility set forth~~ position in the ~~preceding sentence, such issue shall be determined~~ proceedings which adversely impacts SSC's rights under this Agreement without the written consent by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------SSC.

Appears in 1 contract

Sources: Development and License Agreement (Specialized Health Products International Inc)

Infringement. ~~11.2.1 Par~~ 10.1 PracSys shall defend, hold harmless and ~~Advancis shall inform each other promptly in writing~~ indemnify NASI from and against any and all liability and expense by reason of any ~~alleged~~ third party claim, suit, action or ~~suspected~~ proceeding for infringement ~~by a Third Party~~ of any third party proprietary rights including, but not limited to, copyrights, trade secrets rights, or patents arising in connection with the manufacture, installation, sale or use of ~~Advancis Patent Rights, Advancis Know-How~~ the Equipment including any and all judgments or ~~Program Developments,~~ decrees which may be rendered against NASI and reasonable attorney's fees and settlements made arising out of any ~~available evidence thereof~~such claim, suit, action, or proceeding, provided, however, that: 10.1.1 PracSys shall not be responsible for any settlement of any such claim, suit, action or proceeding made without its prior written consent, which shall not unreasonably be withheld; 10.1.2 This indemnity shall not extend to any alleged infringement based upon the combination of the Equipment or any portion thereof with other items or things not furnished hereunder unless PracSys (a) knew of NASI's specific intention to combine the Equipment or any portion thereof with a specific item and (b) in connection therewith PracSys may be held reasonably to have been aware that such a combination would constitute an infringement and PracSys did not so advise NASI; and 10.1.3 This indemnity shall not extend to any alleged infringement based upon a modification to the Equipment by NASI unless PracSys directs that the modification be made or unless Pracsys (a) knew of NASI's specific intention to modify the Equipment or any portion thereof and (b) in connection therewith PracSys may be held reasonably to have been aware that such a modification would cause an infringement and Pracsys did not so advise NASI. ~~11.2.2 Subject~~ 10.2 PracSys shall defend at its own expense all suits, actions or proceedings brought against NASI with respect to ~~Sections 11.2.3 and 11.2.4, Advancis may~~the matters listed in paragraph 10.1 above. NASI shall have the right, at its ~~sole~~ option and at its sole expense, ~~prosecute~~ to participate in the ~~infringement~~ defense of any ~~Advancis Patent Rights~~such claim, ~~Advancis Know~~suit, action or proceeding, without relieving PracSys of any obligation hereunder. NASI shall promptly notify PracSys in writing after any such claim is made or suit is brought and shall cooperate with PracSys in writing after any such claim is made or suit is brought and shall cooperate with PracSys, and PracSys agrees to reimburse NASI for its reasonable out-~~How~~ of-pocket expenses incurred in connection with such cooperation, provided PracSys has agreed to the nature of the cooperation in advance. *** REDACTED PORTION. CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL HAS BEEN SEPARATELY FILED WITH THE COMMISSION. 10.3 If, however, as a consequence of a final determination of any suit for infringement or ~~Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In~~ any court decision involving any injunction resulting from or arising in connection with the ~~event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by~~ manufacture, sale or use of ~~a Product~~ the Equipment or any part thereof furnished or employed by PracSys hereunder, NASI is enjoined or limited in any material manner in the ~~Territory (a "PRODUCT INFRINGEMENT")~~use of said Equipment or material part thereof, then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par PracSys shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. . 10.3.1 Procure for NASI the right to continue use of said Equipment or part; or 10.3.2 So modify the Equipment or part as to render it non-infringing without any significant effect on the use thereof; or 10.3.3 Replace the Equipment or part with a materially equivalent non-infringing product. 10.4 In the event ~~that Advancis does not so elect~~ PracSys is unable, after diligent good faith efforts, to ~~take over the sole defense~~ provide any of the ~~action at~~ remedies provided for in clauses 10.3.1 through 10.3.3 hereof, PracSys may in fulfillment of its ~~own expense, Par shall be free~~ obligation under this paragraph remove such Equipment or part and refund to ~~proceed and solely control such defense. To~~ NASI the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damagespurchase price thereof. ~~11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products~~10.5 THIS PARAGRAPH SETS FORTH THE SOLE OBLIGATIONS OF PracSys AND ITS SUBCONTRACTORS AND AFFILIATES, ~~the Party sued shall promptly notify the other Party in writing~~AND THE EXCLUSIVE REMEDIES OF NASI, WITH RESPECT TO INFRINGEMENT OF THIRD PARTY PROPRIETARY RIGHTS. ~~Advancis shall assume the defense of such suit~~IN NO EVENT SHALL PracSys OR ITS SUBCONTRACTORS OR AFFILIATES BE LIABLE TO NASI FOR LOSS OF USE, ~~provided~~REVENUE, ~~however~~OR PROFIT OR ANY OTHER DIRECT, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to AdvancisINDIRECT, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the DamagesINCIDENTAL OR CONSEQUENTIAL DAMAGES ARISING FROM ANY SUCH INFRINGEMENT. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: Purchase Contract (North American Scientific Inc)

Infringement. ~~11.2.1 Par and Advancis~~ (a) Each party shall ~~inform each other~~ promptly report in writing to the other party during the Term of this Agreement any ~~alleged~~ known infringement or suspected infringement ~~by a Third Party~~ of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product CIMA Patents in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of a Product on a commercial scale in derogation of the ~~Products hereunder~~rights granted to WCH hereunder (hereinafter, ~~then~~ a "Related Infringement") 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) 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 WCH sufficient advance notice of its intent to file any suit on account of a Related Infringement and the reasons therefor, and shall provide WCH with an opportunity to make suggestions and comments regarding such ~~Party~~ suit. CIMA shall keep WCH promptly informed, and shall from time to time consult with WCH regarding the status of any such suit on account of a Related Infringement and shall provide WCH 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. WCH, in its sole discretion, may elect, within sixty (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 other consideration received by CIMA as a result of such litigation shall be shared by CIMA and WCH 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 WCH 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. If necessary, WCH 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. WCH 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. WCH 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 any such suit on terms which grant any license to any other party in derogation of the rights granted to WCH hereunder without obtaining the prior written consent of WCH, which consent shall not be unreasonably withheld. (d) In the event that CIMA elects not to initiate an infringement or other appropriate suit pursuant to subsection (b) above on account of a Related Infringement after reasonable efforts to ▇▇▇▇▇ such Related Infringement without litigation have failed, but in no event later than ninety (90) days after WCH's notice to CIMA under Section 9.2(a), CIMA shall promptly ~~inform the other Party~~ advise WCH of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or its intent not to ~~seek~~ initiate such a ~~license~~suit, ~~2) appoint a negotiator~~ WCH shall have the right, at the expense of WCH, of initiating an infringement or other appropriate suit against the party or parties committing such Related Infringement. In exercising its rights pursuant to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------this subsection

Appears in 1 contract

Sources: Development and License Agreement (Cima Labs Inc)

Infringement. ~~11.2.1 Par~~ (a) The Vendor agrees that it shall defend, indemnify ------------ and ~~Advancis shall inform each other promptly in writing of any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights~~hold harmless, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, ~~Par~~ 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 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 ~~free to proceed and solely control such defense. To~~ assessed against, or incurred by, the ~~extent that any Damages become payable to any Third Party as a result~~ Owner on account of such ~~action~~infringement or violation, ~~whether through judgment~~ 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 ~~settlement~~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 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 ~~Parties~~ party claiming such indemnification shall ~~bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as~~ give written notice (a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid "Claim Notice") to the ~~other party, as applicable,~~ Vendor as soon as practicable ~~upon receipt~~ after the ------------ party entitled to indemnification becomes aware of any 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 ~~Damages. 11.2.7 In~~ Owner 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 ~~that a third party institutes~~ 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 same, at the Vendor's cost, risk and expense, and (iii) to compromise or settle such Claim, which compromise or settlement shall be made only with the written consent of the Owner (which may not be unreasonably withheld), unless such compromise or settlement includes an unconditional release of any ~~suit~~ claims against ~~Par and/or Advancis for patent infringement involving~~ the ~~Products,~~ Owner in which event such written consent of the ~~Party sued~~ Owner shall ~~promptly notify~~ not be required. If the ~~other Party in writing. Advancis shall~~ Vendor fails to assume the defense of such ~~suit~~Claim within fifteen (15) calendar days after receipt of the Claim Notice, ~~provided, however, that if Par is also a defendant in~~ the Owner against which such ~~action and Par shall have reasonably concluded that there may be legal defenses available~~ Claim has been asserted will (upon delivering notice to ~~it that are different from or additional~~ such effect to ~~those available to Advancis, Par shall~~ the Vendor) have the right to ~~select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall~~undertake, at the ~~other~~Vendor's ~~request~~cost and expense, ~~provide~~ 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 defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to ~~it reasonable assistance~~ and ~~cooperation~~ in accordance with ~~respect~~ this Agreement and for any final judgment (subject to any ~~such suit. To the extent that any Damages become payable to any third party as a result~~ right of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent applicationappeal), and the ~~Parties~~ Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment. (b) The Vendor's obligation under this subsection shall ~~cooperate with each other so~~ not extend to alleged infringements or violations that ~~each Party can determine whether valid rights of a third party are likely to be infringed~~ arise because the Products provided by the ~~manufacture~~Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, ~~use~~ recommended or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated approved by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------Vendor.

Appears in 1 contract

Sources: System Equipment Purchase Agreement (Leap Wireless International Inc)

Infringement. 11.2.1 Par and Advancis shall inform each other promptly in writing of any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued a) NDCHealth shall promptly notify the ~~other Party~~ Coordinating Committee in ~~writing. Advancis shall assume~~ the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent event NDCHealth determines that any ~~Damages become payable to~~ Arclight Trademark or Arclight Technology is being infringed, misappropriated, violated or adversely affected by any unauthorized or unlawful use by any third party as (each, a ~~result of such action, whether through judgment or settlement, the Parties~~ “Potential Infringement”). The Coordinating Committee shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then ~~any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable,~~ meet as soon as reasonably practicable ~~upon receipt of the Damages~~to discuss such Potential Infringement. ~~11.2.8 If either Party becomes aware of a patent or patent application that~~(b) In the event both NDCHealth and Arclight elect to take action to prevent such Potential Infringement and to prosecute the Person(s) responsible therefor, ~~when issued, might provide a basis for a Third Party argument that its valid rights are being infringed~~ then the parties shall cooperate in good faith with respect thereto and share equally the costs thereof and all recoveries therefrom (except to the extent otherwise agreed by the ~~manufacture~~parties). (c) In the event Arclight, ~~use or sale of~~ but not NDCHealth, elects to take action to prevent such Potential Infringement and to prosecute the ~~Products hereunder~~Person(s) responsible therefor, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license all costs thereof shall be borne by Arclight, and all recoveries therefrom shall be the ~~Parties~~sole and exclusive property of Arclight. If NDCHealth shall, upon the ~~Executive Committee can~~request of and at the cost of Arclight, assist Arclight to the extent reasonably necessary in any action taken pursuant to this Section 2.9(c). (d) In the event NDCHealth, but not ~~agree with regard~~ Arclight, elects to take action to prevent such Potential Infringement and to prosecute the Person(s) responsible therefor, then all costs thereof shall be borne by NDCHealth, and all recoveries therefrom shall be the sole and exclusive property of NDCHealth. Arclight shall, upon the request of and at the cost of NDCHealth, assist NDCHealth to the extent reasonably necessary in any ~~responsibility~~ action taken pursuant to this Section 2.9(d). Notwithstanding the foregoing, NDCHealth shall not take any action pursuant to this Section 2.9(d) unless and until it delivers to Arclight written advice of outside counsel that the Potential Infringement is reasonably likely to materially impair NDCHealth’s rights under this Agreement. (e) Notwithstanding anything to the contrary set forth in this Section 2.9, NDCHealth shall not settle any suits or actions in any matter relating to a Potential Infringement or any of the ~~preceding sentence~~Licensed Items without obtaining the prior written consent of Arclight, ~~such issue~~ which consent shall not be ~~determined by arbitration~~ unreasonably withheld or delayed. Arclight shall not settle any suits or actions in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934any manner relating to a Potential Infringement or any of the Licensed Items without the prior written consent of NDCHealth, ~~AS AMENDED. 31 --------------------------------------------------------------------------------~~which consent shall not be unreasonably withheld or delayed.

Appears in 1 contract

Sources: Exclusive License Agreement (Ndchealth Corp)

Infringement. 11.2.1 Par and Advancis shall inform each other promptly in writing of any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof. 11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis maySection 8.1 CONTROL DEVICES is empowered, at its sole ~~option~~ option: (a) To bring suit in its own name or, if required by law, jointly with HEGYI, at CONTROL DEVICE▇' ▇▇n expense and ~~expense~~on CONTROL DEVICES' own behalf, ~~prosecute the~~ for infringement of the Licensed Patents; (b) In any ~~Advancis Patent Rights~~such suit, ~~Advancis Know~~to enjoin infringement and to collect for CONTROL DEVICES' benefit all damages, profits, and awards of whatever nature recoverable for such infringement; and (c) To settle any claim or suit for infringement of the Licensed Patents. Notwithstanding any other provision of this License Agreement, in any such suit CONTROL DEVICES is entitled to recover CONTROL DEVICES' expenses before HEGYI is entitled to any ▇▇▇▇lty payments. HEGYI shall be entitled ▇▇ ▇▇yalty payments for such infringement but such payments shall be limited to twenty-~~How or Program Developments. 29 --------------------------------------------------------------------------------~~five percent (25%) of any excess of CONTROL DEVICES' recoveries over CONTROL DEVICES' expenses. ~~11.2.3~~ Section 8.2 In the event HEGYI shall bring to the ▇▇▇▇ntion of CONTROL DEVICES any unlicensed infringement of the Licensed Patents and shall furnish CONTROL DEVICES with a written opinion by a registered patent attorney that ~~a Third Party infringes Advancis Patent Rights~~such infringement exists, ~~Advancis Know-How or Program Developments owned by Advancis by manufacture~~and CONTROL DEVICES shall not, ~~sale or use~~ within three (3) months: (a) secure cessation of the infringement; or (b) enter suit against the infringer; or (c) provide evidence of the pendency of a ~~Product in~~ bona fide negotiation for the ~~Territory (~~acceptance by the infringer of a ~~"PRODUCT INFRINGEMENT"),~~ sublicense under the Licensed Patents; then ~~the Parties~~ HEGYI shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shallthereafter h▇▇▇ ▇he right, at ~~the request of Advancis, provide reasonable cooperation and~~his sole option, to terminate the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense exclusive license granted herein by notifying CONTROL DEVICES of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party termination in writing~~. Advancis shall assume the defense of such suit,~~ ; provided, however, that ~~if Par is also~~ CONTROL DEVICES shall not be obligated to enter suit against more than one infringer at a ~~defendant~~ time. Upon termination of CONTROL DEVICES' exclusive license, CONTROL DEVICES shall retain a license on the same terms as set forth in ~~such action~~ this License Agreement except that (1) the license shall be non-exclusive and ~~Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par~~ HEGYI shall have the ~~right~~ rig▇▇ ▇▇ license third parties under the Licensed Patents, (2) CONTROL DEVICES' license shall be limited to ~~select separate counsel~~ making and selling Royalty Products for customers to whom CONTROL DEVICES is contractually obligated to sell Royalty Products as of the date of termination or to whom CONTROL DEVICES has previously Sold commercial quantities of Royalty Products, and (3) CONTROL DEVICES shall not thereafter be able to grant any further sublicenses. Upon such termination, HEGYI may at his option ▇▇▇▇ suit for the infringement, and any such suit shall be HEGYI's own expense, and ▇▇▇▇▇ shall collect for ▇▇▇ ▇enefit all damages, profits, and awards of whatever nature which are recoverable for such infringement. Provided that CONTROL DEVICES has no legitimate reason to refrain from cooperation, CONTROL DEVICES agrees to cooperate with HEGYI in such suit by (1) ▇▇▇igning to HEGYI CONTROL DEVICES' d▇▇▇▇▇ claim for past damages incurred up to the time of termination, (2) providing HEGYI with information a▇▇ ▇▇cuments reasonably needed by HEGYI to prosecute such ▇▇▇▇▇it, and (3) making CONTROL DEVICES employees reasonably available to HEGYI as witnesses (or o▇▇▇▇ similar uses) up to a maximum of fifteen (15) workdays. CONTROL DEVICES shall participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any ~~such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or~~ settlement, verdict, or finding in favor of HEGYI as follows: (▇) ▇ctual costs other than legal fees incurred by HEGYI and CONTROL DEVICE▇ ▇▇▇ll be returned to both parties in full, or prorated equally if costs cannot be reimbursed in full, then (2) the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be ~~shared by the Parties equally, with such share of the Damages to be paid~~ divided in proportion to the ~~other~~ time spent by each party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument except that ~~its valid rights are being infringed~~ HEGYI's time shall be mu▇▇▇▇▇▇▇d by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, two (2) ~~appoint a negotiator~~ to ~~negotiate~~ reflect the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------higher cost for his time.

Appears in 1 contract

Sources: License Agreement (Control Devices Inc)

Infringement. ~~11.2.1 Par and Advancis~~ 9.1 Each party shall inform ~~each~~ the other promptly in writing of any alleged ~~or suspected~~ infringement of the Patent Rights by a ~~Third Party~~ third party of ~~any of Advancis Patent Rights, Advancis Know-How or Program Developments,~~ which it becomes aware and of any available evidence thereof. ~~11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may~~9.2 Licensee, at its ~~sole option and~~ expense, ~~prosecute~~ will have first right to enforce Patent Rights against infringement by third parties. Licensee may, for such purposes, use the name of Northwestern as party plaintiff; 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. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of Northwestern, which consent shall not be unreasonably withheld, delayed or conditioned. Licensee shall indemnify Northwestern against any order for costs that may be made against Northwestern in such proceedings. 9.3 If Licensee recovers any damages or other sums in such action, suit or proceeding, or in settlement thereof, such damages or other sums recovered shall first be applied to all out-of-pocket costs and expenses incurred by Licensee and by Northwestern in connection therewith, including, with limitation, attorneys fees. If after such reimbursement any funds shall remain from such damages or other sums recovered, such funds shall be retained by Licensee; provided, however, that Northwestern shall receive out of any ~~Advancis~~ such remaining recovery received by Licensee an amount as follows: (i) as to ordinary damages, Northwestern shall receive payment equivalent to payments that would have been due to Northwestern as royalties under Exhibit C, Section 4 had the infringing sales that Catalyst lost to the infringer been made by Catalyst, and (ii) as to special or punitive damages, Northwestern shall receive payment equivalent to payments that would have been due to Northwestern as Sublicensing Revenue Share as specified under Exhibit C, Section 5. 9.4 If Licensee does not file suit against an infringer of Patent ~~Rights~~Rights within 6 months of knowledge thereof, ~~Advancis Know-How or Program Developments. 29 -------------------------------------------------------------------------------- 11.2.3 In~~ during the ~~event that a Third Party infringes Advancis~~ term of this Agreement, Northwestern shall have the right, but shall not be obligated, to prosecute at its own expense all infringements of the Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation Rights and, ~~to the extent possible~~in furtherance of such right, ~~have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis~~ Licensee hereby agrees that Northwestern may ~~join Par~~ include Licensee as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of party plaintiff in such suit, ~~whether through judgment or settlement, shall first be used~~ without expense to ~~reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share~~ Licensee. The total cost of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement ~~suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How~~ action commenced or ~~Program Developments owned~~ defended solely by ~~Advancis, Advancis shall, at the request~~ Northwestern shall be borne by Northwestern and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis Northwestern shall ~~execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and~~ keep any recovery or damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancisfor past infringement derived therefrom. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 9.5 In the event that a declaratory judgment action alleging invalidity or ~~non-infringement~~ noninfringement of any ~~Advancis~~ of the Patent ~~Rights, Advancis Know-How or Program Developments~~ Rights shall be brought against ~~Advancis and/or Par~~Licensee, ~~Advancis~~Northwestern, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within ~~[***]~~ thirty (30) days after it receives notice of the commencement of such action, to intervene and take over the sole defense of the action at its own expense. . 9.6 In any infringement suit that either Party may institute to enforce the ~~event that Advancis does not so elect~~ Patent Rights pursuant to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlementthis Agreement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other ~~party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third~~ party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party hereto shall, at the ~~other's request, provide to it reasonable assistance~~ request and ~~cooperation with respect to any~~ expense of the Party initiating such suit~~. To~~ , cooperate with all reasonable requests of the other Party, including, to the extent ~~that any Damages become payable to any third party as a result of such action~~reasonably possible, ~~whether through judgment or settlement~~having its employees testify when requested and making available relevant records, ~~the Parties shall bear such Damages equally~~papers, ~~and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action~~information, ~~whether through judgment or settlement~~samples, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent applicationspecimens, and the ~~Parties~~ like. 9.7 Licensee, during the term of this Agreement, shall ~~cooperate~~ have the sole right in accordance with ~~each other so that each Party can determine whether valid rights of a third party are likely~~ the terms and conditions herein to ~~be infringed by the manufacture,~~ sublicense any alleged infringer for future use ~~or sale~~ of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms Patent Rights. Any consideration received as part of such a ~~license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license~~ sublicense shall be ~~borne by the Parties. If the Executive Committee cannot agree with regard~~ treated as Sublicensing Revenue pursuant to ~~any responsibility set forth in the preceding sentence~~Exhibit C, ~~such issue shall be determined by arbitration in accordance with~~ Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------5.

Appears in 1 contract

Sources: License Agreement (Catalyst Pharmaceutical Partners, Inc.)

Infringement. ~~11.2.1 Par and Advancis shall inform each other promptly in writing~~ (a) If any of ~~any alleged or suspected infringement~~ the IXSYS PATENTS under which MEDIMMUNE is licensed hereunder is infringed by the sale by a ~~Third Party~~ THIRD PARTY of ~~any~~ a PRODUCT, subject to the provisions of ~~Advancis Patent Rights~~the IXSYS LICENSE AGREEMENTS, ~~Advancis Know-How or Program Developments,~~ MEDIMMUNE shall have the right and ~~of any available evidence thereof. 11.2.2 Subject~~ option but not the obligation to ~~Sections 11.2.3 and 11.2.4, Advancis may~~bring an action for such infringement, at its sole ~~option and~~ expense, ~~prosecute~~ against such THIRD PARTY in the ~~infringement~~ name of IXSYS and/or in the name of MEDIMMUNE and/or in the name of a licensor of IXSYS, as the case may be, and to join IXSYS or its licensor as a party plaintiff if required. MEDIMMUNE shall promptly notify IXSYS of any ~~Advancis Patent Rights~~such infringement and shall keep IXSYS informed as to the prosecution of any action for such infringement. No settlement, ~~Advancis Know-How~~ consent judgment or ~~Program Developments. 29 --------------------------------------------------------------------------------~~other voluntary final disposition of the suit which adversely affects IXSYS PATENTS may be entered into without the consent of IXSYS, which consent shall not unreasonably be withheld. ~~11.2.3~~ (b) In the event that ~~a Third Party infringes Advancis Patent Rights~~MEDIMMUNE shall undertake the enforcement under Section 7.1(a) of the IXSYS PATENTS by litigation, ~~Advancis Know-How or Program Developments owned~~ subject to the provisions of the IXSYS LICENSE AGREEMENTS, any recovery of damages by ~~Advancis~~ MEDIMMUNE for any such suit shall be applied first pro rata in satisfaction of any unreimbursed out of pocket expenses and legal fees of MEDIMMUNE regarding such suit. The balance remaining from any such recovery shall be divided between MEDIMMUNE and IXSYS, as follows (i) for that portion, if any, based on lost profits, IXSYS shall recover the royalty IXSYS would have received under this Agreement if such sales had been made by ~~manufacture~~MEDIMMUNE; and (ii) for any other recovery, ~~sale or use~~ IXSYS shall receive (CONFIDENTIAL TREATMENT REQUESTED) of the remaining amount. 7.2 In the event that MEDIMMUNE elects not to pursue an action for infringement, upon written notice to IXSYS by MEDIMMUNE that an unlicensed THIRD PARTY is an infringer of a ~~Product in~~ VALID PATENT CLAIM of IXSYS PATENTS licensed to MEDIMMUNE, IXSYS shall have the ~~Territory (a "PRODUCT INFRINGEMENT")~~right and option, ~~then~~ but not the ~~Parties shall discuss whether or not~~ obligation at its cost and expense to initiate infringement litigation and to retain any recovered damages. 7.3 In any infringement suit either party may institute ~~an infringement action with respect~~ to ~~such Product Infringement. If~~ enforce the ~~Parties agree~~ IXSYS PATENTS pursuant to ~~institute such a suit~~this Agreement, ~~then Advancis shall institute and control such suit including~~ the ~~settlement or compromise thereof. Par~~ other party hereto shall, at the request of ~~Advancis~~the party initiating such suit, ~~provide reasonable cooperation~~ reasonably cooperate and, to the extent reasonably possible, have its employees testify when requested and make available relevant records, papers, information, ~~Samples~~samples, ~~specimens~~ specimens, and the like. ~~Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The cost and expense of such suit~~ All reasonable out-of-pocket costs incurred in connection with rendering cooperation requested hereunder shall be ~~shared~~ paid by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damagesparty requesting cooperation. 11.2.4 In the event that only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis. 11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise. 11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the right to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the extent that any Damages become payable to any third party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages. 11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other so that each Party can determine whether valid rights of a third party are likely to be infringed by the manufacture, use or sale of the Products hereunder. 11.2.9 If either Party believes that a license from a third party is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such a license shall be borne by the Parties. If the Executive Committee cannot agree with regard to any responsibility set forth in the preceding sentence, such issue shall be determined by arbitration in accordance with Section 17.2.2. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 31 --------------------------------------------------------------------------------

Appears in 1 contract

Sources: License Agreement (Medimmune Inc /De)

Common use of Infringement Clause in Contracts