Common use of Initiating Enforcement Actions Clause in Contracts

Initiating Enforcement Actions. Reckitt shall have the first right, at its own expense, to bring an action to enforce any applicable [***] against a Potentially Infringing Product; provided that if the relevant [***] obtain XenoPort’s consent to enforce [***], which consent shall not be unreasonably withheld. For clarity, Reckitt shall only have the right to enforce [***] against a Potentially Infringing Product with XenoPort’s consent. XenoPort shall have the right, at its own expense, to participate in any such action by Reckitt against a Potentially Infringing Product with counsel of its own choice, subject to Reckitt’s control of such action. If Reckitt does not initiate such an enforcement action [***], then XenoPort shall have the right, but not the obligation, to initiate infringement proceedings or take other appropriate action against a Potentially Infringing Product, at its own expense and under its sole control; provided however that in the situation where the Potentially Infringing Product is the subject of a paragraph IV certification under the Hatch Waxman statute, 21 U.S.C. § 355(b)(2)(A) or 355(j)(2)(A)(vii)(IV), or their successor provisions (“Paragraph IV Certification”), Reckitt shall notify XenoPort whether Reckitt elects to not initiate an infringement suit in response to such a Paragraph IV Certification [***] so that XenoPort may, but shall not be required to, initiate and exercise sole control over such an infringement action. The Party conducting such action under this Section 9.3.2 shall have full control over the conduct of such action, including settlement thereof; provided, however, that the Party conducting such action may not settle any such action, or make any admissions or assert any position in such action, in a manner that would materially adversely affect the rights or interests of the other Party (including by making any admission or assertion of any position that would materially adversely affect the validity, enforceability or scope of any XenoPort Patent or [***]), without the prior written consent of the other Party, which shall not be unreasonably withheld or delayed. In any event, the Parties shall assist one another and cooperate in a timely manner in any such action at the other’s reasonable request. For the avoidance of doubt, Reckitt shall not have any rights to enforce or otherwise assert any XenoPort Patent against any person or entity with respect to any activity other than the manufacture, use or sale of a Potentially Infringing Product.

Initiating Enforcement Actions. Reckitt Angioblast shall have the first rightinitial right (but not the obligation), at its own expense, to bring enforce the Angioblast Patents against any infringement of any Angioblast Patents with respect to the manufacture, sale or use within the Territory of a product for use in the Field (an “Infringing Product”), or to defend any declaratory judgment action arising from such infringement, within the Territory (for purposes of this Section 9.3, an “Enforcement Action”) provided, however, that Cephalon may participate in such Enforcement Action at its own expense. In the event that Angioblast fails to enforce any applicable initiate an Enforcement Action under this Section 9.3(b) within [***] days in accordance with the Patient Protection and Affordable Care Act of a request by Cephalon to initiate such Enforcement Action in other circumstances, Cephalon may initiate an Enforcement Action against a Potentially Infringing Product; provided that if the relevant [***] obtain XenoPort’s consent to enforce [***], which consent shall not be unreasonably withheld. For clarity, Reckitt shall only have the right to enforce [***] against a Potentially Infringing Product with XenoPort’s consent. XenoPort shall have the rightsuch infringement, at its own expense, with Angioblast’s consent, not to participate in any such action by Reckitt against a Potentially Infringing Product with counsel of its own choicebe unreasonably withheld, subject to Reckitt’s control of such actionconditioned or delayed. If Reckitt does not initiate such an enforcement action [***]For clarity, then XenoPort shall have the right, but not the obligation, to initiate infringement proceedings or take other appropriate action against a Potentially Infringing Product, at its own expense and under its sole control; provided however that in the situation where the Potentially Infringing Product is the subject of a paragraph IV certification under the Hatch Waxman statute, 21 U.S.C. § 355(b)(2)(A) or 355(j)(2)(A)(vii)(IV), or their successor provisions (“Paragraph IV Certification”), Reckitt shall notify XenoPort whether Reckitt elects to not initiate an infringement suit in response to such a Paragraph IV Certification [***] so that XenoPort may, but shall it will not be required tounreasonable for Angioblast to withhold such consent if such Enforcement Action could likely result in such Angioblast Patent being held unpatentable or unenforceable. In such case, initiate Angioblast shall cooperate in such Enforcement Action at Cephalon’s expense. In any event, each Party agrees to keep the other Party hereto reasonably informed of all material developments in connection with any Enforcement Action and exercise sole control over each Party may provide input and comments related to the strategy for any Enforcement Action and the other Party shall consider such an infringement actioninput and comments in good faith. The Each Party conducting such action under this Section 9.3.2 shall have full control over the conduct of such action, including settlement thereof; provided, however, that the Party conducting such action may agrees not to settle any such actionEnforcement Action, or make any admissions or assert any position in such actionany Enforcement Action, in a manner that would materially adversely have a material adverse affect on the other Party’s rights or interests of the other Party (including by making in any admission or assertion of any position that would materially adversely affect the validity, enforceability or scope of any XenoPort Angioblast Patent or [***])Product for use in the Field in the Territory, without the prior written consent of the other Party, which shall not be unreasonably withheld withheld, conditioned or delayed. In any event, the Parties shall assist one another and cooperate in a timely manner in any such action at the other’s reasonable requestTHIS EXHIBIT HAS BEEN REDACTED AND IS THE SUBJECT OF A CONFIDENTIAL TREATMENT REQUEST. For the avoidance of doubt, Reckitt shall not have any rights to enforce or otherwise assert any XenoPort Patent against any person or entity with respect to any activity other than the manufacture, use or sale of a Potentially Infringing ProductREDACTED MATERIAL IS MARKED WITH [* * *] AND HAS BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.

Initiating Enforcement Actions. Reckitt shall have GSK has the first rightright to initiate infringement proceedings or take other appropriate actions against an Infringement in the Territory. If Applicable Law in the Territory does not permit an exclusive licensee to initiate such actions (i.e., at its own expensesuch action may only be initiated by the owner of the patent being infringed), to bring an action to enforce any applicable [***] against a Potentially Infringing Product; provided that if the relevant [***] obtain XenoPort’s consent to enforce [***], which consent shall not be unreasonably withheld. For clarity, Reckitt shall only GSK would have the right to enforce [***] against a Potentially Infringing Product with XenoPort’s consent. insist that XenoPort shall have the right, at its own expense, to participate in any initiates such action by Reckitt against a Potentially Infringing Product with counsel of its own choice, subject to Reckitton GSK’s control of such actionbehalf and at GSK’s expense. If Reckitt GSK does not initiate such an enforcement proceedings or take other appropriate action within [***]… * …] of receipt of a request by XenoPort to do so, then XenoPort shall have the right, but not the obligation, be entitled to initiate infringement proceedings or take other appropriate action against a Potentially Infringing Product, an Infringement at its own expense and under its sole control; provided however that in the situation where the Potentially Infringing Product is the subject of a paragraph IV certification under the Hatch Waxman statute, 21 U.S.C. § 355(b)(2)(A) or 355(j)(2)(A)(vii)(IV), or their successor provisions (“Paragraph IV Certification”), Reckitt shall notify XenoPort whether Reckitt elects to not initiate an infringement suit in response to such a Paragraph IV Certification [***] so that XenoPort may, but shall not be required to, initiate and exercise sole control over such an infringement actionexpense. The Party conducting such action under this Section 9.3.2 shall have full control over the conduct of such action, including settlement thereof; provided, however, that the Party conducting such action may not settle any such action, or make any admissions or assert any position in such action, in a manner that would materially adversely affect the rights or interests of the other Party (including by making any admission or assertion of any position position, that would materially adversely affect the validity, enforceability or scope of any XenoPort Patent within or [***]outside the Territory), without the prior written consent of the other Party, which shall not be * CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, IS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED unreasonably withheld or delayed. The Party conducting such action (except in the case of XenoPort, where XenoPort conducts such action at the request of GSK) will [… * …]. In any event, the Parties shall assist one another and cooperate in a timely manner in any such action at the other’s reasonable request. For the avoidance of doubt, Reckitt shall not have any rights to enforce or otherwise assert any XenoPort Patent against any person or entity with respect to any activity other than the manufacture, use or sale of a Potentially Infringing Product.

Initiating Enforcement Actions. Reckitt shall have the first right, at its own expense, to bring an action to enforce any applicable [***[ * ] against a Potentially Infringing Product; provided that if the relevant [***[ * ] obtain XenoPort’s consent to enforce [***[ * ], which consent shall not be unreasonably withheld. For clarity, Reckitt shall only have the right to enforce [***[ * ] against a Potentially Infringing Product with XenoPort’s consent. XenoPort shall have the right, at its own expense, to participate in any such action by Reckitt against a Potentially Infringing Product with counsel of its own choice, subject to Reckitt’s control of such action. If Reckitt does not initiate such an enforcement action [***[ * ], then XenoPort shall have the right, but not the obligation, to initiate infringement proceedings or take other appropriate action against a Potentially Infringing Product, at its own expense and under its sole control; provided however that in the situation where the Potentially Infringing Product is the subject of a paragraph IV certification under the Hatch Waxman statute, 21 U.S.C. § 355(b)(2)(A) or 355(j)(2)(A)(vii)(IV), or their successor provisions (“Paragraph IV Certification”), Reckitt shall notify XenoPort whether Reckitt elects to not initiate an infringement suit in response to such a Paragraph IV Certification [***[ * ] so that XenoPort may, but shall not be required to, initiate and exercise sole control over such an infringement action. The Party conducting such action under this Section 9.3.2 shall have full control over the conduct of such action, including settlement thereof; provided, however, that the Party conducting such action may not settle any such action, or make any admissions or assert any position in such action, in a manner that would materially adversely affect the rights or interests of the other Party (including by making any admission or assertion of any position that would materially adversely affect the validity, enforceability or scope of any XenoPort Patent or [***[ * ]), without the prior written consent of the other Party, which shall not be unreasonably withheld or delayed. In any event, the Parties shall assist one another and cooperate in a timely manner in any such action at the other’s reasonable request. For the avoidance of doubt, Reckitt shall not have any rights to enforce or otherwise assert any XenoPort Patent against any person or entity with respect to any activity other than the manufacture, use or sale of a Potentially Infringing Product.

Initiating Enforcement Actions. Reckitt shall have In the first rightevent that, at its own expense, [ * ] XenoPort fails to bring initiate an action Enforcement Action to enforce any applicable [***the XenoPort Patents against [ * ] against infringement by a Potentially Third Party in the Territory, which infringement consists of the manufacture, sale or use of an Infringing Product; provided that if Product in the relevant [***] obtain XenoPort’s consent to enforce [***Field in the Territory, [ * ], which consent shall not be unreasonably withheld. For clarity, Reckitt shall only have the right to enforce [***] DRL may initiate an Enforcement Action against a Potentially Infringing Product with XenoPort’s consent. XenoPort shall have the right, at its own expense, to participate in any such action by Reckitt against a Potentially Infringing Product with counsel of its own choice, subject to Reckitt’s control of such action. If Reckitt does not initiate such an enforcement action [***infringement [ * ], then XenoPort shall have the right, but not the obligation, to initiate infringement proceedings or take other appropriate action against a Potentially Infringing Product, at its own expense and under its sole control; provided however that in if the situation where the Potentially Infringing Product is the subject of a paragraph IV certification under the Hatch Waxman statute, 21 U.S.C. § 355(b)(2)(A§355(j)(2)(A)(vii)(IV) or 355(j)(2)(A)(vii)(IV), or their any successor provisions provision thereto (“Paragraph IV Certification”), Reckitt XenoPort shall notify [ * ] initiate such Enforcement Action; provided further that if any applicable XenoPort whether Reckitt elects Patent contains claims directed to not initiate an infringement suit subject matter other than the Compound or Product, or a method of use or manufacture of the Compound or a Product, DRL shall [ * ]. [ * ] XenoPort shall cooperate in response such Enforcement Action [ * ]. DRL shall keep XenoPort [ * ] informed of the progress of any such Enforcement Action. XenoPort shall, [ * ] have the right to join in as a party plaintiff and to give [ * ] assistance to such a Paragraph IV Certification [***] so that XenoPort may, but shall Enforcement Action. DRL agrees not be required to, initiate and exercise sole control over such an infringement action. The Party conducting such action under this Section 9.3.2 shall have full control over the conduct of such action, including settlement thereof; provided, however, that the Party conducting such action may not to settle any such actionEnforcement Action, or make any admissions or assert any [ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, IS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. position in such actionEnforcement Action, in a manner that would materially adversely affect the rights or interests of the other Party (including by making any admission or assertion of any position that would materially adversely affect the validity, enforceability or scope of any XenoPort Patent Patents or [***]), without any Patents controlled by XenoPort relating to the prior written consent Compound or Product (or any method of use or manufacture of any of the other Party, which shall not be unreasonably withheld or delayed. In any event, foregoing) outside the Parties shall assist one another and cooperate in a timely manner in any such action at the other’s reasonable request. For the avoidance of doubt, Reckitt shall not have any rights to enforce or otherwise assert any XenoPort Patent against any person or entity with respect to any activity other than the manufacture, use or sale of a Potentially Infringing ProductTerritory [ * ].

Initiating Enforcement Actions. Reckitt Angioblast shall have the first rightinitial right (but not the obligation), at its own expense, to bring enforce the Angioblast Patents against any infringement of any Angioblast Patents with respect to the manufacture, sale or use within the Territory of a product for use in the Field (an action to enforce any applicable [***] against a Potentially “Infringing Product; provided ”), or to defend any declaratory judgment action arising from such infringement, within the Territory (for purposes of this Section 9.3, an “Enforcement Action”) provided, however, that if Cephalon may participate in such Enforcement Action at its own expense. In the relevant [***] obtain XenoPort’s consent event that Angioblast fails to enforce [***]initiate an Enforcement Action under this Section 9.3(b) within ninety (90) days in accordance with the Patient Protection and Affordable Care Act of a request by Cephalon to initiate such Enforcement Action in other circumstances, which consent shall not be unreasonably withheld. For clarity, Reckitt shall only have the right to enforce [***] Cephalon may initiate an Enforcement Action against a Potentially Infringing Product with XenoPort’s consent. XenoPort shall have the rightsuch infringement, at its own expense, with Angioblast’s consent, not to participate in any such action by Reckitt against a Potentially Infringing Product with counsel of its own choicebe unreasonably withheld, subject to Reckitt’s control of such actionconditioned or delayed. If Reckitt does not initiate such an enforcement action [***]For clarity, then XenoPort shall have the right, but not the obligation, to initiate infringement proceedings or take other appropriate action against a Potentially Infringing Product, at its own expense and under its sole control; provided however that in the situation where the Potentially Infringing Product is the subject of a paragraph IV certification under the Hatch Waxman statute, 21 U.S.C. § 355(b)(2)(A) or 355(j)(2)(A)(vii)(IV), or their successor provisions (“Paragraph IV Certification”), Reckitt shall notify XenoPort whether Reckitt elects to not initiate an infringement suit in response to such a Paragraph IV Certification [***] so that XenoPort may, but shall it will not be required tounreasonable for Angioblast to withhold such consent if such Enforcement Action could likely result in such Angioblast Patent being held unpatentable or unenforceable. In such case, initiate Angioblast shall cooperate in such Enforcement Action at Cephalon’s expense. In any event, each Party agrees to keep the other Party hereto reasonably informed of all material developments in connection with any Enforcement Action and exercise sole control over each Party may provide input and comments related to the strategy for any Enforcement Action and the other Party shall consider such an infringement actioninput and comments in good faith. The Each Party conducting such action under this Section 9.3.2 shall have full control over the conduct of such action, including settlement thereof; provided, however, that the Party conducting such action may agrees not to settle any such actionEnforcement Action, or make any admissions or assert any position in such actionany Enforcement Action, in a manner that would materially adversely have a material adverse affect on the other Party’s rights or interests of the other Party (including by making in any admission or assertion of any position that would materially adversely affect the validity, enforceability or scope of any XenoPort Angioblast Patent or [***])Product for use in the Field in the Territory, without the prior written consent of the other Party, which shall not be unreasonably withheld withheld, conditioned or delayed. In any event, the Parties shall assist one another and cooperate in a timely manner in any such action at the other’s reasonable request. For the avoidance of doubt, Reckitt shall not have any rights to enforce or otherwise assert any XenoPort Patent against any person or entity with respect to any activity other than the manufacture, use or sale of a Potentially Infringing Product.

Initiating Enforcement Actions. Reckitt Angioblast shall have the first rightinitial right (but not the obligation), at its own expense, to bring enforce the Angioblast Patents against any infringement of any Angioblast Patents with respect to the manufacture, sale or use within the Territory of a product for use in the Field (an “Infringing Product”), or to defend any declaratory judgment action arising from such infringement, within the Territory (for purposes of this Section 9.3, an “Enforcement Action”) provided, however, that Cephalon may participate in such Enforcement Action at its own expense. In the event that Angioblast fails to enforce any applicable initiate an Enforcement Action under this Section 9.3(b) within [***] days in accordance with the Patient Protection and Affordable Care Act of a request by Cephalon to initiate such Enforcement Action in other circumstances, Cephalon may initiate an Enforcement Action against a Potentially Infringing Product; provided that if the relevant [***] obtain XenoPort’s consent to enforce [***], which consent shall not be unreasonably withheld. For clarity, Reckitt shall only have the right to enforce [***] against a Potentially Infringing Product with XenoPort’s consent. XenoPort shall have the rightsuch infringement, at its own expense, with Angioblast’s consent, not to participate be unreasonably withheld, conditioned or delayed. For clarity, it will not be unreasonable for Angioblast to withhold such consent if such Enforcement Action could likely result in such Angioblast Patent being held unpatentable or unenforceable. In such case, Angioblast shall cooperate in such Enforcement Action at Cephalon’s expense. In any such action by Reckitt against a Potentially Infringing Product event, each Party agrees to ** Portions of the Exhibit have been omitted and have been filed separately pursuant to an application for confidential treatment filed with counsel of its own choice, subject the Securities and Exchange Commission pursuant to Reckitt’s control of such action. If Reckitt does not initiate such an enforcement action [***], then XenoPort shall have the right, but not the obligation, to initiate infringement proceedings or take other appropriate action against a Potentially Infringing Product, at its own expense and under its sole control; provided however that in the situation where the Potentially Infringing Product is the subject of a paragraph IV certification Rule 24b-2 under the Hatch Waxman statuteSecurities Exchange Act of 1934, 21 U.S.C. § 355(b)(2)(A) or 355(j)(2)(A)(vii)(IV), or their successor provisions (“Paragraph IV Certification”), Reckitt as amended. keep the other Party hereto reasonably informed of all material developments in connection with any Enforcement Action and each Party may provide input and comments related to the strategy for any Enforcement Action and the other Party shall notify XenoPort whether Reckitt elects consider such input and comments in good faith. Each Party agrees not to not initiate an infringement suit in response to such a Paragraph IV Certification [***] so that XenoPort may, but shall not be required to, initiate and exercise sole control over such an infringement action. The Party conducting such action under this Section 9.3.2 shall have full control over the conduct of such action, including settlement thereof; provided, however, that the Party conducting such action may not settle any such actionEnforcement Action, or make any admissions or assert any position in such actionany Enforcement Action, in a manner that would materially adversely have a material adverse affect on the other Party’s rights or interests of the other Party (including by making in any admission or assertion of any position that would materially adversely affect the validity, enforceability or scope of any XenoPort Angioblast Patent or [***])Product for use in the Field in the Territory, without the prior written consent of the other Party, which shall not be unreasonably withheld withheld, conditioned or delayed. In any event, the Parties shall assist one another and cooperate in a timely manner in any such action at the other’s reasonable request. For the avoidance of doubt, Reckitt shall not have any rights to enforce or otherwise assert any XenoPort Patent against any person or entity with respect to any activity other than the manufacture, use or sale of a Potentially Infringing Product.