Intellectual Property Enforcement. 10.4.1 If either Party learns of an actual, potential or suspected, unauthorized use, misappropriation or infringement of the Aversion Patent Rights or Aversion Technology by a Third Party, including the receipt of a Paragraph IV Certification with respect to the Product (a “Third Party Infringement”), such Party shall promptly notify the other Party in writing and shall promptly provide such other Party with available evidence of such Third Party Infringement. Subject to Section 10.4.5, Section 10.4.2 sets forth the rights of the Parties to commence and prosecute an action relating to such Third Party Infringement (an “Offensive Infringement Action”). 10.4.2 During the Term and thereafter with respect to events arising during the Term, (i) Acura shall have the first right, but not the obligation, to undertake control of, and manage and prosecute, including selection of counsel (collectively, “Prosecute”), such Offensive Infringement Action, except as otherwise provided in subsection (ii) below; (ii) Egalet shall have the first right, but not the obligation, to Prosecute such Offensive Infringement Action if it is a Product-specific Offensive Infringement Action, or is in response to a Paragraph IV Certification relating to the Product; (iii) Acura, shall have the right, but not the obligation, to Prosecute any such Offensive Infringement Action for which Egalet is not undertaking the Prosecution as provided in subsection (ii) above; and (iv) Egalet shall have the right, but not the obligation, to Prosecute any Offensive Infringement Action for which Acura is not undertaking the Prosecution as provided in subsection (i) above. 10.4.3 A Party having the first right to prosecute an Offensive Infringement Action shall request a meeting to discuss whether it intends to Prosecute such action within (i) fifteen (15) days in the case of an Offensive Infringement Action relating to a Paragraph IV Certification for the Product, and (ii) within ninety (90) days after receiving such written request for other Offensive Infringement Actions. If the Party having the first right of Prosecution declines to Prosecute the action, the other Party may, by written notice to the declining Party, Prosecute such action. 10.4.4 The Prosecuting Party shall control and manage such action (including without limitation, control over the settlement of such action, provided the other Party consents to such settlement, such consent not to be unreasonably withheld, delayed or conditioned) and the other Party shall cooperate with the Prosecuting Party and join the action as required by law for subject matter jurisdiction or as reasonably requested. If the other Party joins the action it may do so at its sole cost and expense, and the Prosecuting Party shall not oppose any attempt by the other Party to join, or otherwise intervene in such action. The Parties’ shall share out-of-pocket expenses (including attorneys’ fees) solely with respect to Product-specific Offensive Infringement Actions as follows: [*****]. Any and all amounts recovered with respect to a Product-specific Offensive Infringement Action shall be applied first to reimburse the Parties for their reasonable out-of-pocket expenses (including reasonable attorneys’ fees and expenses already paid under Section 6.14(a)) in Prosecuting such Product-specific Offensive Infringement Action. If such proceeds are insufficient with respect to Product-specific Offensive Infringement Actions, then the Parties shall share such remaining out-of pocket expenses according to the sharing of such expenses for Product-specific Offensive Infringement Actions as provided above in this Section 10.4.4. Any recovery in excess of the Parties’ out-of-pocket expenses with respect to a Product-specific Offensive Infringement Action will be shared as follows: [*****]. Notwithstanding the foregoing, Acura’s consent (which shall not be unreasonably withheld, delayed or conditioned) shall be required for any settlement that entails any license, covenant not to xxx relating to, dedication to the public, admission of non-infringement, invalidity or unenforceability or abandonment of any of Acura’s intellectual property, including, without limitation, the Aversion Technology, and Egalet’s consent (which shall not be unreasonably withheld, delayed or conditioned) shall be required for any settlement that entails any license or covenant not to xxx with respect to any Third Party Infringement related to a Paragraph IV Certification with respect to the Product or other Product-specific Offensive Infringement Action, or that would otherwise grant any rights to manufacture, use, sell or otherwise commercialize [*****] or admission of non-infringement, invalidity or unenforceability or abandonment of any Product-specific Intellectual Property. 10.4.5 [*****]
Appears in 2 contracts
Samples: Collaboration and License Agreement (Egalet Corp), Collaboration and License Agreement (Acura Pharmaceuticals, Inc)
Intellectual Property Enforcement. 10.4.1 If (a) In the event that either Party learns becomes aware of an actual, any infringement or potential or suspected, unauthorized use, misappropriation or infringement of any of the Aversion Patent Rights Licensed IP, Hansoh Patents or Aversion Technology Joint Patents by a Third Party, including Party in the receipt of a Paragraph IV Certification with respect to the Product (a “Third Party Infringement”)Territory, such Party shall promptly notify the other Party in writing writing, identifying the infringer or potential infringer and shall promptly provide the infringement complained of and furnishing the information upon which such other Party with available evidence of such Third Party Infringementdetermination is based. Subject to Section 10.4.5, Section 10.4.2 sets forth the rights of the Parties to commence and prosecute an action relating to such Third Party Infringement (an “Offensive Infringement Action”).
10.4.2 During the Term and thereafter with respect to events arising during the Term,
(i) Acura Hansoh shall have the first exclusive right to enforce Hansoh Patents in the Territory, and Viela shall have the right to enforce Hansoh Patents outside the Territory. Viela shall also have the right, but not the obligation, to undertake control of, xxx such alleged infringers in the Territory in connection with the Licensed IP or Joint Patents. Viela shall consult with Hansoh prior to initiating any such infringement suit in the Territory to ensure that the intended course of action is not likely to adversely affect Hansoh’s Development and manage and prosecute, including selection Commercialization of counsel (collectively, “Prosecute”), such Offensive Infringement Action, except as otherwise provided the Licensed Product within the Territory. In the event that Viela elects not to initiate a lawsuit or take other reasonable action with respect to an infringement described in subsection (ii) below;
(ii) Egalet shall have this Section 12.4 of any Licensed Patents owned by Viela or Joint Patents in the first right, but not the obligation, to Prosecute such Offensive Infringement Action if it is a Product-specific Offensive Infringement ActionTerritory, or is in response to a Paragraph IV Certification relating to any Hansoh Patent or Joint Patent outside the Product;
(iii) AcuraTerritory, Hansoh shall have the right, but not the obligation, to Prosecute any initiate such Offensive Infringement Action suit or take such other action, after providing [***] ([***]) [***] (or [***] ([***]) [***] in the event there is a time limit) notice to Viela and giving good faith consideration to Viela’s reason(s) for which Egalet is not undertaking the Prosecution as provided in subsection (ii) above; andinitiating a suit or taking other action.
(ivb) Egalet If one Party elects to bring suit or take action under this Section 12.4 against an infringement, then the other Party shall have the right, but not prior to commencement of the obligationsuit or action, to Prosecute join any Offensive Infringement Action for which Acura is not undertaking such suit or action. Each Party shall provide to the Prosecution as provided Party enforcing any such rights under this Section 12.4 reasonable assistance in subsection (i) above.
10.4.3 A Party having the first right to prosecute an Offensive Infringement Action shall such enforcement, at such enforcing Party’s request a meeting to discuss whether it intends to Prosecute and expense, including joining such action within (i) fifteen (15) days in the case of an Offensive Infringement Action relating as a party plaintiff if required by Applicable Law to a Paragraph IV Certification for the Product, and (ii) within ninety (90) days after receiving pursue such written request for other Offensive Infringement Actionsaction. If the The enforcing Party having the first right of Prosecution declines to Prosecute the action, shall keep the other Party may, by written notice to regularly informed of the declining Party, Prosecute such action.
10.4.4 The Prosecuting Party shall control status and manage such action (including without limitation, control over the settlement progress of such actionenforcement efforts, provided shall reasonably consider the other Party’s comments on any such efforts, and shall consult the other Party consents in any important aspects of such enforcement, including determination of material litigation strategy and filing of important papers to such settlementthe competent court. Neither Party shall settle any claim, suit or action that it brought under this Section 12.4 involving Licensed IP or Joint Patents without the prior written consent of the other Party, such consent not to be unreasonably withheld, delayed or conditioned.
(c) and the other If either Party shall cooperate with the Prosecuting Party and join the action as required by law for subject matter jurisdiction or as reasonably requested. If the other Party joins the action it may do so at its sole cost and expense, and the Prosecuting Party shall not oppose any attempt by the other Party to join, or otherwise intervene in such action. The Parties’ shall share out-of-pocket expenses (including attorneys’ fees) solely with respect to Product-specific Offensive Infringement Actions as follows: [*****]. Any and all amounts recovered with respect to a Product-specific Offensive Infringement Action shall be applied first to reimburse the Parties for their reasonable out-of-pocket expenses (including reasonable attorneys’ fees and expenses already paid under Section 6.14(a)) in Prosecuting such Product-specific Offensive Infringement Action. If such proceeds are insufficient with respect to Product-specific Offensive Infringement Actions, then the Parties shall share such remaining out-of pocket expenses according to the sharing of such expenses for Product-specific Offensive Infringement Actions as provided above in this Section 10.4.4. Any recovery in excess of the Parties’ out-of-pocket expenses with respect to a Product-specific Offensive Infringement Action will be shared as follows: [*****]. Notwithstanding the foregoing, Acura’s consent (which shall not be unreasonably withheld, delayed or conditioned) shall be required for any settlement that entails any license, covenant not to xxx relating to, dedication to the public, admission of non-infringement, invalidity or unenforceability or abandonment of any of Acura’s intellectual property, including, without limitation, the Aversion Technology, and Egalet’s consent (which shall not be unreasonably withheld, delayed or conditioned) shall be required for any settlement that entails any license or covenant not to xxx with respect to recovers monetary damages from any Third Party Infringement related to in a Paragraph IV Certification suit or action brought under Section 12.4 or any royalties, milestones or other payments from a license agreement with respect a Third Party resulting from any alleged infringement of Licensed IP or Joint Patents, such recovery shall be allocated first to the Product or other Product-specific Offensive Infringement Action, or that would otherwise grant any rights to manufacture, use, sell or otherwise commercialize [*****] or admission of non-infringement, invalidity or unenforceability or abandonment reimbursement of any Product-specific Intellectual Propertyexpenses incurred by the Parties in such litigation, action or license negotiations, and any remaining amounts shall be retained by the Party bringing the suit or action; provided if such Party is Hansoh, such remaining amounts shall be included in the Net Sales in the applicable calendar year.
10.4.5 [*****]
Appears in 2 contracts
Samples: License and Collaboration Agreement (Viela Bio, Inc.), License and Collaboration Agreement (Viela Bio, Inc.)
Intellectual Property Enforcement. 10.4.1 If (a) In the event that either Party learns becomes aware of an actual, any actual or potential or suspected, unauthorized useinfringement, misappropriation or infringement other violation of any of the Aversion Patent Rights or Aversion Technology Product IP by a Third Party, including Party in the receipt of a Paragraph IV Certification with respect to the Product (a “Third Party Infringement”)Territory, such Party shall promptly notify the other Party in writing and shall promptly provide such other Party with available evidence of writing, identifying such Third Party Infringementand such infringement, misappropriation or other violation and furnishing the information upon which such determination is based. Subject to Section 10.4.5, Section 10.4.2 sets forth the rights of the Parties to commence and prosecute an action relating to such Third Party Infringement (an “Offensive Infringement Action”).
10.4.2 During the Term and thereafter with respect to events arising during the Term,
(i) Acura Alimera shall have the first right, but not the obligation, to undertake control of, and manage and prosecuteaddress such infringement as seen fit, including selection as stipulated under the Master License and including by suing such Third Party. Alimera shall consult with Ocumension prior to initiating any such suit in the Territory. In the event that Alimera elects not to initiate a lawsuit or take other reasonable action with respect to an infringement, misappropriation or other violation of counsel (collectivelyProduct IP, “Prosecute”), such Offensive Infringement Action, except as otherwise provided in subsection (ii) below;
(ii) Egalet shall have the first right, but not the obligation, to Prosecute such Offensive Infringement Action if it is a Product-specific Offensive Infringement Action, or is in response to a Paragraph IV Certification relating to the Product;
(iii) Acura, Ocumension shall have the right, but not the obligation, to Prosecute any initiate such Offensive Infringement Action suit or take such other action at Ocumension’s sole expense, after providing thirty (30) days (or five (5) days in the event there is a time limit) notice to Alimera and giving good faith consideration to Alimera’s reason(s) for which Egalet is not undertaking the Prosecution as provided in subsection (ii) above; andinitiating a suit or taking other action.
(ivb) Egalet If one Party elects to bring suit or take action under this Section 11.8 against an infringement, misappropriation or other violation, then the other Party shall have the right, but not prior to commencement of the obligationsuit or action, to Prosecute join any Offensive Infringement Action for which Acura is not undertaking such suit or action. Each Party shall provide to the Prosecution as provided Party enforcing any such rights under this Section 11.8 reasonable assistance in subsection (i) above.
10.4.3 A Party having the first right to prosecute an Offensive Infringement Action shall such enforcement, at such enforcing Party’s request a meeting to discuss whether it intends to Prosecute and expense, including joining such action within (i) fifteen (15) days in as a party plaintiff if required by Applicable Laws to pursue such action. The enforcing Party shall keep the case other Party regularly informed of an Offensive Infringement Action relating to a Paragraph IV Certification for the Productstatus and progress of such enforcement efforts, shall reasonably consider the other Party’s comments on any such efforts, and (ii) within ninety (90) days after receiving shall consult the other Party in any important aspects of such written request for other Offensive Infringement Actionsenforcement, including determination of material litigation strategy and filing of important papers to the competent court. If the other Party having the first right of Prosecution declines has joined or been joined to Prosecute the a claim, suit or action, neither Party shall settle any such claim, suit or action that it brought under this Section 11.8 involving Product IP without the prior written consent of the other Party may, by written notice to the declining Party, Prosecute such action.
10.4.4 The Prosecuting Party shall control and manage such action (including without limitation, control over the settlement of such action, provided the other Party consents to such settlement, such consent not to be unreasonably withheld, delayed or conditioned. 36
(c) If either Party recovers monetary damages from any Third Party in a suit or action brought under this Section 11.8 or any royalties, milestones or other payments from a license agreement with a Third Party resulting from any alleged infringement of Product IP in the Territory, such recovery shall be allocated first to the reimbursement of any expenses incurred by the Parties in such litigation, action or license negotiations, and any remaining amounts shall be allocated equally between the Parties, if the other Party shall cooperate with the Prosecuting Party and join the action as required by law for subject matter jurisdiction or as reasonably requested. If the other Party joins the action it may do so at its sole cost and expensehas joined, and the Prosecuting Party shall not oppose any attempt otherwise solely by the other Party to join, or otherwise intervene in such which has brought the action. The Parties’ shall share out-of-pocket expenses (including attorneys’ fees) solely with respect to Product-specific Offensive Infringement Actions as follows: [*****]. Any and all amounts recovered with respect to a Product-specific Offensive Infringement Action shall be applied first to reimburse the Parties for their reasonable out-of-pocket expenses (including reasonable attorneys’ fees and expenses already paid under Section 6.14(a)) in Prosecuting such Product-specific Offensive Infringement Action. If such proceeds are insufficient with respect to Product-specific Offensive Infringement Actions, then the Parties shall share such remaining out-of pocket expenses according to the sharing of such expenses for Product-specific Offensive Infringement Actions as provided above in this Section 10.4.4. Any recovery in excess of the Parties’ out-of-pocket expenses with respect to a Product-specific Offensive Infringement Action will be shared as follows: [*****]. Notwithstanding the foregoing, Acura’s consent (which shall not be unreasonably withheld, delayed or conditioned) shall be required for any settlement that entails any license, covenant not to xxx relating to, dedication to the public, admission of non-infringement, invalidity or unenforceability or abandonment of any of Acura’s intellectual property, including, without limitation, the Aversion Technology, and Egalet’s consent (which shall not be unreasonably withheld, delayed or conditioned) shall be required for any settlement that entails any license or covenant not to xxx with respect to any Third Party Infringement related to a Paragraph IV Certification with respect to the Product or other Product-specific Offensive Infringement Action, or that would otherwise grant any rights to manufacture, use, sell or otherwise commercialize [*****] or admission of non-infringement, invalidity or unenforceability or abandonment of any Product-specific Intellectual Property.
10.4.5 [*****]
Appears in 1 contract
Intellectual Property Enforcement. 10.4.1 If (a) In the event that either Party learns becomes aware of an actual, any infringement or potential or suspected, unauthorized use, misappropriation or infringement of any of the Aversion Patent Rights Licensed IP, Timber Patents or Aversion Technology Joint Patents by a Third Party, including the receipt of a Paragraph IV Certification with respect to the Product (a “Third Party Infringement”)in Territory A, such Party shall promptly notify the other Party in writing writing, identifying the infringer or potential infringer and shall promptly provide the infringement complained of and furnishing the information upon which such other Party with available evidence of such Third Party Infringementdetermination is based. Subject to Section 10.4.5, Section 10.4.2 sets forth the rights of the Parties to commence and prosecute an action relating to such Third Party Infringement (an “Offensive Infringement Action”).
10.4.2 During the Term and thereafter with respect to events arising during the Term,
(i) Acura Timber shall have the first right, but not exclusive right to enforce Timber Patents and the obligation, to undertake control ofLicensed IP in Territory A, and manage and prosecute, including selection of counsel (collectively, “Prosecute”), such Offensive Infringement Action, except as otherwise provided in subsection (ii) below;
(ii) Egalet shall have the first right, but not the obligation, to Prosecute such Offensive Infringement Action if it is a Product-specific Offensive Infringement Action, or is in response to a Paragraph IV Certification relating to the Product;
(iii) Acura, AFT shall have the right, but not the obligationin cooperation with and pursuant to good faith discussions with Timber, to Prosecute enforce Timber Patents (only in cases of potential infringement by a Third Party making, using (for any purpose, including research or commercial purposes), offering to sell or selling a product suspected to infringe the Licensed Product) and the Licensed IP outside Territory A. If Timber does not take enforcement action in Territory A within thirty (30) days of its submission or receipt of notice of infringement under this Section 12.4(a), then AFT may take such Offensive Infringement Action for which Egalet is not undertaking the Prosecution as provided in subsection (ii) above; andenforcement action.
(ivb) Egalet If one Party elects to bring suit or take action under this Section 12.4 against an infringement, then the other Party shall have the right, but not prior to commencement of the obligationsuit or action, to Prosecute join any Offensive Infringement Action for which Acura is not undertaking such suit or action. Each Party shall provide to the Prosecution as provided Party enforcing any such rights under this Section 12.4 reasonable assistance in subsection (i) above.
10.4.3 A Party having the first right to prosecute an Offensive Infringement Action shall such enforcement, at such enforcing Party’s request a meeting to discuss whether it intends to Prosecute and expense, including joining such action within (i) fifteen (15) days in the case of an Offensive Infringement Action relating as a party plaintiff if required by Applicable Law to a Paragraph IV Certification for the Product, and (ii) within ninety (90) days after receiving pursue such written request for other Offensive Infringement Actionsaction. If the The enforcing Party having the first right of Prosecution declines to Prosecute the action, shall keep the other Party may, by written notice to regularly informed of the declining Party, Prosecute such action.
10.4.4 The Prosecuting Party shall control status and manage such action (including without limitation, control over the settlement progress of such actionenforcement efforts, provided shall reasonably consider the other Party’s comments on any such efforts, and shall consult the other Party consents in any important aspects of such enforcement, including determination of material litigation strategy and filing of important papers to such settlementthe competent court. Neither Party shall settle any claim, suit or action that it brought under this Section 12.4 involving Licensed IP or Joint Patents without the prior written consent of the other Party, such consent not to be unreasonably withheld, delayed or conditioned) and the other Party shall cooperate with the Prosecuting Party and join the action as required by law for subject matter jurisdiction or as reasonably requested. If the other Party joins the action it may do so at its sole cost and expense, and the Prosecuting Party AFT shall not oppose settle any attempt by claim, suit or action involving Timber Patents without the other prior written consent of Timber.
(c) If either Party to join, or otherwise intervene in such action. The Parties’ shall share out-of-pocket expenses (including attorneys’ fees) solely with respect to Product-specific Offensive Infringement Actions as follows: [*****]. Any and all amounts recovered with respect to a Product-specific Offensive Infringement Action shall be applied first to reimburse the Parties for their reasonable out-of-pocket expenses (including reasonable attorneys’ fees and expenses already paid under Section 6.14(a)) in Prosecuting such Product-specific Offensive Infringement Action. If such proceeds are insufficient with respect to Product-specific Offensive Infringement Actions, then the Parties shall share such remaining out-of pocket expenses according to the sharing of such expenses for Product-specific Offensive Infringement Actions as provided above in this Section 10.4.4. Any recovery in excess of the Parties’ out-of-pocket expenses with respect to a Product-specific Offensive Infringement Action will be shared as follows: [*****]. Notwithstanding the foregoing, Acura’s consent (which shall not be unreasonably withheld, delayed or conditioned) shall be required for any settlement that entails any license, covenant not to xxx relating to, dedication to the public, admission of non-infringement, invalidity or unenforceability or abandonment of any of Acura’s intellectual property, including, without limitation, the Aversion Technology, and Egalet’s consent (which shall not be unreasonably withheld, delayed or conditioned) shall be required for any settlement that entails any license or covenant not to xxx with respect to recovers monetary damages from any Third Party Infringement related to in a Paragraph IV Certification suit or action brought under Section 12.4 or any royalties, milestones or other payments from a license agreement with respect a Third Party resulting from any alleged infringement of Licensed IP, Joint Patents or Timber Patents, such recovery shall be allocated first to the Product or other Product-specific Offensive Infringement Action, or that would otherwise grant any rights to manufacture, use, sell or otherwise commercialize [*****] or admission of non-infringement, invalidity or unenforceability or abandonment reimbursement of any Product-specific Intellectual Propertyexpenses incurred by the Parties in such litigation, action or license negotiations (first to the enforcing Party, then to the other Party), and any remaining amounts shall be retained by the Party bringing the suit or action; provided if such Party is Timber, such remaining amounts shall be included in the Net Sales in the applicable calendar year, and if such Party is AFT, such remaining amounts shall be included in Territory B Revenue Share in the applicable calendar year.
10.4.5 [*****]
Appears in 1 contract
Samples: License Agreement (BioPharmX Corp)
Intellectual Property Enforcement. 10.4.1 If either Party learns of an actual, potential or suspected, unauthorized use, misappropriation or infringement of the Aversion Patent Rights or Aversion Technology by a Third (a) Each Party, including the receipt of a Paragraph IV Certification with respect to the Product (a “Third Party Infringement”)as Licensee, such Party shall promptly notify the other Party Licensor in writing and shall promptly provide such other Party with available evidence of such Third Party Infringement. Subject to Section 10.4.5if it suspects, Section 10.4.2 sets forth the rights or otherwise becomes aware of, any Infringement of the Parties to commence and prosecute an action relating to such Licensor’s Intellectual Property Rights by any Third Party Infringement (an “Offensive Infringement Action”)Party.
10.4.2 During (b) Each Party (the Term and thereafter with respect to events arising during the Term,
(i“Enforcing Party”) Acura shall have the first sole and exclusive right, but not the obligation, to undertake control ofbring an action against any Third Party for the Infringement of its Intellectual Property Rights. The other Party shall provide the Enforcing Party with reasonable assistance in connection with any such action, at the Enforcing Party’s reasonable request and manage and prosecuteexpense, including selection assistance in gathering and sharing relevant documentation or information demonstrating such Infringement. In addition, the non-Enforcing Party will agree to join any such action as a plaintiff if required under applicable Law in order to assert or litigate such action and where the applicable Third Party is also Infringing the non-Enforcing Party’s Intellectual Property Rights; provided that the non-Enforcing Party shall not be obligated to join any such action if the non-Enforcing Party reasonably determines that joining such action would be expected to result in disproportionate adverse effects to the non-Enforcing Party’s rights or interests (including on the non-Enforcing Party’s business, operations or reputation) as compared to the benefits to Parties’ collective rights or interests. The Enforcing Party shall keep the other Party reasonably informed (as appropriate given the degree of counsel (collectivelycooperation requested and provided) of the status and progress of such enforcement efforts. Unless otherwise mutually agreed by the Parties in writing, “Prosecute”the Enforcing Party shall pay all legal fees and expenses incurred by either Party in connection with their respective performance under this Section 5.3(b), such Offensive Infringement Action, except as otherwise provided in subsection (ii) below;.
(iic) Egalet shall have the first right, but not the obligation, to Prosecute such Offensive Infringement Action if it is a Product-specific Offensive Infringement Action, or is in response to a Paragraph IV Certification relating to the Product;
(iii) Acura, shall have the right, but not the obligation, to Prosecute any such Offensive Infringement Action for which Egalet is not undertaking the Prosecution as provided in subsection (ii) above; and
(iv) Egalet shall have the right, but not the obligation, to Prosecute any Offensive Infringement Action for which Acura is not undertaking the Prosecution as provided in subsection If (i) above.
10.4.3 A Party having the first right to prosecute an Offensive Infringement Action shall request a meeting to discuss whether it intends to Prosecute such action within (i) fifteen (15) days in the case of an Offensive Infringement Action relating Parties mutually agree to a Paragraph IV Certification for the Productcost-sharing allocation with respect to legal fees and other enforcement costs pursuant to Section 5.3(b), and (ii) within ninety (90) days after receiving the Enforcing Party recovers any monetary damages from any Third Party in connection with any action commenced under this Section 5.3, or any royalties or other fees from an agreement with a Third Party arising out of its enforcement under this Section 5.3, then such written request for other Offensive Infringement Actions. If the Party having the monetary recovery shall be allocated first right of Prosecution declines to Prosecute the action, the other Party may, by written notice to the declining Party, Prosecute such action.
10.4.4 The Prosecuting Party shall control and manage reimbursement of any expenses incurred by the Parties in connection with such action (including without limitationor enforcement, control over the settlement of such action, provided the other Party consents to such settlement, such consent not to be unreasonably withheld, delayed or conditioned) and the other Party shall cooperate with the Prosecuting Party and join the action as required by law for subject matter jurisdiction or as reasonably requested. If the other Party joins the action it may do so at its sole cost and expense, and the Prosecuting Party shall not oppose any attempt by the other Party to join, or otherwise intervene in such action. The Parties’ shall share out-of-pocket expenses (including attorneys’ fees) solely with respect to Product-specific Offensive Infringement Actions as follows: [*****]. Any and all amounts recovered with respect to a Product-specific Offensive Infringement Action shall be applied first to reimburse the Parties for their reasonable out-of-pocket expenses (including reasonable attorneys’ fees and expenses already paid under Section 6.14(a)) in Prosecuting such Product-specific Offensive Infringement Action. If such proceeds are insufficient with respect to Product-specific Offensive Infringement Actions, then the Parties shall share such remaining out-of pocket expenses according to the sharing applicable allocation of such expenses for Product-specific Offensive Infringement Actions as provided above in this mutually agreed by the Parties pursuant to Section 10.4.45.3(b). Any recovery in excess of remaining amounts shall retained by the Parties’ out-of-pocket expenses with respect to a Product-specific Offensive Infringement Action will be shared as follows: [*****]. Notwithstanding the foregoing, Acura’s consent (which shall not be unreasonably withheld, delayed or conditioned) shall be required for any settlement that entails any license, covenant not to xxx relating to, dedication to the public, admission of non-infringement, invalidity or unenforceability or abandonment of any of Acura’s intellectual property, including, without limitation, the Aversion Technology, and Egalet’s consent (which shall not be unreasonably withheld, delayed or conditioned) shall be required for any settlement that entails any license or covenant not to xxx with respect to any Third Party Infringement related to a Paragraph IV Certification with respect to the Product or other Product-specific Offensive Infringement Action, or that would otherwise grant any rights to manufacture, use, sell or otherwise commercialize [*****] or admission of non-infringement, invalidity or unenforceability or abandonment of any Product-specific Intellectual PropertyEnforcing Party.
10.4.5 [*****]
Appears in 1 contract
Samples: Cross License Agreement (Alibaba Group Holding LTD)
Intellectual Property Enforcement. 10.4.1 If either Party learns of an actual, potential or suspected, unauthorized use, misappropriation or infringement of the Aversion Patent Rights or Aversion Technology by a Third Party, including the receipt With respect to Target IP for use of a Paragraph IV Certification with respect to Selected Compound in the Exclusive Product (a “Third Party Infringement”)Categories, such Party shall promptly notify the other Party in writing and shall promptly provide such other Party with available evidence of such Third Party Infringement. Subject to Section 10.4.5, Section 10.4.2 sets forth the rights of the Parties to commence and prosecute an action relating to such Third Party Infringement (an “Offensive Infringement Action”).
10.4.2 During the Term and thereafter with respect to events arising during the Term,
(i) Acura SENOMYX shall have the first right, but not the obligationobligation to commence a particular infringement action against a Third Party or take other steps to resolve such alleged infringement; provided that, if SENOMYX does not bring such action or take such other steps within [***] of receiving notice, PEPSICO, after notifying SENOMYX in writing, will be entitled to undertake control ofbring such infringement action or any other appropriate action or claim at its own expense; provided, and manage and prosecutehowever, including selection that if SENOMYX has commenced negotiations with an alleged infringer for discontinuance of counsel (collectivelysuch infringement within such [***] period, “Prosecute”)SENOMYX shall have an additional [***] to conclude its negotiations before PEPSICO may bring suit for such infringement or take other similar action. In the event PEPSICO brings such suit for infringement or takes other similar action, such Offensive Infringement Action, except as otherwise provided in subsection (ii) below;
(ii) Egalet SENOMYX shall have the first right, but not right to join in such infringement suit or similar action at its own expense (and SENOMYX will join if required by the obligation, to Prosecute such Offensive Infringement Action if it is a Product-specific Offensive Infringement Action, or is in response to a Paragraph IV Certification relating to laws of the Product;
(iii) Acura, shall have the right, but not the obligation, to Prosecute jurisdiction). In any such Offensive Infringement Action for which Egalet is not undertaking the Prosecution as provided in subsection (ii) above; and
(iv) Egalet shall have the rightaction, but not the obligation, to Prosecute any Offensive Infringement Action for which Acura is not undertaking the Prosecution as provided in subsection (i) above.
10.4.3 A Party having the first right to prosecute an Offensive Infringement Action shall request a meeting to discuss whether it intends to Prosecute both SENOMYX and PEPSICO may employ counsel of its own choice at its own expense. The party conducting such action within (i) fifteen (15) days will consider in good faith the case other party’s comments on the conduct of an Offensive Infringement Action relating such action and will have full and sole authority, information and assistance necessary to a Paragraph IV Certification for defend, hire counsel, make decisions or settle on any terms, any such suit, action or proceeding and the Productother party will in good faith execute all documents, provide pertinent records, and (ii) take all other actions, including requiring persons within ninety (90) days after receiving such written request for other Offensive Infringement Actions. If its control to give testimony, which may be reasonably required in connection with the Party having the first right of Prosecution declines to Prosecute the action, the other Party may, by written notice to the declining Party, Prosecute such action.
10.4.4 The Prosecuting Party shall control and manage such action (including without limitation, control over the defense or settlement of such actionlitigation. In the event SENOMYX brings such suit, provided SENOMYX will be entitled to retain the other Party consents entire recovery, if any. In the event PEPSICO brings such suit, any recovery will be applied first to such settlement, such consent not to be unreasonably withheld, delayed or conditioned) and the other Party shall cooperate with the Prosecuting Party and join the action as required by law for subject matter jurisdiction or as reasonably requested. If the other Party joins the action it may do so at its sole cost and expense, and the Prosecuting Party shall not oppose any attempt by the other Party to join, or otherwise intervene in such action. The Parties’ shall share out-of-pocket expenses (including attorneys’ fees) solely with respect to Product-specific Offensive Infringement Actions as follows: [***] expenses and [***]. Any and The party conducting the action will have the right to deduct all amounts recovered with respect to a Product-specific Offensive Infringement Action shall be applied first to reimburse the Parties court costs it pays for their reasonable out-of-pocket expenses (including reasonable attorneys’ fees and expenses already paid under Section 6.14(a)) in Prosecuting such Product-specific Offensive Infringement Action. If such proceeds are insufficient with respect to Product-specific Offensive Infringement Actions, then the Parties shall share such remaining out-of pocket expenses according enforcement from any recovery from any settlement or judgment that is attributable to the sharing of such expenses for Product-specific Offensive Infringement Actions as provided above in this Section 10.4.4. Any recovery in excess losses of the Parties’ out-of-pocket expenses with respect to a Product-specific Offensive Infringement Action will be shared as follows: [*****]. Notwithstanding the foregoing, Acura’s consent (which shall not be unreasonably withheld, delayed or conditioned) shall be required for any settlement that entails any license, covenant not to xxx relating to, dedication to the public, admission of non-infringement, invalidity or unenforceability or abandonment of any of Acura’s intellectual property, including, without limitation, the Aversion Technology, and Egalet’s consent (which shall not be unreasonably withheld, delayed or conditioned) shall be required for any settlement that entails any license or covenant not to xxx with respect to any Third Party Infringement related to a Paragraph IV Certification with respect to the Product or other Product-specific Offensive Infringement Action, or that would otherwise grant any rights to manufacture, use, sell or otherwise commercialize [*****] or admission of non-infringement, invalidity or unenforceability or abandonment of any Product-specific Intellectual Propertyparty under such action.
10.4.5 [*****]
Appears in 1 contract
Samples: Collaborative Research, Development, Commercialization and License Agreement (Senomyx Inc)
Intellectual Property Enforcement. 10.4.1 If either Party learns of an actual, potential or suspected, unauthorized use, misappropriation or infringement of Unless otherwise specifically agreed by the Aversion Patent Rights or Aversion Technology by a Third Party, including the receipt of a Paragraph IV Certification with respect to the Product (a “Third Party Infringement”), such Party shall promptly notify the other Party parties in writing and shall promptly provide such other Party with available evidence of such Third Party Infringement. Subject to Section 10.4.5, Section 10.4.2 sets forth the rights of the Parties to commence and prosecute an action relating to such Third Party Infringement (an “Offensive Infringement Action”).
10.4.2 During the Term and thereafter with respect to events arising during the Term,writing:
(i) Acura If either Banner or JDS suspects third party infringement of any of the Intellectual Property covering or relating to Product(s), that party shall have promptly advise the first rightother as to the facts and circumstances surrounding the suspected infringement. If Banner determines that an infringement action is commercially reasonable (taking into account the likelihood of success and relative cost/benefits), but Banner may institute an infringement action against said third party. However, should Banner decide not the obligationto bring an infringement action, JDS may request Banner to undertake control of, such infringement action using counsel of Banner’s choice (after conferring with JDS) at JDS’s expense. Banner and manage and prosecute, including selection of counsel (collectively, “Prosecute”), such Offensive Infringement Action, except as otherwise provided in subsection (iiJDS shall confer regarding strategy for any patent infringement action brought under this Section 12.4(a) below;
(ii) Egalet but Banner shall have the first right, but not the obligation, to Prosecute such Offensive Infringement Action if it is a Product-specific Offensive Infringement Action, or is in response to a Paragraph IV Certification relating to the Product;
(iii) Acura, shall have the right, but not the obligation, to Prosecute any such Offensive Infringement Action for which Egalet is not undertaking the Prosecution as provided in subsection (ii) above; and
(iv) Egalet shall have the right, but not the obligation, to Prosecute any Offensive Infringement Action for which Acura is not undertaking the Prosecution as provided in subsection (i) above.
10.4.3 A Party having the first right to prosecute an Offensive Infringement Action shall request a meeting to discuss whether it intends to Prosecute such action within (i) fifteen (15) days in the case of an Offensive Infringement Action relating to a Paragraph IV Certification be solely responsible for the Product, management and (ii) within ninety (90) days after receiving such written request for other Offensive Infringement Actions. If the Party having the first right of Prosecution declines to Prosecute the action, the other Party may, by written notice to the declining Party, Prosecute such action.
10.4.4 The Prosecuting Party shall control and manage such action (including without limitation, control over the settlement of such patent infringement action, provided the other Party consents to such settlement, such consent not to be unreasonably withheld, delayed or conditioned) and the other Party shall cooperate with the Prosecuting Party and join the action as required by law for subject matter jurisdiction or as reasonably requested. If the other Party joins the action it may do so at its sole cost and expense, and the Prosecuting Party shall not oppose any attempt by the other Party to join, or otherwise intervene in such action. The Parties’ shall share out-of-pocket expenses (including attorneys’ fees) solely with respect to Product-specific Offensive Infringement Actions as follows: [*****]. Any and all amounts recovered with respect to a Product-specific Offensive Infringement Action shall be applied first to reimburse the Parties for their reasonable out-of-pocket expenses (including reasonable attorneys’ fees and expenses already paid under Section 6.14(a)) in Prosecuting such Product-specific Offensive Infringement Action. If such proceeds are insufficient with respect to Product-specific Offensive Infringement Actions, then the Parties shall share such remaining out-of pocket expenses according to the sharing of such expenses for Product-specific Offensive Infringement Actions as provided above in this Section 10.4.4. Any recovery in excess of the Parties’ out-of-pocket expenses with respect to a Product-specific Offensive Infringement Action will be shared as follows: [*****]. Notwithstanding the foregoing, Acuranothing in this Section 12.4(a)(i) shall require JDS to participate in or contribute to the cost of Banner’s consent Intellectual Property enforcement efforts unless the third party’s infringement directly and materially adversely impacts, or is reasonably likely to directly and materially adversely impact, sales of the Product(s) and, in all other situations Banner is free to enforce Banner Intellectual Property on its own behalf, at its own cost, and without contribution or indemnification thereof by JDS. In this latter case, Banner shall retain for itself all awards paid by third parties (which shall not be unreasonably withheldwhether by settlement or otherwise) as a result of Banner’s enforcement efforts.
(ii) Subject to Section 12.4(a)(i), delayed or conditionedthe costs and expenses of any enforcement action by Banner (including reasonable fees and expenses of attorneys and other third parties) shall be required for paid by Banner and one-half (1/2) of any settlement such costs and expenses incurred by Banner shall be invoiced to JDS monthly and paid net thirty (30) days of issuance.
(iii) Each party shall execute all necessary and proper documents and take such actions as shall be reasonably requested by the other to allow it to institute and prosecute any such enforcement actions, including being named as a co-plaintiff in the action if warranted, in accordance with the terms of this Section.
(iv) Provided that entails any license, covenant not JDS has actually participated in the cost of enforcement efforts pursuant to xxx relating to, dedication Section 12.4(a)(i) and (ii) and to the publicextent any award paid by third parties as a result of such an enforcement action (whether by way of settlement or otherwise) relates to lost revenue associated with the Product(s), admission such award shall be treated as Net Sales Revenue hereunder (after deduction by Banner and JDS, as the case may be, of non-infringement, invalidity or unenforceability or abandonment of any of Acura’s intellectual propertyall costs and expenses, including, without limitationlimitation internal personnel costs, relating to such action). All other awards, or portions of awards not related to lost revenue associated with the Aversion TechnologyProducts, and Egalet’s consent (which shall not be unreasonably withheld, delayed or conditioned) shall be required for any settlement that entails any license or covenant not to xxx with respect to any Third Party Infringement related to a Paragraph IV Certification with respect to shared by the Product or other Product-specific Offensive Infringement Action, or that would otherwise grant any rights to manufacture, use, sell or otherwise commercialize [*****] or admission of non-infringement, invalidity or unenforceability or abandonment of any Product-specific Intellectual Propertyparties equally.
10.4.5 [*****]
Appears in 1 contract
Samples: Development, License and Supply Agreement (Noven Pharmaceuticals Inc)
