Common use of Patent Enforcement Clause in Contracts

Patent Enforcement. ICN shall have the first right to bring and control any action or proceeding with respect to infringement of any patent claiming or otherwise related to the use, manufacture or sale of Products at its own expense and by counsel of its own choice, and Metabasis shall have the right, at its own expense, to be represented in any such action by counsel of its own choice. If ICN fails to bring an action or proceeding within (a) sixty (60) days following the notice of alleged infringement or (b) ten (10) days before the time limit, if any, set forth in the appropriate laws and regulations for the filing of such actions, whichever comes first, Metabasis shall have the right to bring and control any such action at its own expense and by counsel of its own choice, and ICN shall have the right, at its own expense, to be represented in any such action by counsel of its own choice. In the event a Party brings an infringement action, the other Party shall cooperate fully, including if required to bring such action, the furnishing of a power of attorney. Any settlement or other action by a Party which requires payment or other action by the other Party, subjects the other Party to liability or otherwise adversely affects the other Party will require the other Party's prior written consent, which will not be unreasonably withheld or delayed. The Party which actually brings the action shall be entitled to any damage award and other recoveries resulting therefrom, provided that to the extent that any such damage award or other recovery realized by ICN constitutes compensation for lost sales, the excess of such award or recovery, net of the litigation and related expenses of obtaining such award or recovery, shall be treated as Net Sales hereunder with respect to which royalties shall be payable pursuant to Section 4.3 of this Agreement.

Patent Enforcement. ICN 11.1. If at any time during the TERM of this Agreement either party shall become aware of any infringement or threatened infringement of any of ASU's PATENT RIGHTS, such party shall give immediate notice of it to the other party. If the infringement relates to the TECHNOLOGY, then LICENSEE shall have the first right to bring and control settle any action or proceeding with respect to alleged infringement of any patent claiming or otherwise related to the use, manufacture or sale of Products at its own expense and by counsel of its own choice, and Metabasis ASU's PATENT RIGHTS. ASU shall have the right, at its own expense, first right to be represented in settle any such action by counsel of its own choice. If ICN fails to bring an action or proceeding within (a) sixty (60) days following the notice of alleged infringement or (b) ten (10) days before of ASU's PATENT RIGHTS that does not relate to the time limit, if any, set forth TECHNOLOGY.. Each party shall give reasonable assistance to the other party in the appropriate laws connection with settling any alleged infringement and regulations for the filing of such actions, whichever comes first, Metabasis shall have the right to bring and control join in any such infringement or enforcement action at its own expense and by counsel of its own choiceexpense. 11.2. If the party having the first right to take action under Section 11.1 is not able or willing to take action against an infringer as set forth above, and ICN the other party shall have the rightright at any time following one hundred twenty (120) days of receipt of notice of the alleged infringement, to at its or their own expenseexpense take action against the infringer. ASU shall permit, to be represented in any such action by counsel if legally necessary, the use of its own choicename and shall execute any documents and do any acts as may be reasonably necessary for the purpose of taking action. In Any recovery received by the event a Party brings party taking action against an infringement actioninfringer pursuant to this Paragraph shall be retained for the benefit of such party, provided that in the other Party shall cooperate fully, including if required to bring case of LICENSEE taking such action, royalties specified in Article 5 shall be paid to ASU on that portion of any recovery remaining after reimbursement of all of LICENSEE'S expenses hereunder and in the furnishing case of ASU taking such action, ASU shall pay to LICENSEE the amount of any damages for injury to LICENSEE or its SUBLICENSEES resulting from the infringement. 11.3. If LICENSEE, its AFFILIATES or SUB-LICENSEES must pay royalties or license fees in any country to third parties under one or more valid claims of a power dominant patent to enable LICENSEE, its AFFILIATES or SUB-LICENSEES to use the inventions of attorney. Any settlement or other action by a Party which requires payment or other action by the other PartyASU's PATENT RIGHTS, subjects the other Party to liability or otherwise adversely affects the other Party will require the other Party's prior written consent, which will not be unreasonably withheld or delayed. The Party which actually brings the action those payments shall be entitled credited against LICENSEE's royalty obligations to any damage award and other recoveries resulting therefrom, provided ASU hereunder for sales in that country where a valid claim of a dominant patent exists to the extent of payments of royalties or license fees actually made to third parties by LICENSEE, its AFFILIATES and SUB-LICENSEES. 11.4. After an initial determination by a court or tribunal that a claim or claims of any such damage award or other recovery realized of ASU's PATENT RIGHTS is invalid, LICENSEE shall place all royalties due by ICN constitutes compensation for lost sales, the excess virtue of such award or recoveryASU PATENT RIGHT in an interest-bearing escrow account until a decision by a court of last resort. If the court of last resort reverses the initial determination, net LICENSEE shall cause to be paid to ASU all amounts in escrow plus accrued interest within thirty (30) days after receipt of the litigation and related expenses determination of obtaining such award or recoverythe court of last resort. If the court of last resort upholds the initial determination, LICENSEE shall receive all amounts in escrow, plus accrued interest. 11.5. Each party agrees to use its best efforts whenever a protective order is to be treated as Net Sales hereunder entered with respect a court of competent jurisdiction, to which royalties shall be payable pursuant have the order permit at least one counsel from each party access to Section 4.3 of this Agreementinformation provided under the protective order without restriction.

Patent Enforcement. ICN Each party shall promptly notify the other in writing of any alleged or threatened infringement of any patent included in the Licensed Patents or the Program Patents of which such party becomes aware. (a) With respect to any infringement of any patent included in the Licensed Patents or Program Patents, Company shall have the first right right, but not the obligation, to bring and control any action or proceeding with respect to such infringement of any patent claiming or otherwise related to the use, manufacture or sale of Products at its own expense and by counsel of its own choice, and Metabasis Licensor shall have the right, at its own expense, to be represented in any such action by counsel of its own choice. If ICN Company fails to bring an action or proceeding within (aA) sixty (60) [***] days following the notice of alleged infringement or (bB) ten (10) [***] days before the time limit, if any, set forth in the appropriate applicable laws and regulations for the filing of such actions, whichever comes first, Metabasis Licensor shall have the right to bring and control any action or proceeding with respect to such action infringement at its own expense and by counsel of its own choice, and ICN Company shall have the right, at its own expense, to be represented in any such action by counsel of its own choice. . (b) In the event a Party party brings an infringement actionaction in accordance with this Section 5.4, the other Party party shall cooperate fully, including if required to bring such action, the furnishing of a power of attorney. Any settlement Neither party shall have the right to settle any patent infringement litigation under this Section 5.4 in a manner that diminishes the rights or other action by a Party which requires payment or other action by interests of the other Party, subjects party without the consent of such other Party to liability or otherwise adversely affects the other Party will require the other Party's prior written consent, party (which will shall not be unreasonably withheld or delayedwithheld). The Party which actually brings Except as otherwise agreed to by the action parties as part of a cost-sharing arrangement, any recovery realized as a result of such litigation, after reimbursement of any litigation expenses of Company and Licensor, shall be entitled to retained by the party that brought and controlled such litigation for purposes of this Agreement, except that any damage award and other recoveries resulting therefromrecovery realized by Company as a result of such litigation, provided that after reimbursement of the parties’ litigation expenses, shall, to the extent that any such damage award or other recovery realized by ICN constitutes compensation for attributable to lost salessales of Products, the excess of such award or recovery, net of the litigation and related expenses of obtaining such award or recovery, shall be treated as Net Sales hereunder with respect to which royalties shall be payable pursuant to Section 4.3 of this AgreementProducts by Company.

Patent Enforcement. ICN 11.1. If at any time during the TERM of this Agreement either party shall become aware of any infringement or threatened infringement of any of ASU’s PATENT RIGHTS, such party shall give immediate notice of it to the other party. If the infringement relates to the TECHNOLOGY, then LICENSEE shall have the first right to bring and control settle any action or proceeding with respect to alleged infringement of any patent claiming or otherwise related to the use, manufacture or sale of Products at its own expense and by counsel of its own choice, and Metabasis ASU’s PATENT RIGHTS. ASU shall have the right, at its own expense, first right to be represented in settle any such action by counsel of its own choice. If ICN fails to bring an action or proceeding within (a) sixty (60) days following the notice of alleged infringement or (b) ten (10) days before of ASU’s PATENT RIGHTS that does not relate to the time limit, if any, set forth TECHNOLOGY. Each party shall give reasonable assistance to the other party in the appropriate laws connection with settling any alleged infringement and regulations for the filing of such actions, whichever comes first, Metabasis shall have the right to bring and control join in any such infringement or enforcement action at its own expense and by counsel of its own choiceexpense. 11.2. If the party having the first right to take action under Section 11.1 is not able or willing to take action against an infringer as set forth above, and ICN the other party shall have the rightright at any time following one hundred twenty (120) days of receipt of notice of the alleged infringement, to at its or their own expenseexpense take action against the infringer. ASU shall permit, to be represented in any such action by counsel if legally necessary, the use of its own choicename and shall execute any documents and do any acts as may be reasonably necessary for the purpose of taking action. In Any recovery received by the event a Party brings party taking action against an infringement actioninfringer pursuant to this Paragraph shall be retained for the benefit of such party, provided that in the other Party shall cooperate fully, including if required to bring case of LICENSEE taking such action, royalties specified in Article 5 shall be paid to ASU on that portion of any recovery remaining after reimbursement of all of LICENSEE’S expenses hereunder and in the furnishing case of ASU taking such action, ASU shall pay to LICENSEE the amount of any damages for injury to LICENSEE or its SUBLICENSEES resulting from the infringement. 11.3. If LICENSEE, its AFFILIATES or SUB-LICENSEES must pay royalties or license fees in any country to third parties under one or more valid claims of a power dominant patent to enable LICENSEE, its AFFILIATES or SUB-LICENSEES to use the inventions of attorney. Any settlement or other action by a Party which requires payment or other action by the other PartyASU’s PATENT RIGHTS, subjects the other Party to liability or otherwise adversely affects the other Party will require the other Party's prior written consent, which will not be unreasonably withheld or delayed. The Party which actually brings the action those payments shall be entitled credited against LICENSEE’s royalty obligations to any damage award and other recoveries resulting therefrom, provided ASU hereunder for sales in that country where a valid claim of a dominant patent exists to the extent of payments of royalties or license fees actually made to third parties by LICENSEE, its AFFILIATES and SUB-LICENSEES. 11.4. After an initial determination by a court or tribunal that a claim or claims of any such damage award or other recovery realized of ASU’s PATENT RIGHTS is invalid, LICENSEE shall place all royalties due by ICN constitutes compensation for lost sales, the excess virtue of such award or recoveryASU PATENT RIGHT in an interest-bearing escrow account until a decision by a court of last resort. If the court of last resort reverses the initial determination, net LICENSEE shall cause to be paid to ASU all amounts in escrow plus accrued interest within thirty (30) days after receipt of the litigation and related expenses determination of obtaining such award or recoverythe court of last resort. If the court of last resort upholds the initial determination, LICENSEE shall receive all amounts in escrow, plus accrued interest. 11.5. Each party agrees to use its best efforts whenever a protective order is to be treated as Net Sales hereunder entered with respect a court of competent jurisdiction, to which royalties shall be payable pursuant have the order permit at least one counsel from each party access to Section 4.3 of this Agreementinformation provided under the protective order without restriction.