Common use of Patent Enforcement Clause in Contracts

Patent Enforcement. 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 settle any alleged infringement of ASU's PATENT RIGHTS. ASU shall have the first right to settle any alleged infringement of ASU's PATENT RIGHTS that does not relate to the TECHNOLOGY.. Each party shall give reasonable assistance to the other party in connection with settling any alleged infringement and shall have the right to join in any infringement or enforcement action at its own expense. 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, the other party shall have the right at any time following one hundred twenty (120) days of receipt of notice of the alleged infringement, to at its or their own expense take action against the infringer. ASU shall permit, if legally necessary, the use of its name and shall execute any documents and do any acts as may be reasonably necessary for the purpose of taking action. Any recovery received by the party taking action against an infringer pursuant to this Paragraph shall be retained for the benefit of such party, provided that in the 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 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 dominant patent to enable LICENSEE, its AFFILIATES or SUB-LICENSEES to use the inventions of the ASU's PATENT RIGHTS, those payments shall be credited against LICENSEE's royalty obligations to 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 of ASU's PATENT RIGHTS is invalid, LICENSEE shall place all royalties due by virtue of such ASU 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, LICENSEE shall cause to be paid to ASU all amounts in escrow plus accrued interest within thirty (30) days after receipt of the determination of the 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 entered with a court of competent jurisdiction, to have the order permit at least one counsel from each party access to information provided under the protective order without restriction.

Patent Enforcement. 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 ’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 settle any alleged infringement of ASU's ’s PATENT RIGHTS. ASU shall have the first right to settle any alleged infringement of ASU's ’s PATENT RIGHTS that does not relate to the TECHNOLOGY.. . Each party shall give reasonable assistance to the other party in connection with settling any alleged infringement and shall have the right to join in any infringement or enforcement action at its own expense. 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, the other party shall have the right at any time following one hundred twenty (120) days of receipt of notice of the alleged infringement, to at its or their own expense take action against the infringer. ASU shall permit, if legally necessary, the use of its name and shall execute any documents and do any acts as may be reasonably necessary for the purpose of taking action. Any recovery received by the party taking action against an infringer pursuant to this Paragraph shall be retained for the benefit of such party, provided that in the 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 ’S expenses hereunder and in the 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 dominant patent to enable LICENSEE, its AFFILIATES or SUB-LICENSEES to use the inventions of the ASU's ’s PATENT RIGHTS, those payments shall be credited against LICENSEE's ’s royalty obligations to 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 of ASU's ’s PATENT RIGHTS is invalid, LICENSEE shall place all royalties due by virtue of such ASU 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, LICENSEE shall cause to be paid to ASU all amounts in escrow plus accrued interest within thirty (30) days after receipt of the determination of the 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 entered with a court of competent jurisdiction, to have the order permit at least one counsel from each party access to information provided under the protective order without restriction.

Patent Enforcement. 11.1. If at any time during the TERM of this Agreement either party 6.1 LICENSOR and LICENSEE shall become aware notify each other promptly in writing of any infringement or threatened infringement of the PATENTS, which becomes known to either of them LICENSEE shall notify LICENSOR promptly of any of ASU's PATENT RIGHTS, action taken in accordance with this Paragraph VI to ▇▇▇▇▇ or eliminate such party shall give immediate notice of it to the other partyinfringement. If the infringement relates to the TECHNOLOGY, then LICENSEE shall have the first right to settle any alleged infringement of ASU's PATENT RIGHTS. ASU shall have the first right to settle any alleged infringement of ASU's PATENT RIGHTS that does not relate to the TECHNOLOGY.. Each party shall give reasonable assistance to the other party in connection with settling any alleged infringement and shall have the right to join ▇▇▇▇▇ the infringement by grant of sublicense in accordance with the provisions of Paragraph III, or to ▇▇▇ for the infringement in LICENSEE=s own name and expense, and to collect for its own use all damages, profits, and awards of whatever nature recovered for such infringement, however, such damages, profits and awards shall be included as income for royalty calculations less reasonable legal fees incurred in the enforcement of said PATENTS. 6.2 In the event LICENSOR shall bring to the attention of LICENSEE any infringement of the LICENSED PATENT, and LICENSEE shall not, within six (6) months: a) Secure abatement or enforcement action at its own expense.cessation of the infringement; 11.2. If b) Enter suit against the party having infringer; or c) Provide LICENSOR with evidence of the first right to take action pendency of a bona fide negotiation for the acceptance by the infringer of a sublicense under Section 11.1 is not able or willing to take action against an infringer as set forth abovethe PATENTS, the other party LICENSOR shall thereafter have the right at any time following one hundred twenty (120) days of receipt of notice of the alleged infringement, to at its or their own expense take action against the infringer. ASU shall permit, if legally necessary, the use of its name and shall execute any documents and do any acts as may be reasonably necessary ▇▇▇ for the purpose infringement at LICENSOR'S own expense, and to collect for its own use all damages, profits, and awards of taking actionwhatever nature recoverable for such infringement. 6.3 LICENSOR and LICENSEE mutually agree to furnish technical and other necessary assistance to each other in conducting any litigation necessary to enforce the PATENTS against others. Any recovery received Out of pocket expenses for such assistance will be paid by the party taking action against an infringer pursuant to this Paragraph shall be retained for the benefit of requesting such party, provided that in the 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 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 infringementassistance. 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 dominant patent to enable LICENSEE, its AFFILIATES or SUB-LICENSEES to use the inventions of the ASU's PATENT RIGHTS, those payments shall be credited against LICENSEE's royalty obligations to 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 of ASU's PATENT RIGHTS is invalid, LICENSEE shall place all royalties due by virtue of such ASU 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, LICENSEE shall cause to be paid to ASU all amounts in escrow plus accrued interest within thirty (30) days after receipt of the determination of the 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 entered with a court of competent jurisdiction, to have the order permit at least one counsel from each party access to information provided under the protective order without restriction.

Patent Enforcement. 11.1. 7.3.1 If at any time during the TERM either Party learns of this Agreement either party shall become aware of any infringement an infringement, unauthorized use, misappropriation or ownership claim or threatened infringement of any of ASU's PATENT RIGHTSor other such claim (an "Infringement") by a Third Party with respect to Licensed Technology within the Territory, such party Party shall give immediate notice of it to promptly notify the other party. If the infringement relates to the TECHNOLOGY, then LICENSEE Party and shall provide such other Party with available evidence of such Infringement. 7.3.2 Merck shall have the first right right, but not the duty, to settle institute patent infringement actions against Third Parties based on any alleged Licensed Technology in the Territory. If Merck does not secure actual cessation of such Infringement or institute an infringement proceeding against an offending Third Party within one hundred eighty (180) days of ASU's PATENT RIGHTS. ASU learning of such Infringement, deCODE shall have the right, but not the duty, to institute such an action with respect to any Infringement by such Third Party. The costs and expenses of any such action (including fees of attorneys and other professionals) shall be borne by the Party instituting the action, or, if the Parties elect to cooperate in instituting and maintaining such action, such costs and expenses shall be borne by the Parties in such proportions as they may agree in writing. Each Party shall execute all necessary and proper documents and take such actions as shall be appropriate to allow the other Party to institute and prosecute such infringement actions. Any award paid by Third Parties as a result of such an infringement action (whether by way of settlement or otherwise) shall be applied first to reimburse both Parties for one hundred ten percent (110%) of all costs and expenses incurred by the Parties with respect to such action on a pro rata basis and, if after such reimbursement any funds shall remain from such award, Merck shall be entitled to retain same; provided, however, that such remaining funds shall be deemed to constitute Net Sales for purposes of this Agreement, and Merck shall be obligated to pay the royalty due and owing under this Agreement with respect thereto. 7.3.3 deCODE shall inform Merck of any certification regarding any Patents and Collaboration Patents it has received pursuant to either 21 U.S.C. Sections 355(b)(2)(A)(iv) or (j)(2)(A)(vii)(IV) or its successor provisions or any similar provisions in a country in the Territory other than the United States and shall provide Merck with a copy of such certification within five (5) days of receipt. deCODE's and Merck's rights with respect to the initiation and prosecution of any legal action as a result of such certification or any recovery obtained as a result of such legal action shall be as defined in Sections 7.3.2 hereof; provided, however, deCODE shall exercise its first right to settle initiate and prosecute any alleged infringement action and shall inform Merck of ASU's PATENT RIGHTS that does not relate to such decision within ten (10) days of receipt of the TECHNOLOGY.. Each party shall give reasonable assistance to the other party in connection with settling any alleged infringement and certification, after which time Merck shall have the right to join in any infringement or enforcement action at its own expense. 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, the other party shall have the right at any time following one hundred twenty (120) days of receipt of notice of the alleged infringement, to at its or their own expense take action against the infringer. ASU shall permit, if legally necessary, the use of its name initiate and shall execute any documents and do any acts as may be reasonably necessary for the purpose of taking action. Any recovery received by the party taking action against an infringer pursuant to this Paragraph shall be retained for the benefit of such party, provided that in the case of LICENSEE taking prosecute 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 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 dominant patent to enable LICENSEE, its AFFILIATES or SUB-LICENSEES to use the inventions of the ASU's PATENT RIGHTS, those payments shall be credited against LICENSEE's royalty obligations to 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 of ASU's PATENT RIGHTS is invalid, LICENSEE shall place all royalties due by virtue of such ASU 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, LICENSEE shall cause to be paid to ASU all amounts in escrow plus accrued interest within thirty (30) days after receipt of the determination of the 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 entered with a court of competent jurisdiction, to have the order permit at least one counsel from each party access to information provided under the protective order without restriction.

Patent Enforcement. 11.1. If at any time during the TERM of this Agreement either party 8.1 LICENSOR and LICENSEE shall become aware notify each other promptly in writing of any infringement of the LICENSED PATENT APPLICATION which becomes known to either of them. LICENSEE shall notify LICENSOR promptly of any action taken in accordance with this Article VIII to eliminate such infringement. 8.2 LICENSEE is authorized pursuant to the provisions of Chapter 29, Title 35, U.S. Code, or threatened other statutes: (A) To bring suit in its own name, or if required by law, jointly with LICENSOR, at its own expense and on its own behalf, for infringement of the LICENSED PATENT APPLICATION; (B) In any such suit, to enjoin infringement; and (C) To collect for its use damages, profits and awards of ASU's PATENT RIGHTS, whatever nature recoverable for such party infringement; provided that LICENSEE shall give immediate notice of it be obligated to pay to LICENSOR an amount equal to the royalties and other party. If amounts that LICENSEE would have paid to LICENSOR if LICENSEE had sold the infringement relates ROYALTY-BASED PRODUCTS rather than the infringer. 8.3 In the event LICENSOR shall bring to the TECHNOLOGY, then attention of LICENSEE any unlicensed infringement of the LICENSED PATENT APPLICATION and LICENSEE shall have not, within six (6) months, (A) Secure cessation of the first right to settle any alleged infringement of ASU's PATENT RIGHTS. ASU infringement, or (B) Enter suit against the infringer, LICENSOR shall have the first right to settle any alleged infringement of ASU's PATENT RIGHTS that does not relate to the TECHNOLOGY.. Each party shall give reasonable assistance to the other party in connection with settling any alleged infringement and shall thereafter have the right to join ▇▇▇ for the infringement at LICENSOR’s own expense, and to collect for its own use all damages, profits and awards of whatever nature recoverable for such infringement. 8.4 LICENSOR and LICENSEE mutually agree to furnish technical and other necessary assistance to each other in conducting any infringement or enforcement action litigation necessary to enforce the LICENSED PATENT APPLICATION against others. Reasonable expenses for such assistance will be paid by the party requesting such assistance. 8.5 LICENSEE shall defend at its own expense. 11.2cost and expense any action, suit, claim or proceeding for infringement by LICENSEE of any third party’s patents based upon LICENSEE’s manufacture, use, sale, or lease of products, processes or services based upon, utilizing, or incorporating the LICENSED PATENT APPLICATION. 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, the other party LICENSOR shall have the right at cooperate with LICENSEE in any time following one hundred twenty (120) days of receipt of notice of the alleged infringement, to at its or their own expense take action against the infringer. ASU shall permit, if legally way reasonably necessary, the use of its name and shall execute any documents and do any acts as may be reasonably necessary for the purpose of taking action. Any recovery received by the party taking action against an infringer pursuant but without expense to this Paragraph shall be retained for the benefit of such party, provided that LICENSOR in the case defense of LICENSEE taking any 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 case of ASU taking such actionsuit, 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 dominant patent to enable LICENSEE, its AFFILIATES or SUB-LICENSEES to use the inventions of the ASU's PATENT RIGHTS, those payments shall be credited against LICENSEE's royalty obligations to 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 of ASU's PATENT RIGHTS is invalid, LICENSEE shall place all royalties due by virtue of such ASU 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, LICENSEE shall cause to be paid to ASU all amounts in escrow plus accrued interest within thirty (30) days after receipt of the determination of the court of last resort. If the court of last resort upholds the initial determination, LICENSEE shall receive all amounts in escrow, plus accrued interestproceeding. 11.5. Each party agrees to use its best efforts whenever a protective order is to be entered with a court of competent jurisdiction, to have the order permit at least one counsel from each party access to information provided under the protective order without restriction.

Patent Enforcement. 11.1. If at any time during the TERM of this Agreement either party 8.1 LICENSOR and LICENSEE shall become aware notify each other promptly in writing of any infringement or threatened infringement of the LICENSED PATENT APPLICATION which becomes known to either of them. LICENSEE shall notify LICENSOR promptly of any of ASU's PATENT RIGHTS, action taken in accordance with this Article VIII to eliminate such party shall give immediate notice of it infringement. 8.2 LICENSEE is authorized pursuant to the provisions of Chapter 29, Title 35, U.S. Code, or other party. If the infringement relates to the TECHNOLOGYstatutes: (A) To bring suit in its own name, then LICENSEE shall have the first right to settle any alleged infringement of ASU's PATENT RIGHTS. ASU shall have the first right to settle any alleged infringement of ASU's PATENT RIGHTS that does not relate to the TECHNOLOGY.. Each party shall give reasonable assistance to the other party in connection or if required by law, jointly with settling any alleged infringement and shall have the right to join in any infringement or enforcement action LICENSOR, at its own expense. 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 aboveexpense and on its own behalf, the other party shall have the right at any time following one hundred twenty (120) days of receipt of notice for infringement of the alleged infringementLICENSED PATENT APPLICATION; (B) In any such suit, to at enjoin infringement; and (C) To collect for its or their own expense take action against use damages, profits and awards of whatever nature recoverable for such infringement; provided that LICENSEE shall be obligated to pay to LICENSOR an amount equal to the royalties and other amounts that LICENSEE would have paid to LICENSOR if LICENSEE had sold the ROYALTY-BASED PRODUCTS rather than the infringer. ASU shall permitNotwithstanding the foregoing, if legally necessaryLICENSEE must notify the Chief, the use of its name Regulatory Law and shall execute any documents and do any acts as may be reasonably necessary for the purpose of taking action. Any recovery received by the party taking action against an infringer pursuant to this Paragraph shall be retained for the benefit of such party, provided that in the 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 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 dominant patent to enable LICENSEE, its AFFILIATES or SUB-LICENSEES to use the inventions Intellectual Property Division of the ASU's PATENT RIGHTS, those payments shall be credited against LICENSEE's royalty obligations to 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 SUBU.S. Army Legal Services Agency (703-LICENSEES. 11.4. After an initial determination by a court or tribunal that a claim or claims of any of ASU's PATENT RIGHTS is invalid, LICENSEE shall place all royalties due by virtue of such ASU PATENT RIGHT in an interest693-bearing escrow account until a decision by a court of last resort. If the court of last resort reverses the initial determination, LICENSEE shall cause to be paid to ASU all amounts in escrow plus accrued interest within 1100) at least thirty (30) days after receipt prior to either filing an enforcement lawsuit against an alleged infringer or sending a cease and desist letter to an alleged infringer. 8.3 In the event LICENSOR shall bring to the attention of LICENSEE any unlicensed infringement of the determination LICENSED PATENT APPLICATION and LICENSEE shall not, within six (6) months, (A) Secure cessation of the court infringement, or (B) Enter suit against the infringer, LICENSOR shall thereafter have the right to sue for the infringement at LICENSOR’s own expense, and to collect for its own use all damages, profits and awards of last resort. If whatever nature recoverable for such infringement. 8.4 LICENSOR and LICENSEE mutually agree to use reasonable efforts to furnish technical and other necessary assistance to each other in conducting any litigation necessary to enforce the court of last resort upholds the initial determination, LICENSED PATENT APPLICATION against others. 8.5 LICENSEE shall receive all amounts defend at its own cost and expense any action, suit, claim or proceeding for infringement by LICENSEE of any third party’s patents based upon LICENSEE’s manufacture, use, sale, or lease of products, processes or services based upon, utilizing, or incorporating the LICENSED PATENT APPLICATION. LICENSOR shall cooperate with LICENSEE in escrowany way reasonably necessary, plus accrued interestbut without expense to LICENSOR in the defense of any such action, suit, claim or proceeding. 11.5. Each party agrees to use its best efforts whenever a protective order is to be entered with a court of competent jurisdiction, to have the order permit at least one counsel from each party access to information provided under the protective order without restriction.