Common use of Patent Invalidity Claim Clause in Contracts

Patent Invalidity Claim. If a Third Party at any time asserts a claim that any Infinity Patent Right or Purdue Patent Right Covering a Royalty Bearing Product is invalid or otherwise unenforceable (an “Invalidity Claim”), whether as a defense in an infringement action brought by Infinity or Purdue pursuant to Section 7.3, in a declaratory judgment action or in a Third Party Infringement Claim brought against Infinity or Purdue, the Party Controlling such Patent Right (or Infinity with respect to any Joint Patent Right) shall have the first right, but not the obligation, to defend such Invalidity Claim and the other Party shall cooperate with the Party Controlling such Patent Right in preparing and formulating a response to such Invalidity Claim. If Infinity does not defend an Invalidity Claim brought against an Infinity Patent Right in the Territory or Purdue does not defend an Invalidity Claim brought against a Purdue Patent Right in the Territory, the other Party may defend such Invalidity Claim and the coordination provisions of Section 7.3(c) shall apply to such Invalidity Claim, mutatis mutandis as they apply to Licensed IP Infringement suits. Neither Party shall, without the consent of the other Party, settle or compromise any Invalidity Claim in any manner which would (a) have an adverse effect on such other Party’s Patent Rights or such other Party’s rights to Develop, Manufacture or Commercialize a Royalty Bearing Product hereunder or (b) be an admission of liability on behalf of such other Party (provided, however, that the Party initiating such suit may settle such suit without such consent if such settlement involves only the receipt of money from, or the payment of money to, such Third Party and the Party initiating such suit makes all such payments to such Third Party). The Party defending such Invalidity Claim shall bear all expenses with respect thereto and such Party’s counsel shall act as the ministerial liaison with the court, except (i) to the extent such Invalidity Claim is raised as a defense in an infringement action brought by Infinity or Purdue pursuant to Section 7.3, in which case the expense provisions of Section 7.3 shall apply and the counsel to such Party shall act as the ministerial liaison with the court, and (ii) to the extent such Invalidity Claim is raised in a Third Party Infringement Claim brought against Purdue, in which case Purdue shall bear all expenses with respect thereto and shall act as the ministerial liaison with the court.

Patent Invalidity Claim. If a Third Party at any time asserts a claim that any Infinity Agenus Patent Right, Incyte Program Patent Right or Purdue Joint Patent Right Covering a Royalty Bearing Product is invalid or otherwise unenforceable (an “Invalidity Claim”), whether as a defense in an infringement action brought by Infinity Agenus or Purdue Incyte pursuant to Section 7.36.3(b), in a declaratory judgment action or in a Third Party Infringement Claim brought against Infinity Agenus or PurdueIncyte, the Party Controlling such Patent Right (or Infinity Incyte with respect to any Joint Patent Right) shall have the first right, but not the obligation, to defend such Invalidity Claim and the other Party shall cooperate with the Party Controlling such Patent Right in preparing and formulating a response to such Invalidity Claim. If Infinity Agenus does not defend an Invalidity Claim brought against an Infinity Agenus Patent Right in the Territory or Purdue Incyte does not defend an Invalidity Claim brought against a Purdue an Incyte Program Patent Right in the Territoryor Joint Patent Right, the other Party may defend such Invalidity Claim and the coordination provisions of Section 7.3(c6.3(b) shall apply to such Invalidity Claim, mutatis mutandis as they apply to Licensed IP Infringement suits. Neither Party shall, without the consent of the other Party, settle or compromise any Invalidity Claim in any manner which would (a) have an adverse effect on such other Party’s Patent Rights or such other Party’s rights to Develop, Manufacture or Commercialize a Royalty Bearing Product Program Rights hereunder or (b) be an admission of liability on behalf of such other Party (provided, however, that the Party initiating such suit may settle such suit without such consent if such settlement involves only the receipt of money from, or the payment of money to, such Third Party and the Party initiating such suit makes all such payments to such Third Party). The Party defending such Invalidity Claim shall bear all expenses with respect thereto and such Party’s counsel shall act as the ministerial liaison with the court, except (i) to To the extent such Invalidity Claim is raised as a defense in an infringement action brought by Infinity Agenus or Purdue Incyte pursuant to Section 7.36.3(b), in which case the expense provisions of Section 7.3 6.3 shall apply and the counsel to such the Party controlling the infringement action shall act as the ministerial liaison with the court, and (ii) to . To the extent such Invalidity Claim is raised in a Third Party Infringement Claim brought against Purduea Party, in which case Purdue the expense provisions of Section 6.4 shall bear all expenses apply with respect thereto and the Party against whom the Invalidity Claim is brought shall act as the ministerial liaison with the court.

Patent Invalidity Claim. If a Each of the Parties shall promptly notify the other in the event of any legal or administrative action by any Third Party at any time asserts against a claim that any Infinity Ocuphire Patent Right or Purdue Joint Patent Right Covering a Royalty Bearing Product is invalid of which it becomes aware, including any nullity, revocation, reexamination or otherwise unenforceable (an “Invalidity Claim”), whether as a defense in an infringement action brought by Infinity or Purdue pursuant to Section 7.3, in a declaratory judgment action or in a Third Party Infringement Claim brought against Infinity or Purdue, the Party Controlling such Patent Right (or Infinity with respect to any Joint Patent Right) compulsory license proceeding. Ocuphire shall have the first right, but not the obligation, to defend against any such Invalidity Claim action involving a Ocuphire Patent Right, and the costs of any such defense shall be at Ocuphire’s expense; provided, however, that, in the case of any inter partes review or similar post-grant matter before the Patent Trial and Appeal Board or similar administrative body that is based on the same subject matter as any claim or counterclaim in any Infringement Claim, Processa shall have the first right, but not the obligation, to defend against any such action involving a Ocuphire Patent Right, and the costs of any such defense shall be at Processa’s expense; provided, further that in the case of any Paragraph IV Claim, Section 7.8 shall apply. Processa shall have the sole right, but not the obligation, to defend against any such action involving a Processa Patent Right and the first right, but not the obligation, to defend against any action involving a Joint Patent Right, and, in each case, the costs of any such defense shall be at Processa’s expense. If the Party that has the first right to defend against any such action involving such Ocuphire Patent Right or Joint Patent Right does not do so within sixty (60) days of notice thereof, then the other Party shall cooperate with have the right, but not the obligation, to defend such action and any such defense shall be at such other Party’s expense. Upon request of the Party Controlling that defends against any such action involving a Ocuphire Patent Right, Processa Patent Right in preparing and formulating a response to such Invalidity Claim. If Infinity does not defend an Invalidity Claim brought against an Infinity or Joint Patent Right in the Territory or Purdue does not defend an Invalidity Claim brought against a Purdue Patent Right in the TerritoryRight, the other Party may defend agrees to join in any such Invalidity Claim action and to cooperate reasonably with the coordination provisions of Section 7.3(cdefending Party, including providing full access to documents, information and witnesses as reasonably requested by the defending Party in connection with such action, provided that the defending Party shall promptly reimburse all out-of-pocket expenses (including reasonable counsel fees and expenses) shall apply to such Invalidity Claim, mutatis mutandis as they apply to Licensed IP Infringement suits. Neither Party shall, without the consent of actually incurred by the other Party, settle or compromise any Invalidity Claim Party in any manner which would (a) have an adverse effect on connection with such other Party’s Patent Rights or such other Party’s rights to Develop, Manufacture or Commercialize a Royalty Bearing Product hereunder or (b) be an admission of liability on behalf of such other Party (provided, however, that the Party initiating such suit may settle such suit without such consent if such settlement involves only the receipt of money from, or the payment of money to, such Third Party and the Party initiating such suit makes all such payments to such Third Party). The Party defending such Invalidity Claim shall bear all expenses with respect thereto and such Party’s counsel shall act as the ministerial liaison with the court, except (i) to the extent such Invalidity Claim is raised as a defense in an infringement action brought by Infinity or Purdue pursuant to Section 7.3, in which case the expense provisions of Section 7.3 shall apply and the counsel to such Party shall act as the ministerial liaison with the court, and (ii) to the extent such Invalidity Claim is raised in a Third Party Infringement Claim brought against Purdue, in which case Purdue shall bear all expenses with respect thereto and shall act as the ministerial liaison with the courtcooperation.

Patent Invalidity Claim. If a Third Party at any time asserts a claim that any Infinity Novartis Patent Right or Purdue Patent Right Covering a Royalty Bearing Product is invalid or otherwise unenforceable (an “Invalidity Claim”), whether as a defense in an infringement action brought by Infinity or Purdue a Party pursuant to Section 7.39.4, in a declaratory judgment action or any patent office proceeding anywhere in a Third Party Infringement Claim brought against Infinity the world (e.g., inter-partes review or PurdueEuropean opposition) or otherwise, the Party Controlling such Patent Right (or Infinity with respect to any Joint Patent Right) resTORbio shall have the first right, but not the obligation, to defend such Invalidity Claim and the other Party Novartis shall cooperate with the Party Controlling such Patent Right resTORbio in preparing and formulating a response to such Invalidity Claim. If Infinity does not defend an Invalidity Claim brought against an Infinity Patent Right in the Territory or Purdue resTORbio does not defend an Invalidity Claim brought against a Purdue Patent Right in the TerritoryNovartis Patent, the other Party Novartis may defend such Invalidity Claim and the coordination provisions of Section 7.3(c9.4(c) shall will apply to such Invalidity Claim, mutatis mutandis as they apply to Licensed IP Third Party Infringement suits. Neither Party shallmay, without the consent of the other Party, settle or compromise any Invalidity Claim in any manner which would (a) have an adverse effect on such other Party’s Patent Rights rights or such other Party’s rights to Develop, Manufacture or Commercialize a Royalty Bearing Product obligations hereunder or (b) be an admission of liability on behalf of such the other Party (provided, however, that the Party initiating such suit may settle such suit without such consent if such settlement involves only the receipt of money from, or the payment of money to, such Third Party and the Party initiating settling such suit makes all such [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED payments to such Third Party). The Party defending such Invalidity Claim shall bear all expenses with respect thereto and such Party’s counsel shall act as the ministerial liaison with the court, except (i) to To the extent such Invalidity Claim is raised as a defense in an infringement action brought by Infinity or Purdue a Party pursuant to Section 7.39.4, in which case the expense provisions of Section 7.3 shall 9.4 will apply and the counsel to such the Party shall act as controlling the ministerial liaison with the court, and (ii) to the extent such Invalidity Claim is raised in a Third Party Infringement Claim brought against Purdue, in which case Purdue shall bear all expenses with respect thereto and infringement action shall act as the ministerial liaison with the court.

Patent Invalidity Claim. If a Third Party at any time asserts a claim Claim that any Infinity NPS Patent Right Rights, Nycomed Patent Rights or Purdue Joint Patent Right Covering a Royalty Bearing Product is Rights are invalid or otherwise unenforceable (an “Invalidity Claim”), whether control of the response to such Claim in the Territory shall, as a defense between the Parties, be determined in an infringement action brought by Infinity or Purdue pursuant to Section 7.3, in a declaratory judgment action or in a Third Party Infringement Claim brought against Infinity or Purdue, the Party Controlling such Patent Right (or Infinity same manner as enforcement rights with respect to any such NPS Patent Rights, Nycomed Patent Rights or Joint Patent RightRights are determined pursuant to Sections 8.3(b) shall have and 8.3(c), with the first righttime periods set forth in Section 8.3(c) shortened where necessary to provide the Secondary Enforcement Rights Party sufficient time to respond without a loss of rights, but not the obligation, to defend such Invalidity Claim and the other non-controlling Party shall cooperate with the controlling Party Controlling in the preparation and formulation of such Patent Right response, and in preparing and formulating a response taking other steps reasonably necessary to respond, to such Invalidity Claim. If Infinity does not defend an Neither Party shall settle or compromise any Invalidity Claim brought against an Infinity Patent Right in the Territory or Purdue does not defend an Invalidity Claim brought against a Purdue Patent Right in the Territory, the other Party may defend such Invalidity Claim and the coordination provisions of Section 7.3(c) shall apply to such Invalidity Claim, mutatis mutandis as they apply to Licensed IP Infringement suits. Neither Party shall, without the consent of the other Party, settle which consent shall not be unreasonably withheld or compromise any delayed. If an Invalidity Claim arises in any manner which would (aconnection with a suit or action referred to in Section 8.3(b) have an adverse effect on such other Party’s Patent Rights or such other Party’s rights to Develop8.3(c), Manufacture or Commercialize a Royalty Bearing Product hereunder or (b) be an admission the Parties shall confer with one another regarding the appropriateness of liability on behalf of such other Party (provided, however, that having the Party initiating that is controlling such suit may settle or action in accordance with Section 8.3(b) or Section 8.3(c) continue to control such suit without such consent if such settlement involves only the receipt of money from, or the payment of money to, such Third Party action and the Party initiating sharing of cost and expenses with respect to such suit makes all such payments or action; provided that in the absence of any agreement by the Parties to such Third Party). The Party defending such the contrary, control of the Invalidity Claim shall bear all expenses with respect thereto and such Party’s counsel shall act as the ministerial liaison remain with the courtsame Party, except (i) and the costs and expenses of responding to the extent such Invalidity Claim is raised as a defense shall be borne by the Parties in an infringement action brought by Infinity or Purdue pursuant to Section 7.3, in which case accordance with the expense provisions of Section 7.3 shall apply 8.3. If the Invalidity Claim does not arise in connection with a suit or action referred to in Section 8.3(b) or 8.3(c), the costs and the counsel to such Party shall act as the ministerial liaison with the court, and (ii) expenses of responding to the extent such Invalidity Claim is raised in a Third Party Infringement Claim brought against Purdue, in which case Purdue shall bear all expenses with respect thereto be treated as Development Costs and shall act as borne by the ministerial liaison with the courtParties accordingly.

Patent Invalidity Claim. If a Third Party at any time asserts a claim that any Infinity Patent Right or Purdue MICL Patent Right Covering a Royalty Bearing Product, Opt-Out Product, Assumed Product, Assumed In-Licensed Product or Terminated In-Licensed Product is invalid or otherwise unenforceable (an “Invalidity Claim”), whether as a defense in an infringement action brought by Infinity or Purdue MICL pursuant to Section 7.3, in a declaratory judgment action or in a Third Party Infringement Claim brought against Infinity or PurdueMICL, the Party Controlling such Patent Right (or Infinity with respect to any Joint Patent Right) shall have the first right, but not the obligation, to defend such Invalidity Claim and the other Party shall cooperate with the Party Controlling such Patent Right in preparing and formulating a response to such Invalidity Claim. If Infinity does not defend an Invalidity Claim brought against an Infinity Patent Right in the MICL Territory or Purdue MICL does not defend an Invalidity Claim brought against a Purdue MICL Patent Right in the Infinity Territory, the other Party may defend such Invalidity Claim and the coordination provisions of Section 7.3(c) shall apply to such Invalidity Claim, mutatis mutandis as they apply to Licensed IP Infringement suits. Neither Party shall, without the consent of the other Party, settle or compromise any Invalidity Claim in any manner which would (a) have an adverse effect on such other Party’s Patent Rights or such other Party’s rights to Develop, Manufacture or Commercialize a Royalty Bearing Product Program Rights hereunder or (b) be an admission of liability on behalf of such other Party (provided, however, that the Party initiating such suit may settle such suit without such consent if such settlement involves only the receipt of money from, or the payment of money to, such Third Party and the Party initiating such suit makes all such payments to such Third Party). The Party defending such Invalidity Claim shall bear all expenses with respect thereto and such Party’s counsel shall act as the ministerial liaison with the court, except (i) to the extent such Invalidity Claim is raised as a defense in an infringement action brought by Infinity or Purdue MICL pursuant to Section 7.3, in which case the expense provisions of Section 7.3 shall apply and the counsel to such Party shall act as the ministerial liaison with the court, and (ii) to the extent such Invalidity Claim is raised in a Third Party Infringement Claim brought against PurdueMICL, in which case Purdue MICL shall bear all expenses with respect thereto and shall act as the ministerial liaison with the court.