Common use of Patent Invalidity Claim Clause in Contracts

Patent Invalidity Claim. Each of the Parties shall promptly notify the other in the event of any challenge of invalidity or unenforceability by any Third Party against an Adamas Memantine Patent Right of which it becomes aware, including any nullity, revocation, reexamination or compulsory license proceeding (each, an “Invalidity Claim”). Adamas and Forest will cooperate through the JIPWG with respect to developing a strategy for the defense of any Invalidity Claim. [*] shall have the first right, but not the obligation, to defend against any such action against an Adamas Memantine Patent Right in the Territory, in its own name, and the costs of any such defense shall be at [*] expense; provided that [*] shall have the right to review and comment on the documentation, filings and communications related to such defense and, provided further that, [*] shall [*] [*] reasonable proposals or comments with respect to such documentation, filings and communications; and [*] shall [*] Adamas’ proposals or comments [*] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule 406 of the Securities Act of 1933, as amended. [*]. [*], upon request of [*], agrees to join in any such action and to cooperate reasonably with [*]; provided that [*] shall promptly reimburse all reasonable, documented, out-of-pocket expenses (including reasonable outside counsel fees and expenses) actually and reasonably incurred by [*] in connection with such cooperation. [*], if [*] does not defend against any such action involving such Adamas Memantine Patent Right within [*] of a request from [*] to do so, then [*] shall have the right, but not the obligation, to defend such action and any such defense shall be at [*] expense. [*], upon request of [*], agrees to join in any such action and to cooperate reasonably with [*], provided that [*] shall promptly reimburse all reasonable, documented, out-of-pocket expenses (including reasonable outside counsel fees and expenses) actually and reasonably incurred by [*] in connection with such cooperation. [*] right to defend against any such action involving an Adamas Memantine Patent Right under this Section 7.6 shall [*]. Notwithstanding the foregoing, if (A) the defending Party’s intended position in the defense of any Invalidity Claim would be reasonably expected to have a material adverse effect on the non-defending Party’s interest in and rights to the Adamas Intellectual Property (including the licenses granted hereunder) or the Commercialization of the Products in the Field in the non-defending Party’s respective territory and (B) the non-defending Party notifies the defending Party of its objection to such intended position with respect to the defense of such Invalidity Claim, the Parties shall meet and discuss the non-defending Party’s objection in good faith and use reasonable efforts to determine a mutually agreeable position, provided that if the Parties fail to agree and the non-defending Party maintains its objection, [*] in the defense of such Invalidity Claim. This Section 7.6 shall apply mutatis mutandis with respect to the Adamas Patent Rights that are not Adamas Memantine Patent Rights if the Invalidity Claim arises in connection with the enforcement of an Adamas IP Infringement Claim pursuant to Section 7.4 or an Adamas Paragraph IV Claim pursuant to Section 7.11, with the Party who is controlling such enforcement having the first right to defend against such Invalidity Claim.

Patent Invalidity Claim. Each of the Parties shall promptly notify the other in the event of any challenge of invalidity legal or unenforceability administrative action by any Third Party against an Adamas Memantine a Program Patent Right exclusively licensed to Schering-Plough, Joint Patent Right exclusively licensed to Schering-Plough or AVEO Patent Right exclusively licensed to Schering-Plough of which it becomes aware, including any opposition, nullity, revocation, reexamination or compulsory license proceeding proceeding. (eacha) In the case of the Joint Patent Rights exclusively licensed to Schering-Plough or Program Patent Rights exclusively licensed to Schering-Plough, an “Invalidity Claim”). Adamas and Forest will cooperate through the JIPWG with respect to developing a strategy for the defense of any Invalidity Claim. [*] Schering-Plough shall have the first right, but not the obligation, to defend against any such action against an Adamas Memantine Patent Right in the Territory, in its own name, and the costs of any such defense shall be at [*] Schering-Plough’s expense; provided that [*] shall have . Each Party at the right to review and comment on the documentation, filings and communications related to such defense and, provided further that, [*] shall [*] [*] reasonable proposals or comments with respect to such documentation, filings and communications; and [*] shall [*] Adamas’ proposals or comments [*] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule 406 request of the Securities Act of 1933, as amended. [*]. [*], upon request of [*]other Party, agrees to join in any such action and to cooperate reasonably with [*]the other Party; provided that [*] Schering-Plough shall promptly reimburse all reasonable, documented, out-of-pocket expenses (including reasonable outside counsel fees and expenses) actually and reasonably incurred by [*] AVEO in connection with such cooperation. [*], if [*] If Schering-Xxxxxx does not defend against any such action involving such Adamas Memantine Patent Right within [*] of a request from [*] to do soRight, then [*] AVEO shall have the right, but not the obligation, to defend such action and any such defense shall be at [*] AVEO’s expense. [*]If required by Law, Xxxxxxxx-Xxxxxx, upon request of [*]AVEO, agrees to join in any such action and to cooperate reasonably with [*], AVEO; provided that [*] AVEO shall promptly reimburse all reasonable, documented, out-of-pocket expenses (including reasonable outside counsel fees and expenses) actually and reasonably incurred by [*] Schering-Plough in connection with such cooperation. (b) In the case of AVEO Patent Rights solely owned by or exclusively licensed to AVEO that are exclusively licensed to Schering-Plough, AVEO shall have the first right, but not the obligation, to defend against any such action and the costs of any such defense shall be at AVEO’s expense. Each Party at the request of the other Party, agrees to cooperate reasonably with the other Party; provided that AVEO shall promptly reimburse all out-of-pocket expenses (including reasonable counsel fees and expenses) actually incurred by Schering-Plough in connection with such cooperation. [*] right to If AVEO does not defend against any such action involving an Adamas Memantine such AVEO Patent Right under this Section 7.6 Right, then Schering-Plough shall [*]have the right, but not the obligation, to defend such action and any such defense shall be at Schering-Plough’s expense. Notwithstanding the foregoingAVEO, if (A) the defending Party’s intended position upon request of Xxxxxxxx-Xxxxxx, agrees to join in the defense of any Invalidity Claim would be such action and to cooperate reasonably expected to have a material adverse effect on the nonwith Schering-defending Party’s interest in and rights to the Adamas Intellectual Property Plough; provided that Schering-Plough shall promptly reimburse all out-of-pocket expenses (including the licenses granted hereunderreasonable counsel fees and expenses) or the Commercialization of the Products in the Field in the non-defending Party’s respective territory and (B) the non-defending Party notifies the defending Party of its objection to such intended position with respect to the defense of such Invalidity Claim, the Parties shall meet and discuss the non-defending Party’s objection in good faith and use reasonable efforts to determine a mutually agreeable position, provided that if the Parties fail to agree and the non-defending Party maintains its objection, [*] in the defense of such Invalidity Claim. This Section 7.6 shall apply mutatis mutandis with respect to the Adamas Patent Rights that are not Adamas Memantine Patent Rights if the Invalidity Claim arises actually incurred by AVEO in connection with the enforcement of an Adamas IP Infringement Claim pursuant to Section 7.4 or an Adamas Paragraph IV Claim pursuant to Section 7.11, with the Party who is controlling such enforcement having the first right to defend against such Invalidity Claimcooperation.

Patent Invalidity Claim. Each of the Parties shall promptly notify the other in the event of any challenge of invalidity or unenforceability by any Third Party against an Adamas Memantine Patent Right of which it becomes aware, including any nullity, revocation, reexamination or compulsory license proceeding (each, an “Invalidity Claim”). Adamas and Forest will cooperate through the JIPWG with respect to developing a strategy for the defense of any Invalidity Claim. [*[ * ] shall have the first right, but not the obligation, to defend against any such action against an Adamas Memantine Patent Right in the Territory, in its own name, and the costs of any such defense shall be at [*[ * ] expense; provided that [*[ * ] shall have the right to review and comment on the documentation, filings and communications related to such defense and, provided further that, [*[ * ] shall [*[ * ] [*[ * ] reasonable proposals or comments with respect to such documentation, filings and communications; and [*[ * ] shall [*[ * ] Adamas’ proposals or comments [ * ]. [ * ], upon request of [ * ], agrees to join in any such action and to cooperate reasonably with [ * ]; provided that [ * ] shall promptly reimburse all reasonable, documented, out-of-pocket expenses (including reasonable outside counsel fees and expenses) actually and reasonably incurred by [ * ] in connection with such cooperation. [ * ], if [ * ] does not defend against any such action involving such Adamas Memantine Patent Right within [ * ] of a request from [ * ] to do so, then [ * ] shall have the right, but not the obligation, to defend such action and any such defense shall be at [ * ] expense. [ * ], upon request of [ * ], agrees to join in any such action and to cooperate reasonably with [ * ], provided that [ * ] shall promptly reimburse all reasonable, documented, out-of-pocket expenses (including reasonable outside counsel fees and expenses) actually and reasonably incurred by [ * ] in connection with such cooperation. [ * ] right to defend against any such action involving an Adamas Memantine Patent Right under [*] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule 406 of the Securities Act of 1933, as amended. [*]. [*], upon request of [*], agrees to join in any such action and to cooperate reasonably with [*]; provided that [*] shall promptly reimburse all reasonable, documented, out-of-pocket expenses (including reasonable outside counsel fees and expenses) actually and reasonably incurred by [*] in connection with such cooperation. [*], if [*] does not defend against any such action involving such Adamas Memantine Patent Right within [*] of a request from [*] to do so, then [*] shall have the right, but not the obligation, to defend such action and any such defense shall be at [*] expense. [*], upon request of [*], agrees to join in any such action and to cooperate reasonably with [*], provided that [*] shall promptly reimburse all reasonable, documented, out-of-pocket expenses (including reasonable outside counsel fees and expenses) actually and reasonably incurred by [*] in connection with such cooperation. [*] right to defend against any such action involving an Adamas Memantine Patent Right under this Section 7.6 shall [*[ * ]. Notwithstanding the foregoing, if (A) the defending Party’s intended position in the defense of any Invalidity Claim would be reasonably expected to have a material adverse effect on the non-defending Party’s interest in and rights to the Adamas Intellectual Property (including the licenses granted hereunder) or the Commercialization of the Products in the Field in the non-defending Party’s respective territory and (B) the non-defending Party notifies the defending Party of its objection to such intended position with respect to the defense of such Invalidity Claim, the Parties shall meet and discuss the non-defending Party’s objection in good faith and use reasonable efforts to determine a mutually agreeable position, provided that if the Parties fail to agree and the non-defending Party maintains its objection, [*[ * ] in the defense of such Invalidity Claim. This Section 7.6 shall apply mutatis mutandis with respect to the Adamas Patent Rights that are not Adamas Memantine Patent Rights if the Invalidity Claim arises in connection with the enforcement of an Adamas IP Infringement Claim pursuant to Section 7.4 or an Adamas Paragraph IV Claim pursuant to Section 7.11, with the Party who is controlling such enforcement having the first right to defend against such Invalidity Claim.

Patent Invalidity Claim. Each of the Parties shall promptly notify the other in the event of any challenge of invalidity or unenforceability by any If a Third Party against an Adamas Memantine at any time asserts a Claim that any NPS Patent Right of which it becomes awareRights, including any nullity, revocation, reexamination Nycomed Patent Rights or compulsory license proceeding Joint Patent Rights are invalid or otherwise unenforceable (each, an “Invalidity Claim”). Adamas and Forest will cooperate through , control of the JIPWG with respect response to developing a strategy for the defense of any Invalidity Claim. [*] shall have the first right, but not the obligation, to defend against any such action against an Adamas Memantine Patent Right Claim in the TerritoryTerritory shall, as between the Parties, be determined in its own name, and the costs of any such defense shall be at [*] expense; provided that [*] shall have the right to review and comment on the documentation, filings and communications related to such defense and, provided further that, [*] shall [*] [*] reasonable proposals or comments same manner as enforcement rights with respect to such documentationNPS Patent Rights, filings Nycomed Patent Rights or Joint Patent Rights are determined pursuant to Sections 8.3(b) and communications; and [*] shall [*] Adamas’ proposals or comments [*] = Certain confidential information contained in this document8.3(c), marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant time periods set forth in Section 8.3(c) shortened where necessary to Rule 406 provide the Secondary Enforcement Rights Party sufficient time to respond without a loss of the Securities Act of 1933rights, as amended. [*]. [*], upon request of [*], agrees to join in any such action and to cooperate reasonably with [*]; provided that [*] shall promptly reimburse all reasonable, documented, out-of-pocket expenses (including reasonable outside counsel fees and expenses) actually and reasonably incurred by [*] in connection with such cooperation. [*], if [*] does not defend against any such action involving such Adamas Memantine Patent Right within [*] of a request from [*] to do so, then [*] shall have the right, but not the obligation, to defend such action and any such defense shall be at [*] expense. [*], upon request of [*], agrees to join in any such action and to cooperate reasonably with [*], provided that [*] shall promptly reimburse all reasonable, documented, out-of-pocket expenses (including reasonable outside counsel fees and expenses) actually and reasonably incurred by [*] in connection with such cooperation. [*] right to defend against any such action involving an Adamas Memantine Patent Right under this Section 7.6 shall [*]. Notwithstanding the foregoing, if (A) the defending Party’s intended position in the defense of any Invalidity Claim would be reasonably expected to have a material adverse effect on the non-defending Party’s interest in and rights to the Adamas Intellectual Property (including the licenses granted hereunder) or the Commercialization of the Products in the Field in the non-defending Party’s respective territory and (B) the non-defending Party notifies the defending Party of its objection to such intended position with respect to the defense of such Invalidity Claim, the Parties shall meet and discuss the non-defending Party’s objection in good faith and use reasonable efforts to determine a mutually agreeable position, provided that if the Parties fail to agree and the non-defending controlling Party maintains its objection, [*] shall cooperate with the controlling Party in the defense preparation and formulation of such response, and in taking other steps reasonably necessary to respond, to such Invalidity Claim. This Section 7.6 Neither Party shall apply mutatis mutandis with respect to settle or compromise any Invalidity Claim without the Adamas Patent Rights that are consent of the other Party, which consent shall not Adamas Memantine Patent Rights if the be unreasonably withheld or delayed. If an Invalidity Claim arises in connection with a suit or action referred to in Section 8.3(b) or 8.3(c), the enforcement Parties shall confer with one another regarding the appropriateness of an Adamas IP Infringement Claim pursuant to Section 7.4 or an Adamas Paragraph IV Claim pursuant to Section 7.11, with having the Party who that is controlling such enforcement having suit or action in accordance with Section 8.3(b) or Section 8.3(c) continue to control such suit or action and the first right sharing of cost and expenses with respect to defend against such suit or action; provided that in the absence of any agreement by the Parties to the contrary, control of the Invalidity ClaimClaim shall remain with the same Party, and the costs and expenses of responding to the Invalidity Claim shall be borne by the Parties in accordance with the provisions of Section 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 expenses of responding to the Invalidity Claim shall be treated as Development Costs and borne by the Parties accordingly.

Patent Invalidity Claim. Each of the Parties shall promptly notify the other in the event of any challenge of invalidity or unenforceability by any Third Party against an Adamas Memantine Patent Right of which it becomes aware, including any nullity, revocation, reexamination or compulsory license proceeding (each, an “Invalidity Claim”). Adamas Xxxxxx and Forest Xxxxxx will cooperate through the JIPWG with respect to developing a strategy for the defense of any Invalidity Claim. [*] shall have the first right, but not the obligation, to defend against any such action against an Adamas Memantine Patent Right in the Territory, in its own name, and the costs of any such defense shall be at [*] expense; provided that [*] shall have the right to review and comment on the documentation, filings and communications related to such defense and, provided further that, [*] shall [*] [*] reasonable proposals or comments with respect to such documentation, filings and communications; and [*] shall [*] Adamas’ proposals or comments [*] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule 406 of the Securities Act of 1933, as amended. [*]. [*], upon request of [*], agrees to join in any such action and to cooperate reasonably with [*]; provided that [*] shall promptly reimburse all reasonable, documented, out-of-pocket expenses (including reasonable outside counsel fees and expenses) actually and reasonably incurred by [*] in connection with such cooperation. [*], if [*] does not defend against any such action involving such Adamas Xxxxxx Memantine Patent Right within [*] of a request from [*] to do so, then [*] shall have the right, but not the obligation, to defend such action and any such defense shall be at [*] expense. [*], upon request of [*], agrees to join in any such action and to cooperate reasonably with [*], provided that [*] shall promptly reimburse all reasonable, documented, out-of-pocket expenses (including reasonable outside counsel fees and expenses) actually and reasonably incurred by [*] in connection with such cooperation. [*] right to defend against any such action involving an Adamas Xxxxxx Memantine Patent Right under this Section 7.6 shall [*]. Notwithstanding the foregoing, if (A) the defending Party’s intended position in the defense of any Invalidity Claim would be reasonably expected to have a material adverse effect on the non-defending Party’s interest in and rights to the Adamas Intellectual Property (including the licenses granted hereunder) or the Commercialization of the Products in the Field in the non-defending Party’s respective territory and (B) the non-defending Party notifies the defending Party of its objection to such intended position with respect to the defense of such Invalidity Claim, the Parties shall meet and discuss the non-defending Party’s objection in good faith and use reasonable efforts to determine a mutually agreeable position, provided that if the Parties fail to agree and the non-defending Party maintains its objection, [*] in the defense of such Invalidity Claim. This Section 7.6 shall apply mutatis mutandis with respect to the Adamas Patent Rights that are not Adamas Xxxxxx Memantine Patent Rights if the Invalidity Claim arises in connection with the enforcement of an Adamas IP Infringement Claim pursuant to Section 7.4 or an Adamas Paragraph IV Claim pursuant to Section 7.11, with the Party who is controlling such enforcement having the first right to defend against such Invalidity Claim.