Common use of Patent Litigations Clause in Contracts

Patent Litigations. Schering Corporation (“Schering”) has instituted lawsuits against IMPAX for patent infringement with respect to the D-12 Product and the D-24 Product. In Schering Corp. v. IMPAX Laboratories, Inc., Civil Action No. 01-0520 (D.N.J.), Schering has charged infringement of U.S. Patent 4,659,716 (the “‘716 patent”) with respect to the D-12 Product. In Schering Corp. v. IMPAX Laboratories, Inc., Civil Action No. 01-0009 (D.N.J.), Schering has charged infringement of both the ‘716 patent and U.S. Patent 5,314,697 (the “‘697 patent”) with respect to the D-24 Product (collectively, Civil Action No. 01-0520 (D.N.J.) and Civil Action No. 01-0009 (D.N.J.), are referred to herein as the “Patent Litigations”). Schering has also alleged in both actions that it may be necessary in the future to expand the actions to include claims for infringement of U.S. Patent 4,863,931 (the “‘931 patent”). Both of these cases have been consolidated, for pretrial purposes, with other patent infringement actions that Schering has filed against other defendants, with this consolidated action identified as Schering Corp. v. Geneva Pharmaceuticals, Inc., Civil Action Nos. 98-1259 (JAG)(GDH); 99-2237 (JAG)(GDH); 00-0255 (JAG)(GDH); 99-2820 (JAG)(GDH); 00-1439 (JAG)(GDH); 00-1657 (JAG)(GDH); 00-2944 (JAG)(GDH); 01-0009 (JAG)(GDH); 01-0279 (JAG)(GDH); 01-0520 (JAG)(GDH); and 02-0328 (JAG)(GDH). IMPAX agrees to diligently defend the allegations against it in the Patent Litigations and to use all reasonable efforts to have the ‘716 and ‘697 patents (and also the ‘931 patent, to the extent any claims are made in the future of infringement of the ‘931 patent) declared invalid, unenforceable and/or not infringed by the D-12 Product and D-24 Product, including, but not limited to, by defending all appeals by Schering, and by filing and diligently prosecuting all reasonable appeals of any ruling or decision adverse to IMPAX. WCH agrees to reasonably cooperate with IMPAX in the conduct of the Patent Litigations and other proceedings involving WCH. All liabilities, damages attorneys fees and other costs and expenses incurred in connection with defending the Patent Litigations (including any claim of infringement of the ‘931 patent) and defending and prosecuting all related appeals shall be borne by IMPAX. IMPAX shall keep WCH promptly informed of any material developments and shall from time to time consult with WCH regarding the status of the Patent Litigations and shall provide WCH with copies of all documents, not containing Schering’s confidential information, which are filed in, and all unprivileged written communications relating to the Patent Litigations. Notwithstanding anything to the contrary in this Agreement but subject to the next sentence, IMPAX shall have no obligation to supply either Product to WCH prior to the earlier of (i) a United States District Court decision that claims 1 and 3 of the ‘716 Patent are either invalid, unenforceable or not infringed by such Product or (ii) October 21, 2004 and IMPAX shall have no obligation to supply the D-24 Product to WCH prior to the earlier of (i) a United States District Court decision that the ‘697 Patent is either invalid, unenforceable or not infringed by the D-24 Product or (ii) April 23, 2013, unless after July 25, 2003 WCH provides IMPAX with an indemnity agreement acceptable to IMPAX for any damages assessed against IMPAX for infringement of such Patent prior to the occurrence of the first of such events, such acceptance by IMPAX not to be unreasonably withheld or delayed. The foregoing shall not relieve IMPAX of its obligation to supply WCH with Product solely for uses reasonably related to the development and submission of information under the FD&C Act.

Patent Litigations. Schering Corporation (“"Schering”") has instituted lawsuits against IMPAX for patent infringement with respect to the D-12 Product and the D-24 Product. In Schering Corp. v. IMPAX Laboratories, Inc., Civil Action No. 01-0520 (D.N.J.), Schering has charged infringement of U.S. Patent 4,659,716 (the “‘"'716 patent”") with respect to the D-12 Product. In Schering Corp. v. IMPAX Laboratories, Inc., Civil Action No. 01-0009 (D.N.J.), Schering has charged infringement of both the ‘'716 patent and U.S. Patent 5,314,697 (the “‘"'697 patent”") with respect to the D-24 Product (collectively, Civil Action No. 01-0520 (D.N.J.) and Civil Action No. 01-0009 (D.N.J.), are referred to herein as the “"Patent Litigations”"). Schering has also alleged in both actions that it may be necessary in the future to expand the actions to include claims for infringement of U.S. Patent 4,863,931 (the “‘"'931 patent”"). Both of these cases have been consolidated, for pretrial purposes, with other patent infringement actions that Schering has filed against other defendants, with this consolidated action identified as Schering Corp. v. Geneva Pharmaceuticals, Inc., Civil Action Nos. 98-1259 (JAG)(GDH); 99-2237 (JAG)(GDH); 00-0255 (JAG)(GDH); 99-2820 (JAG)(GDH); 00-1439 (JAG)(GDH); 00-1657 (JAG)(GDH); 00-2944 (JAG)(GDH); 01-0009 (JAG)(GDH); 01-0279 (JAG)(GDH); 01-0520 (JAG)(GDH); and 02-0328 (JAG)(GDH). IMPAX agrees to diligently defend the allegations against it in the Patent Litigations and to use all reasonable efforts to have the ‘'716 and ‘'697 patents (and also the ‘'931 patent, to the extent any claims are made in the future of infringement of the ‘'931 patent) declared invalid, unenforceable and/or not infringed by the D-12 Product and D-24 Product, including, but not limited to, by defending all appeals by Schering, and by filing and diligently prosecuting all reasonable appeals of any ruling or decision adverse to IMPAX. WCH agrees to reasonably cooperate with IMPAX in the conduct of the Patent Litigations and other proceedings involving WCH. All liabilities, damages attorneys fees and other costs and expenses incurred in connection with defending the Patent Litigations (including any claim of infringement of the ‘'931 patent) and defending and prosecuting all related appeals shall be borne by IMPAX. IMPAX shall keep WCH promptly informed of any material developments and shall from time to time consult with WCH regarding the status of the Patent Litigations and shall provide WCH with copies of all documents, not containing Schering’s 's confidential information, which are filed in, and all unprivileged written communications relating to the Patent Litigations. Notwithstanding anything to the contrary in this Agreement but subject to the next sentence, IMPAX shall have no obligation to supply either Product to WCH prior to the earlier of (i) a United States District Court decision that claims 1 and 3 of the ‘`716 Patent are either invalid, unenforceable or not infringed by such Product or (ii) October 21, 2004 and IMPAX shall have no obligation to supply the D-24 Product to WCH prior to the earlier of (i) a United States District Court decision that the ‘`697 Patent is either invalid, unenforceable or not infringed by the D-24 Product or (ii) April 23, 2013, unless after July 25, 2003 WCH provides IMPAX with an indemnity agreement acceptable to IMPAX for any damages assessed against IMPAX for infringement of such Patent prior to the occurrence of the first of such events, such acceptance by IMPAX not to be unreasonably withheld or delayed. The foregoing shall not relieve IMPAX of its obligation to supply WCH with Product solely for uses reasonably related to the development and submission of information under the FD&C Act.

Patent Litigations. Schering Corporation (“"Schering”") has instituted lawsuits against IMPAX for patent infringement with respect to the D-12 Product and the D-24 Product. In Schering Corp. v. IMPAX Laboratories, Inc., Civil Action No. 01-0520 (D.N.J.), Schering has charged infringement of U.S. Patent 4,659,716 (the “‘"'716 patent”") with respect to the D-12 Product. In Schering Corp. v. IMPAX Laboratories, Inc., Civil Action No. 01-0009 (D.N.J.), Schering has charged infringement of both the ‘'716 patent and U.S. Patent 5,314,697 (the “‘"'697 patent”") with respect to the D-24 Product (collectively, Civil Action No. 01-0520 (D.N.J.) and Civil Action No. 01-0009 (D.N.J.), are referred to herein as the “"Patent Litigations”"). Schering has also alleged in both actions that it may be necessary in the future to expand the actions to include claims for infringement of U.S. Patent 4,863,931 (the “‘"'931 patent”"). Both of these cases have been consolidated, for pretrial purposes, with other patent infringement actions that Schering has filed against other defendants, with this consolidated action identified as Schering Corp. v. Geneva Pharmaceuticals, Inc., Civil Action Nos. 98-1259 (JAG)(GDH); 99-2237 (JAG)(GDH); 00-0255 (JAG)(GDH); 99-2820 (JAG)(GDH); 00-1439 (JAG)(GDH); 00-1657 (JAG)(GDH); 00-2944 (JAG)(GDH); 01-0009 (JAG)(GDH); 01-0279 (JAG)(GDH); 01-0520 (JAG)(GDH); and 02-0328 (JAG)(GDH). IMPAX agrees to diligently defend the allegations against it in the Patent Litigations and to use all reasonable efforts to have the ‘'716 and ‘'697 patents (and also the ‘'931 patent, to the extent any claims are made in the future of infringement of the ‘'931 patent) declared invalid, unenforceable and/or not infringed by the D-12 Product and D-24 Product, including, but not limited to, by defending all appeals by Schering, and by filing and diligently prosecuting all reasonable appeals of any ruling or decision adverse to IMPAX. WCH agrees to reasonably cooperate with IMPAX in the conduct of the Patent Litigations and other proceedings involving WCH. All liabilities, damages attorneys fees and other costs and expenses incurred in connection with defending the Patent Litigations (including any claim of infringement of the ‘'931 patent) and defending and prosecuting all related appeals shall be borne by IMPAX. IMPAX shall keep WCH promptly informed of any material developments and shall from time to time consult with WCH regarding the status of the Patent Litigations and shall provide WCH with copies of all documents, not containing Schering’s 's confidential information, which are filed in, and all unprivileged written communications relating to the Patent Litigations. Notwithstanding anything to the contrary in this Agreement but subject to the next sentence, IMPAX shall have no obligation to supply either Product to WCH prior to the earlier of (i) a United States District Court decision that claims 1 and 3 of the ‘716 Patent are either invalid, unenforceable or not infringed by such Product or (ii) October 21, 2004 and IMPAX shall have no obligation to supply the D-24 Product to WCH prior to the earlier of (i) a United States District Court decision that the ‘697 Patent is either invalid, unenforceable or not infringed by the D-24 Product or (ii) April 23, 2013, unless after July 25, 2003 WCH provides IMPAX with an indemnity agreement acceptable to IMPAX for any damages assessed against IMPAX for infringement of such Patent prior to the occurrence of the first of such events, such acceptance by IMPAX not to be unreasonably withheld or delayed. The foregoing shall not relieve IMPAX of its obligation to supply WCH with Product solely for uses reasonably related to the development and submission of information under the FD&C Act.Patent