Common use of PATENT PROTECTION Clause in Contracts

PATENT PROTECTION. A. Patent Protection 1) MDC hereby declares that any MDC Parts furnished under this Agreement do not infringe or misappropriate any U.S. or foreign patent, trademark or copyright owned by any third party. If, however, any such MDC Part does infringe any patent, trademark or copyright owned by a third party, and as a result of such infringement or misappropriation Federal Express or any lessor or lessee of any Aircraft is restrained from use of such item, MDC will, at MDC's option and expense, either: a) procure for Federal Express the right to use the item free of any liability for such infringement or misappropriation; or b) modify or replace the item with a non-infringing substitute which otherwise complies with all requirements of this Agreement. 2) MDC shall have no obligations or liability under Paragraph A.1) above or Paragraph A.4) below with respect to any claim that an MDC Part furnished under this Agreement infringes or misappropriates a U.S. or foreign patent, trademark or copyright owned by a third party, unless: a) Federal Express refrains from making any admission of liability, except as required by any applicable law or regulation, without the prior written approval of MDC; b) Federal Express uses all commercially reasonable efforts to notify MDC in writing of any claim within thirty (30) days after Federal Express has been restrained from the use of such item or ten (10) days after service of any suit or action, or within such shorter period as is reasonably required to enable MDC to defend the claim on time; c) MDC shall, at MDC's expense, have sole control of the defense against and settlement of any such claim to the extent that it relates to any item furnished by MDC under this Agreement provided that MDC shall have first acknowledged its obligations to defend and indemnify Federal Express hereunder; and d) Federal Express gives MDC all commercially reasonable assistance, at MDC's expense, in the defense of any such claim. 3) MDC shall have no obligation or liability with respect to any claim under Paragraph 30.A.1 above that an MDC Part furnished under this Agreement infringes or misappropriates a U.S. or foreign patent, trademark or copyright owned by a third party, when such item is manufactured pursuant to detailed Specifications or engineering drawings or designs furnished to MDC by Federal Express. 4) EXCEPT AS PROVIDED ABOVE, AND IN ADDITION TO THE LIABILITY OF MDC UNDER PARAGRAPH 30.A.1) ABOVE, MDC HEREBY AGREES TO INDEMNIFY, DEFEND AND HOLD HARMLESS FEDERAL EXPRESS AND ITS RESPECTIVE OFFICERS, DIRECTORS, EMPLOYEES, AFFILIATES AND AGENTS AGAINST ANY AND ALL LIABILITIES, CLAIMS, PROCEEDINGS, PENALTIES, FINES OR OTHER SANCTIONS, JUDGMENTS, CHARGES, TAXES, IMPOSITIONS, LIENS, COSTS AND EXPENSES WHICH MAY AT ANY TIME BE MADE OR CLAIMED BY ANY PERSON ARISING IN ANY MANNER OUT OF ANY CLAIM THAT ANY MDC PART FURNISHED UNDER THIS AGREEMENT INFRINGES OR MISAPPROPRIATES ANY U.S. OR FOREIGN PATENT, TRADEMARK OR COPYRIGHT OWNED BY ANY THIRD PARTY. 9/11/96 AGREEMENT NO. DAC 96-29M 5) EXCEPT AS PROVIDED BELOW, FEDERAL EXPRESS HEREBY AGREES TO INDEMNIFY, DEFEND AND HOLD HARMLESS MDC AND ITS RESPECTIVE OFFICERS, DIRECTORS, EMPLOYEES, AFFILIATES AND AGENTS AGAINST ANY AND ALL LIABILITIES, CLAIMS, PROCEEDINGS, PENALTIES, FINES OR OTHER SANCTIONS, JUDGMENTS, CHARGES, TAXES, IMPOSITIONS, LIENS, COSTS AND EXPENSES WHICH MAY AT ANY TIME BE MADE OR CLAIMED BY ANY PERSON ARISING IN ANY MANNER OUT OF ANY CLAIM THAT ANY FEDERAL EXPRESS SUPPLIED PART FURNISHED UNDER THIS AGREEMENT INFRINGES OR MISAPPROPRIATES ANY U.S. OR FOREIGN PATENT, TRADEMARK OR COPYRIGHT OWNED BY ANY THIRD PARTY. 6) Federal Express shall have no obligations or liability under Paragraph A.5) above with respect to any claim that a Federal Express Supplied Part furnished under this Agreement infringes or misappropriates a U.S. or foreign patent, trademark or copyright owned by a third party, unless: a) MDC refrains from making any admission of liability, except as required by any applicable law or regulation, without the prior written approval of Federal Express; b) MDC uses all commercially reasonable efforts to notify Federal Express in writing of any claim within thirty (30) days after MDC has been restrained from the use of such item or ten (10) days after service of any suit or action, or within such shorter period as is reasonably required to enable Federal Express to defend the claim on time; c) Federal Express shall, at Federal Express' expense, have sole control of the defense against and settlement of any such claim to the extent that it relates to any item 9/11/96 AGREEMENT NO. DAC 96-29M furnished by Federal Express under this Agreement provided that Federal Express shall have first acknowledged its obligations to defend and indemnify MDC hereunder; and d) MDC gives Federal Express all commercially reasonable assistance, at Federal Express' expense, in the defense of any such claim. 9/11/96 AGREEMENT NO. DAC 96-29M A. The Services, and each Aircraft upon which the Services have been performed, shall at the time of Redelivery meet the FAA requirements for airworthiness certification and be so certified under all the conditions set forth in the Specifications. B. Subject to the provisions of Article 19 entitled Federal Express Supplied Parts, if any change, modification or addition affecting a Service is required prior to Redelivery pursuant to any United States law or governmental regulation or interpretation thereof by a United States governmental agency in order to meet the FAA requirements for airworthiness certification of any Aircraft, such change, addition or modification shall be made in each undelivered Aircraft affected. MDC shall bear the cost of complying with FAA airworthiness certification requirements which are required to be incorporated in any Aircraft prior to its Redelivery. Any delay in delivery of an Aircraft by reason of such change, addition or modification shall be deemed an Excusable Delay and the Scheduled Redelivery Date of such Aircraft shall be adjusted to the extent of such delay. Any such change, addition or modification effective after Aircraft delivery shall be the sole responsibility of Federal Express.

PATENT PROTECTION. A. Patent Protection 1(i) MDC hereby declares that any MDC Parts furnished under this Agreement do not infringe or misappropriate any U.S. or foreign patent, trademark or copyright owned by any third party. If, however, any such MDC Part does infringe any patent, trademark or copyright owned by a third party, and as a result of such infringement or misappropriation Federal Express or any lessor or lessee of any Aircraft is restrained from use of such item, MDC will, at MDC's option and expense, either: a) procure for Federal Express LICENSOR shall always have the right to use prosecute any entity it believes infringes upon its INTELLECTUAL PROPERTY. LICENSEE is obligated to render all reasonable assistance requested by LICENSOR in connection with any action being pursued by LICENSOR; (ii) In the item free event that LICENSEE advises LICENSOR of a potential infringement upon LICENSOR'S INTELLECTUAL PROPERTY and LICENSOR elects not to exercise its right per (i) above, then LICENSEE shall have the right to prosecute any liability for entity it believes infringes upon LICENSOR'S INTELLECTUAL PROPERTY doing business in the UDS Market. LICENSOR is obligated to render all reasonable assistance requested by LICENSEE at LICENSEE's expense in connection with any action being pursued by LICENSEE including, without limitation, allowing LICENSEE to name LICENSOR as a named party where such infringement or misappropriationis required in order to bring an action against an infringer; or band (iii) modify or replace LICENSEE, at its own expense, has the item with a non-infringing substitute right to prosecute any entity which otherwise complies with all requirements LICENSEE believes infringes upon any technology owned by LICENSEE pursuant to Section 6 of this Agreement. 2) MDC . LICENSOR shall render all reasonable assistance to LICENSEE in connection with any suit relating to INTELLECTUAL PROPERTY to be defended by LICENSEE including, without limitation, allowing LICENSEE to name LICENSOR a named party where such is required in order to bring an action against an infringer and shall have no obligations or liability under Paragraph A.1) above or Paragraph A.4) below with respect the right to any claim that an MDC Part furnished under this Agreement infringes or misappropriates a U.S. or foreign patent, trademark or copyright owned be represented therein by a third party, unless: a) Federal Express refrains from making any admission advisory counsel of liability, except as required by any applicable law or regulation, without the prior written approval of MDC; b) Federal Express uses all commercially reasonable efforts to notify MDC in writing of any claim within thirty (30) days after Federal Express has been restrained from the use of such item or ten (10) days after service of any suit or action, or within such shorter period as is reasonably required to enable MDC to defend the claim on time; c) MDC shall, its choice at MDC's its expense, . LICENSEE shall have sole full control of the defense against and settlement of any such claim to the extent that it relates to any item furnished by MDC under this Agreement provided that MDC shall have first acknowledged its obligations to defend and indemnify Federal Express hereunder; and d) Federal Express gives MDC all commercially reasonable assistance, at MDC's expense, in the defense of any such claim. 3) MDC shall have no obligation or liability with respect to any claim under Paragraph 30.A.1 above that an MDC Part furnished under this Agreement infringes or misappropriates suit involving a U.S. or foreign patent, trademark or copyright owned by a third party, when such item is manufactured pursuant to detailed Specifications or engineering drawings or designs furnished to MDC by Federal Express. 4) EXCEPT AS PROVIDED ABOVE, AND IN ADDITION TO THE LIABILITY OF MDC UNDER PARAGRAPH 30.A.1) ABOVE, MDC HEREBY AGREES TO INDEMNIFY, DEFEND AND HOLD HARMLESS FEDERAL EXPRESS AND ITS RESPECTIVE OFFICERS, DIRECTORS, EMPLOYEES, AFFILIATES AND AGENTS AGAINST ANY AND ALL LIABILITIES, CLAIMS, PROCEEDINGS, PENALTIES, FINES OR OTHER SANCTIONS, JUDGMENTS, CHARGES, TAXES, IMPOSITIONS, LIENS, COSTS AND EXPENSES WHICH MAY AT ANY TIME BE MADE OR CLAIMED BY ANY PERSON ARISING IN ANY MANNER OUT OF ANY CLAIM THAT ANY MDC PART FURNISHED UNDER THIS AGREEMENT INFRINGES OR MISAPPROPRIATES ANY U.S. OR FOREIGN PATENT, TRADEMARK OR COPYRIGHT OWNED BY ANY THIRD PARTY. 9/11/96 AGREEMENT NO. DAC 96-29M 5) EXCEPT AS PROVIDED BELOW, FEDERAL EXPRESS HEREBY AGREES TO INDEMNIFY, DEFEND AND HOLD HARMLESS MDC AND ITS RESPECTIVE OFFICERS, DIRECTORS, EMPLOYEES, AFFILIATES AND AGENTS AGAINST ANY AND ALL LIABILITIES, CLAIMS, PROCEEDINGS, PENALTIES, FINES OR OTHER SANCTIONS, JUDGMENTS, CHARGES, TAXES, IMPOSITIONS, LIENS, COSTS AND EXPENSES WHICH MAY AT ANY TIME BE MADE OR CLAIMED BY ANY PERSON ARISING IN ANY MANNER OUT OF ANY CLAIM THAT ANY FEDERAL EXPRESS SUPPLIED PART FURNISHED UNDER THIS AGREEMENT INFRINGES OR MISAPPROPRIATES ANY U.S. OR FOREIGN PATENT, TRADEMARK OR COPYRIGHT OWNED BY ANY THIRD PARTY. 6) Federal Express shall have no obligations or liability under Paragraph A.5) above with respect to any claim that a Federal Express Supplied Part furnished under this Agreement infringes or misappropriates a U.S. or foreign patent, trademark or copyright owned by a third party, unless: a) MDC refrains from making any admission potential infringement of liability, except as required by any applicable law or regulation, without its products using the prior written approval of Federal Express; b) MDC uses all commercially reasonable efforts to notify Federal Express in writing of any claim within thirty (30) days after MDC has been restrained from the use of such item or ten (10) days after service of any suit or action, or within such shorter period as is reasonably required to enable Federal Express to defend the claim on time; c) Federal Express shall, at Federal Express' expense, have sole control of the defense against and settlement of any such claim licensed technology to the extent that it relates does not conflict with an action by LICENSOR, but LICENSEE shall not be free to any item 9/11/96 AGREEMENT NOsettle the same without the consent of LICENSOR, which consent shall not be unreasonably withheld. DAC 96-29M furnished by Federal Express Where LICENSEE brings an action against an infringer under this Agreement provided that Federal Express (ii) above, LICENSEE shall have first acknowledged its obligations the right to defend and indemnify MDC hereunder; and d) MDC gives Federal Express retain all commercially reasonable assistance, amounts incurred at Federal Express' expense, settlement or as a result of a judgment rendered in the defense of any such claim. 9/11/96 AGREEMENT NO. DAC 96-29M A. The Services, and each Aircraft upon which the Services have been performed, shall at the time of Redelivery meet the FAA requirements for airworthiness certification and be so certified under all the conditions set forth in the Specificationscase. B. Subject to the provisions of Article 19 entitled Federal Express Supplied Parts, if any change, modification or addition affecting a Service is required prior to Redelivery pursuant to any United States law or governmental regulation or interpretation thereof by a United States governmental agency in order to meet the FAA requirements for airworthiness certification of any Aircraft, such change, addition or modification shall be made in each undelivered Aircraft affected. MDC shall bear the cost of complying with FAA airworthiness certification requirements which are required to be incorporated in any Aircraft prior to its Redelivery. Any delay in delivery of an Aircraft by reason of such change, addition or modification shall be deemed an Excusable Delay and the Scheduled Redelivery Date of such Aircraft shall be adjusted to the extent of such delay. Any such change, addition or modification effective after Aircraft delivery shall be the sole responsibility of Federal Express.

PATENT PROTECTION. A. 12.01 The patents and patent applications included in the Cedars-Sinai LAD Technology on the Effective Date of this Agreement are listed in Appendix D. All Project Patent Protection 1) MDC hereby declares that any MDC Parts furnished Rights are considered to be within the scope of Cedars-Sinai LAD Technology under this Agreement do Agreement. For those patents and patent applications listed in Appendix D, together with all Project Patent Rights, including any jointly owned patent applications within the Project Patent Rights, Cedars-Sinai agrees: (a) to use reasonable efforts in pursuing the pending patent applications to grant, including appeal within the relevant Patent Office(s) and/or re-filing the case (if appropriate under local practice), as Cedars-Sinai sees fit; provided that in the event Cedars-Sinai does not infringe or misappropriate any U.S. or foreign patentwish to prepare and file a patent application within the Project Patent Rights but Grace does, trademark or copyright owned by any third party. If, however, any Cedars-Sinai will proceed nevertheless in such MDC Part does infringe any patent, trademark or copyright owned by a third partypreparation and filing according to the provisions of this Paragraph 12.01, and as a result of such infringement or misappropriation Federal Express or any lessor or lessee of any Aircraft is restrained from use of such item, MDC will, at MDC's option and expense, either: a) procure for Federal Express the right to will use the item free of any liability for such infringement or misappropriation; orsame reasonable efforts as with other Project Patent Rights; (b) modify or replace the item with a non-infringing substitute which otherwise complies with all requirements of this Agreement. 2) MDC shall have no obligations or liability under Paragraph A.1) above or Paragraph A.4) below with respect to any claim that an MDC Part furnished under this Agreement infringes or misappropriates a U.S. or foreign patent, trademark or copyright owned by a third party, unless: a) Federal Express refrains from making any admission of liability, except as required by any applicable law or regulation, without the prior written approval of MDC; b) Federal Express uses all commercially reasonable efforts to notify MDC Grace promptly (that is, in writing of any claim sufficient time to reasonably permit Grace to review and respond within the time periods provided herein) and to consult with Grace on all activities in subparagraph (a), obtaining Grace approval on all significant patent drafting and prosecution decisions, provided that Grace responds within thirty (30) days after Federal Express has been restrained from the use of such item or ten (10) days after service of any suit or actiondays, or within such shorter period as is reasonably required to enable MDC sooner if a Patent Office deadline requires an earlier response; (c) to defend any patent within the claim Licensed Patent Rights in any opposition proceeding which may be brought with respect thereto, if such defense is recommended by patent counsel; provided, however, that if the parties do not agree on time; c) MDC shallwhether to proceed with such defense, at MDC's expensethe issue of whether to proceed may be submitted to an independent patent attorney to whom neither party has any reasonable objection, have sole control of for review and a binding recommendation whether to proceed with such defense; in the event the recommendation is to not defend the patent and Grace chooses to proceed nevertheless, out-of-pocket costs associated with such defense shall not serve as a credit against and settlement of any such claim to the extent that it relates to any item furnished by MDC under this Agreement provided that MDC shall have first acknowledged its obligations to defend and indemnify Federal Express hereunderfuture royalties; and (d) Federal Express gives MDC all commercially reasonable assistance, at MDC's expense, that no pending patent application will be intentionally abandoned and no patent allowed to lapse unless Grace is first consulted and agrees with that course of action; provided that in the defense case of any disagreement on the appropriate course of action, Cedars-Sinai agrees to continue the prosecution as suggested by Grace. All out-of-pocket costs associated with the listed activities are to be reimbursed by Grace. All such claim. 3) MDC costs paid by Grace shall have no obligation or liability with respect serve as a credit against future royalties owed to any claim under Paragraph 30.A.1 above that an MDC Part furnished under this Agreement infringes or misappropriates a U.S. or foreign patent, trademark or copyright owned by a third party, when such item is manufactured Cedars-Sinai pursuant to detailed Specifications or engineering drawings or designs furnished to MDC by Federal Express. 4) EXCEPT AS PROVIDED ABOVE, AND IN ADDITION TO THE LIABILITY OF MDC UNDER PARAGRAPH 30.A.1) ABOVE, MDC HEREBY AGREES TO INDEMNIFY, DEFEND AND HOLD HARMLESS FEDERAL EXPRESS AND ITS RESPECTIVE OFFICERS, DIRECTORS, EMPLOYEES, AFFILIATES AND AGENTS AGAINST ANY AND ALL LIABILITIES, CLAIMS, PROCEEDINGS, PENALTIES, FINES OR OTHER SANCTIONS, JUDGMENTS, CHARGES, TAXES, IMPOSITIONS, LIENS, COSTS AND EXPENSES WHICH MAY AT ANY TIME BE MADE OR CLAIMED BY ANY PERSON ARISING IN ANY MANNER OUT OF ANY CLAIM THAT ANY MDC PART FURNISHED UNDER THIS AGREEMENT INFRINGES OR MISAPPROPRIATES ANY U.S. OR FOREIGN PATENT, TRADEMARK OR COPYRIGHT OWNED BY ANY THIRD PARTY. 9/11/96 AGREEMENT NO. DAC 96-29M 5) EXCEPT AS PROVIDED BELOW, FEDERAL EXPRESS HEREBY AGREES TO INDEMNIFY, DEFEND AND HOLD HARMLESS MDC AND ITS RESPECTIVE OFFICERS, DIRECTORS, EMPLOYEES, AFFILIATES AND AGENTS AGAINST ANY AND ALL LIABILITIES, CLAIMS, PROCEEDINGS, PENALTIES, FINES OR OTHER SANCTIONS, JUDGMENTS, CHARGES, TAXES, IMPOSITIONS, LIENS, COSTS AND EXPENSES WHICH MAY AT ANY TIME BE MADE OR CLAIMED BY ANY PERSON ARISING IN ANY MANNER OUT OF ANY CLAIM THAT ANY FEDERAL EXPRESS SUPPLIED PART FURNISHED UNDER THIS AGREEMENT INFRINGES OR MISAPPROPRIATES ANY U.S. OR FOREIGN PATENT, TRADEMARK OR COPYRIGHT OWNED BY ANY THIRD PARTY. 6) Federal Express shall have no obligations or liability under Paragraph A.5) above with respect to any claim that a Federal Express Supplied Part furnished under this Agreement infringes or misappropriates a U.S. or foreign patent, trademark or copyright owned by a third party, unless: a) MDC refrains from making any admission of liabilityArticle IX, except as required provided in subparagraph (c) above. 12.02 In the event that Grace's license is terminated pursuant to Paragraph 16.05, responsibility for costs associated with all Licensed Patent Rights (other than jointly owned Project Rights) would revert back to Cedars-Sinai and Cedars-Sinai would no longer be obligated to consult with Grace for those cases. With respect to jointly owned Project Patent Rights, Cedars-Sinai would continue prosecution in consultation with Grace, and associated out-of-pocket expenses would be shared equally by Grace and Cedars-Sinai; provided, however, that if either party no longer wishes to bear the costs of such shared expenses for any applicable law or regulationProject Patent Rights, without the prior written approval of Federal Express; b) MDC uses all commercially reasonable efforts it may choose to notify Federal Express the other party in writing of any claim within thirty (30) days after MDC has been restrained from the use of such item or ten (10) days after service of any suit or action, or within such shorter period as is reasonably required to enable Federal Express to defend the claim on time; c) Federal Express shall, at Federal Express' expense, have sole control of the defense against its decision and settlement of any such claim assign its ownership rights to the extent that it relates other party; the assigning party shall thereafter have no further obligation to any item 9/11/96 AGREEMENT NO. DAC 96share the out-29M furnished by Federal Express under this Agreement provided that Federal Express shall have first acknowledged its obligations to defend and indemnify MDC hereunder; and d) MDC gives Federal Express all commercially reasonable assistance, at Federal Express' expense, in of-pocket expenses for the defense of any such claim. 9/11/96 AGREEMENT NO. DAC 96-29M A. The Services, and each Aircraft upon which the Services have been performed, shall at the time of Redelivery meet the FAA requirements for airworthiness certification and be so certified under all the conditions set forth in the Specificationsassigned Project Patent Rights. B. Subject to the provisions of Article 19 entitled Federal Express Supplied Parts, if any change, modification or addition affecting a Service is required prior to Redelivery pursuant to any United States law or governmental regulation or interpretation thereof by a United States governmental agency in order to meet the FAA requirements for airworthiness certification of any Aircraft, such change, addition or modification shall be made in each undelivered Aircraft affected. MDC shall bear the cost of complying with FAA airworthiness certification requirements which are required to be incorporated in any Aircraft prior to its Redelivery. Any delay in delivery of an Aircraft by reason of such change, addition or modification shall be deemed an Excusable Delay and the Scheduled Redelivery Date of such Aircraft shall be adjusted to the extent of such delay. Any such change, addition or modification effective after Aircraft delivery shall be the sole responsibility of Federal Express.