Common use of Prosecution of Infringements Clause in Contracts

Prosecution of Infringements. a. Each party agrees to provide written notice to the other party promptly after becoming aware of any infringement of the Licensed Patent Rights by a third party and of any available evidence thereof. After receiving notice from the other party of a possible infringement of the Licensed Patent Rights by a third party, the parties will consult with each other about whether and to what extent such third party’s products or activities are infringing upon the Licensed Patent Rights, and the extent to which the infringing products or activities are damaging sales of Licensed Products. Within ninety (90) days of such notice, Licensee shall notify TSRI of its decision and proposed course of action, where the date of Licensee’s notice to TSRI, or the expiration of the ninety (90) day period, shall be known as the “Commencement Date”. If Licensee determines, in its reasonable commercial discretion, and provides TSRI with its assessment supporting such determination, that the prosecution of such infringement would be commercially unreasonable, and TSRI does not object to such determination, then Licensee shall not have the obligation as set forth under Section 8.6.1(d) to prosecute such infringement and the consequences in Section 8.6.1(d) shall not apply; provided, however, that TSRI shall then have the right, but not the obligation, to prosecute such infringement. b. In the event Licensee is obligated to, pursuant to Section 8.6.1(d) below, or elects to, pursuant to 8.6.1(a) above, pursue a third party infringer, then Licensee may enter into settlements, stipulated judgments or other arrangements respecting such infringement, at its own expense, but only with TSRI’s prior written consent, which will not be unreasonably withheld or delayed. TSRI shall permit any action to be brought in its name if required by law, and Licensee shall hold TSRI harmless from any costs, expenses or liability respecting all such infringements. TSRI agrees to provide reasonable assistance which Licensee may require in any litigation arising in accordance with the provisions of this Section 8.6.1, for which Licensee shall pay to TSRI a reasonable hourly rate of compensation, including, without limitation, joining such action as a party plaintiff if necessary or desirable for initiation or continuation of such action; provided that the Licensee reimburses TSRI promptly for any reasonable costs and expenses incurred by TSRI in connection with providing such assistance. c. In the event Licensee is not obligated to, pursuant to Section 8.6.1(d) below, pursue a third party infringer, then Licensee shall notify TSRI in writing promptly and TSRI shall have the right, but not the obligation, to prosecute such infringement on its own behalf. If TSRI prosecutes such infringement, then TSRI may, at its discretion, convert the licenses granted to Licensee with respect to the patent(s) at issue to a non-exclusive license. Conversion by TSRI pursuant to this Section 8.6.1(c) shall only be applicable to the country or countries within the Licensed Patent Rights that are the subject of TSRI’s prosecution of such infringement. d. Notwithstanding the foregoing Sections 8.6.1(b)-8.6.1(c), in order to maintain the licenses granted hereunder in force, Licensee shall have the first right and obligation to prosecute any and all third party infringements. Unless Licensee and TSRI otherwise agree, pursuant to Section 8.6.1(a), that the prosecution of any third party infringement is commercially unreasonable, failure on the part of Licensee to prosecute any third party infringement within six (6) months after the Commencement Date shall be grounds for termination of the licenses granted to Licensee with respect to the patent(s) at issue, and such patent(s) shall thereafter be excluded from the definition of Licensed Patent Rights. Termination by TSRI pursuant to this Section 8.6.1(d) shall only be applicable to the country or countries within the Licensed Patent Rights that are the subject of Licensee’s failure to prosecute such infringement.

Prosecution of Infringements. a. Each party agrees to provide written notice (a) TSRI and Licensee shall promptly notify the other in writing of any alleged or threatened infringement of, or any challenge to the other party promptly after becoming aware of any infringement of the validity or unenforceability of, Licensed Patent Rights by a third party and of any available evidence thereofwhich it becomes aware. After receiving notice from the other party of a possible infringement of the Licensed Patent Rights by a third party, the parties will consult with each other about whether and to what extent ***. (b) If (i) Licensee believes in good faith that such third party’s products or activities are literally infringing upon the Licensed Patent RightsRights in a Major Market country, and (ii) lost sales of Licensed Products as a result of such infringing activity exceed ***, then, except as otherwise mutually agreed by the extent parties pursuant to which Section 8.6.1(a), License shall have the infringing obligation to prosecute such infringement (including defense of actions for declaratory relief of non-infringement) by that third party. If the parties cannot agree on a course of action to be taken against such third party infringer, and such third party’s products or activities are damaging sales of Licensed Products. Within ninety (90) days of such notice, Licensee shall notify TSRI of its decision and proposed course of action, where the date of Licensee’s notice to TSRI, or the expiration of the ninety (90) day period, shall be known as the “Commencement Date”. If Licensee determines, occurring in its reasonable commercial discretion, and provides TSRI with its assessment supporting such determination, that the prosecution of such infringement would be commercially unreasonable, and TSRI does not object to such determinationa non-Major Market country, then Licensee shall not have the obligation as set forth under Section 8.6.1(d) to prosecute such infringement and the consequences in Section 8.6.1(d) shall not apply; provided, however, that TSRI shall then have the first right, but not the obligation, to prosecute such infringement. b. . In addition, if the event Licensee is obligated to, pursuant parties cannot agree on a course of action to Section 8.6.1(d) below, or elects to, pursuant be taken with respect to 8.6.1(a) above, pursue a challenge by a third party infringerto the validity or enforceability of the Licensed Patent Rights, where such challenge is the only claim by the third party with respect to the Licensed Patent Rights and which occurs outside of the context of any infringement action or non-infringement declaratory relief action, then Licensee shall have the first right, but not the obligation, to defend against such challenge. Licensee may enter into settlements, stipulated judgments or other arrangements respecting such infringementinfringement or challenge, at its own expense, but only with TSRI’s prior written consent, which will not be unreasonably withheld or delayed. TSRI shall permit any action to be brought in its name and/or join in such action if required by law, and Licensee shall hold TSRI harmless from any costs, expenses or liability respecting all such infringementsaction. TSRI agrees to provide reasonable assistance of a technical nature which Licensee may require in any litigation arising in accordance with the provisions of this Section 8.6.1, for which Licensee shall pay to TSRI a reasonable hourly rate of compensation, including, without limitation, joining such action as a party plaintiff if necessary or desirable for initiation or continuation of such action; provided that the Licensee reimburses TSRI promptly for any reasonable costs and expenses incurred by TSRI in connection with providing such assistance. c. (c) In the event Licensee is not obligated tofails to bring an infringement action or proceeding against the third party within ninety (90) days after the later of (i) mutual agreement by the parties to bring such action or proceeding, and (ii) initiation of consultation between the parties pursuant to Section 8.6.1(d) below, pursue a third party infringer8.6.1(a), then Licensee shall notify TSRI in writing promptly and TSRI shall have the right, but not the obligation, to prosecute such infringement on its own behalf. If TSRI prosecutes such infringement, then TSRI may, at its discretion, convert the licenses granted to Licensee with respect to the patent(s) at issue to a non-exclusive license. Conversion by TSRI pursuant to this Section 8.6.1(c) shall only be applicable to the country or countries within the Licensed Patent Rights that are the subject of TSRI’s prosecution of such infringement. d. Notwithstanding the foregoing Sections 8.6.1(b)-8.6.1(c), in order to maintain the licenses granted hereunder in force, Licensee shall have the first right and obligation to prosecute any and all third party infringements. Unless Licensee and TSRI otherwise agree, pursuant to Section 8.6.1(a), that the prosecution of any third party infringement is commercially unreasonable, failure on the part of Licensee to prosecute any third party infringement within six (6) months after the Commencement Date shall be grounds for termination of the licenses granted to Licensee with respect to the patent(s) at issue, and such patent(s) shall thereafter be excluded from the definition of Licensed Patent Rights. Termination by TSRI pursuant to this Section 8.6.1(d) shall only be applicable to the country or countries within the Licensed Patent Rights that are the subject of Licensee’s failure to prosecute such infringement.***

Prosecution of Infringements. a. Each party agrees to provide written notice (a) TSRI and Company shall promptly notify the other in writing of any alleged or threatened infringement of, or any challenge to the other party promptly after becoming aware of any infringement of the validity or unenforceability of, Licensed Patent Rights by a third party and of any available evidence thereofwhich it becomes aware. After receiving notice from the other party of a possible infringement of the Licensed Patent Rights by a third party, the parties will consult with each other about whether and to what extent ***. (b) If (i) Company believes in good faith that such third party’s products or activities are literally infringing upon the Licensed Patent RightsRights in a Major Market country, and (ii) lost sales or lost income with respect to the extent Licensed Technology as a result of such infringing activity exceeds ***, then, except as otherwise mutually agreed by the parties pursuant to which Section 8.6.1(a), License shall have the infringing obligation to prosecute such infringement (including defense of actions for declaratory relief of non-infringement) by that third party. If the parties cannot agree on a course of action to be taken against such third party infringer and such third party’s products or activities are damaging sales of Licensed Products. Within ninety (90) days of such notice, Licensee shall notify TSRI of its decision and proposed course of action, where the date of Licensee’s notice to TSRIoccurring in a non-Major Market country, or in the expiration case of any other infringement or potential infringement by a third party of the ninety (90) day period, shall be known as Licensed Patent Rights that is not covered by the “Commencement Date”. If Licensee determines, in its reasonable commercial discretion, and provides TSRI with its assessment supporting such determination, that the prosecution first sentence of such infringement would be commercially unreasonable, and TSRI does not object to such determinationthis Section 8.6.1(b), then Licensee Company shall not have the obligation as set forth under Section 8.6.1(d) to prosecute such infringement and the consequences in Section 8.6.1(d) shall not apply; provided, however, that TSRI shall then have the first right, but not the obligation, to prosecute such infringement. b. . In addition, if the event Licensee is obligated to, pursuant parties cannot agree on a course of action to Section 8.6.1(d) below, or elects to, pursuant be taken with respect to 8.6.1(a) above, pursue a challenge by a third party infringerto the validity or enforceability of the Licensed Patent Rights, where such challenge is the only claim by the third party with respect to the Licensed Patent Rights and which occurs outside of the context of any infringement action or non-infringement declaratory relief action, then Licensee Company shall have the first right, but not the obligation, to defend against such challenge. Company may enter into settlements, stipulated judgments or other arrangements respecting such infringementinfringement or challenge, at its own expense, but only with TSRI’s prior written consent, which will not be unreasonably withheld or delayed. TSRI shall permit any action to be brought in its name and/or join in such action if required by law, and Licensee Company shall hold TSRI harmless from any costs, expenses or liability respecting all such infringementsaction. TSRI agrees to provide reasonable assistance of a technical nature which Licensee Company may require in any litigation arising in accordance with the provisions of this Section 8.6.1, for which Licensee Company shall pay to TSRI a reasonable hourly rate of compensation, including, without limitation, joining such action as a party plaintiff if necessary or desirable for initiation or continuation of such action; provided that the Licensee reimburses TSRI promptly for any reasonable costs and expenses incurred by TSRI in connection with providing such assistance. c. (c) In the event Licensee is not obligated toCompany fails to bring an infringement action or proceeding against the third party within 90 days after the later of (i) mutual agreement by the parties to bring such action or proceeding, and (ii) initiation of consultation between the parties pursuant to Section 8.6.1(d) below, pursue a third party infringer8.6.1(a), then Licensee shall notify TSRI in writing promptly and TSRI shall have the right, but not the obligation, to prosecute such infringement on its own behalf. If TSRI prosecutes such infringement, then TSRI may, at its discretion, convert the licenses granted to Licensee with respect to the patent(s) at issue to a non-exclusive license. Conversion by TSRI pursuant to this Section 8.6.1(c) shall only be applicable to the country or countries within the Licensed Patent Rights that are the subject of TSRI’s prosecution of such infringement***. d. Notwithstanding the foregoing Sections 8.6.1(b)-8.6.1(c), in order to maintain the licenses granted hereunder in force, Licensee shall have the first right and obligation to prosecute any and all third party infringements. Unless Licensee and TSRI otherwise agree, pursuant to Section 8.6.1(a), that the prosecution of any third party infringement is commercially unreasonable, failure on the part of Licensee to prosecute any third party infringement within six (6) months after the Commencement Date shall be grounds for termination of the licenses granted to Licensee with respect to the patent(s) at issue, and such patent(s) shall thereafter be excluded from the definition of Licensed Patent Rights. Termination by TSRI pursuant to this Section 8.6.1(d) shall only be applicable to the country or countries within the Licensed Patent Rights that are the subject of Licensee’s failure to prosecute such infringement.

Prosecution of Infringements. a. Each party agrees to provide written notice to the other party promptly after becoming aware of any infringement of the Licensed Patent Rights by a third party and of any available evidence thereof. After receiving notice from the other party of a possible infringement of the Licensed Patent Rights by a third party, the parties will consult with each other about whether and to what extent such third party’s products or activities are infringing upon the Licensed Patent Rights, and the extent to which the infringing products or activities are damaging sales of Licensed Products. Within ninety (90) days of such notice, Licensee shall notify TSRI of its decision and proposed course of action, where the date of Licensee’s notice to TSRI, or the expiration of the ninety (90) day period, shall be known as the “Commencement Date”. If Licensee determines, in its reasonable commercial discretion, and provides TSRI with its assessment supporting such determination, that the prosecution of such infringement would be commercially unreasonable, and TSRI does not object to such determination, then Licensee shall not have the obligation as set forth under Section 8.6.1(d) to prosecute such infringement and the consequences in Section 8.6.1(d) shall not apply; provided, however, that TSRI shall then have the right, but not the obligation, to prosecute such infringement. b. In the event Licensee is obligated to, pursuant to Section 8.6.1(d) below, or elects to, pursuant to 8.6.1(a) above, pursue a third party infringer, then Licensee may enter into settlements, stipulated judgments or other arrangements respecting such infringement, at its own expense, but only with TSRI’s prior written consent, which will not be unreasonably withheld or delayed. TSRI shall permit any action to be brought in its name if required by law, and Licensee shall hold TSRI harmless from any costs, expenses or liability respecting all such infringements. TSRI agrees to provide reasonable assistance which Licensee may require in any litigation arising in accordance with the provisions of this Section 8.6.1, for which Licensee shall pay to TSRI a reasonable hourly rate of compensation, including, without limitation, joining such action as a party plaintiff if necessary or desirable for initiation or continuation of such action; provided that the Licensee reimburses TSRI promptly for any reasonable costs and expenses incurred by TSRI in connection with providing such assistance. c. In the event Licensee is not obligated to, pursuant to Section 8.6.1(d) below, pursue a third party infringer, then Licensee shall notify TSRI in writing promptly and TSRI shall have the right, but not the obligation, to prosecute such infringement on its own behalf. If TSRI prosecutes such infringement, then TSRI may, at its discretion, convert the licenses granted to Licensee with respect to the patent(s) at issue to a non-exclusive license. Conversion by TSRI pursuant to this Section 8.6.1(c) shall only be applicable to the country or countries within the Licensed Patent Rights that are the subject of TSRI’s prosecution of such infringement. d. Notwithstanding the foregoing Sections 8.6.1(b)-8.6.1(c8.6.l(b)-8.6.1(c), in order to maintain the licenses granted hereunder in force, Licensee shall have the first right and obligation to prosecute any and all third party infringements. Unless Licensee and TSRI otherwise agree, pursuant to Section 8.6.1(a), that the prosecution of any third party infringement is commercially unreasonable, failure on the part of Licensee to prosecute any third party infringement within six (6) months after the Commencement Date Xxxx shall be grounds for termination of the licenses granted to Licensee with respect to the patent(s) at issue, and such patent(s) shall thereafter be excluded from the definition of Licensed Patent Rights. Termination by TSRI pursuant to this Section 8.6.1(d) shall only be applicable to the country or countries within the Licensed Patent Rights that are the subject of Licensee’s failure to prosecute such infringement.

Prosecution of Infringements. a. Each party agrees to provide written notice to promptly notify *** in the other party promptly after becoming event that *** becomes aware of any infringement of the Licensed Patent Rights or threatened infringement by a third party and of any available evidence thereofof the ***. After receiving notice from In order to maintain the other party licenses granted hereunder in force, subject to the conditions set forth in this Section 7.6.1, *** shall prosecute any and all infringements of any *** by third parties that could reasonably be expected to have a possible material adverse impact on any ***, unless otherwise agreed in writing by *** and ***. ***does not have any obligation to prosecute any infringements of any *** by third parties that *** does not reasonably expect to have a material adverse impact on any ***. If any such infringement could reasonably be expected to have a material adverse impact on any ***, *** shall have the right to bring and control any action or proceeding with respect to infringement of the Licensed Patent Rights any ***, at its own expense and by a third party, the parties will consult with each other about whether and to what extent such third party’s products or activities are infringing upon the Licensed Patent Rights, and the extent to which the infringing products or activities are damaging sales of Licensed Products. Within ninety (90) days of such notice, Licensee shall notify TSRI counsel of its decision and proposed course of action, where the date of Licensee’s notice to TSRI, or the expiration of the ninety (90) day period, shall be known as the “Commencement Date”own choice. If Licensee determines, in its reasonable commercial discretion, and provides TSRI with its assessment supporting such determination, that the prosecution of any such infringement could also reasonably be expected to have a material adverse impact on any licensed product under the ***, *** would be commercially unreasonable, and TSRI does not object to such determination, then Licensee shall not have the obligation as set forth under Section 8.6.1(d) to prosecute such infringement and the consequences in Section 8.6.1(d) shall not apply; provided, however, that TSRI shall then have provide *** the right, but not the obligationat its own expense, to prosecute be represented in any such infringement. b. In the event Licensee is obligated to, pursuant to Section 8.6.1(d) below, or elects to, pursuant to 8.6.1(a) above, pursue a third party infringer, then Licensee action by counsel of its own choice. *** may enter into settlements, stipulated judgments or other arrangements respecting such infringement, at its own expense, but only with TSRI’s *** prior written consentconsent if such settlements, which will stipulated judgments or other arrangements would affect *** business or its rights in the ***; provided that such consent shall not be unreasonably withheld or delayed. TSRI *** shall permit any such action or proceeding by *** to be brought in its *** name if required by lawlaw or to join any action or proceeding as a necessary party if required for prosecution of such action or proceeding (which shall be a condition to any obligation of *** to prosecute infringement of any *** to the extent necessary to enable *** to do so), and Licensee *** shall hold TSRI *** harmless from any costs, all liabilities and expenses with respect to such infringement action or liability respecting all such infringementsproceeding brought by ***. TSRI *** agrees to provide reasonable assistance of a technical nature which Licensee *** may require in any litigation arising action or proceeding brought by *** as provided in accordance with the provisions of this Section 8.6.17.6.1, for which Licensee *** shall pay to TSRI *** a reasonable hourly rate of compensation. Beginning upon execution of the *** ***, includingand at *** request, without limitation, joining *** shall use commercially reasonably efforts to have *** cooperate and if necessary cause *** to join any action or proceeding brought by *** as a necessary party if required for prosecution of such action as or proceeding (which shall be a party plaintiff if necessary or desirable for initiation or continuation condition to any obligation of *** to prosecute infringement). If *** does not prosecute any such action; provided that the Licensee reimburses TSRI infringement of ***, *** shall promptly for any reasonable costs and expenses incurred by TSRI notify *** in connection with providing writing. In such assistance. c. In the event Licensee is not obligated toevents, pursuant to Section 8.6.1(d) below, pursue a third party infringer, then Licensee shall notify TSRI in writing promptly and TSRI shall *** will have the right, but not the obligation, to prosecute such infringement on its own behalf. If TSRI prosecutes such infringement, then TSRI may, at its discretion, convert the licenses granted to Licensee with respect to the patent(s) at issue to a non-exclusive license. Conversion by TSRI pursuant to this Section 8.6.1(c) shall only be applicable to the country or countries within the Licensed Patent Rights that are the subject of TSRI’s prosecution of such infringementitself. d. Notwithstanding the foregoing Sections 8.6.1(b)-8.6.1(c), in order to maintain the licenses granted hereunder in force, Licensee shall have the first right and obligation to prosecute any and all third party infringements. Unless Licensee and TSRI otherwise agree, pursuant to Section 8.6.1(a), that the prosecution of any third party infringement is commercially unreasonable, failure on the part of Licensee to prosecute any third party infringement within six (6) months after the Commencement Date shall be grounds for termination of the licenses granted to Licensee with respect to the patent(s) at issue, and such patent(s) shall thereafter be excluded from the definition of Licensed Patent Rights. Termination by TSRI pursuant to this Section 8.6.1(d) shall only be applicable to the country or countries within the Licensed Patent Rights that are the subject of Licensee’s failure to prosecute such infringement.