Common use of Sole Patents Clause in Contracts

Sole Patents. (a) Except for enforcement or revocation actions involving Sole PDL Patents or Roche Owned Patents outside the Field, in the event of any action against a Third Party for infringement of any claim in any issued patent within the Sole PDL Patents or Roche Owned Patents, as the case may be, or the institution by a Third Party of any proceedings for the revocation of any such claim, each party will notify the other promptly and, following such notification, the parties shall confer. [CONFIDENTIAL TREATMENT REQUESTED] shall have the right, but not the obligation, to prosecute such actions or to defend such proceedings involving the Sole PDL Patents at its own expense, in its own name and entirely under its own direction and control. [CONFIDENTIAL TREATMENT REQUESTED] shall have the right, but not the obligation, to prosecute such actions or to defend such proceedings involving the Roche Owned Patents at its own expense, in its own name and entirely under its own direction and control. (b) If a party with the first right hereunder elects not to prosecute any action for infringement or to defend any proceeding for revocation of any claims in any issued patent within the Sole PDL Patents (other than those Sole PDL Patents for which PDL [CONFIDENTIAL TREATMENT REQUESTED]) or Roche Owned Patents (other than those Roche Owned Patents [CONFIDENTIAL TREATMENT REQUESTED]), as the case may be, within [CONFIDENTIAL TREATMENT REQUESTED] of being requested by the other party to do so, the other party may prosecute such action or defend such proceeding at its own expense, in its own name and entirely under its own direction and control. This Section 12.1(b) shall expire on the Reversion Effective Date or the Put Right Effective Date. (c) In any event, the party bringing an action (“Acting Party”) pursuant to this Section 12.1 shall solicit, and seriously consider in good faith the non-acting party’s input with respect to all material aspects of such action, including without limitation, the development of the litigation strategy and the execution thereof. In furtherance and not in limitation of the foregoing, the Acting Party shall keep the other party promptly and fully informed of the status of any such action, and the non-acting party shall have the right to review and comment on the Acting Party’s activities related thereto. The obligations of this Section 12.1(c) shall not apply to PDL as the Acting Party after either the Reversion Effective Date or the Put Right Effective Date. (d) Each party will reasonably assist the Acting Party in any such action or proceeding being prosecuted or defended by the Acting Party, if so requested by the Acting Party or required by law. Without limiting the generality of the foregoing, the non-acting party agrees to join such action or proceeding if required by law to maintain such action or proceeding. The Acting Party will pay or reimburse the assisting party for all costs, expenses and liabilities that the assisting party may incur or suffer in affording assistance to such actions or proceedings. No settlement of any such action or defense that restricts the scope or affects the enforceability of PDL Know-How or Sole PDL Patents may be entered into by either PDL (if it would affect Roche’s rights under this Agreement) or Roche without the prior consent of the other party hereto, [CONFIDENTIAL TREATMENT REQUESTED]. No settlement of any such action or defense that restricts the scope or affects the enforceability of Roche Know-How or Roche Owned Patents may be entered into by either PDL or Roche without the prior consent of the other party hereto (if it would affect the other party’s rights under this Agreement, [CONFIDENTIAL TREATMENT REQUESTED]. The consent obligations of this Section 12.1(d) shall not apply to PDL as the Acting Party after either the Reversion Effective Date or the Put Right Effective Date. (e) If either party elects to prosecute an action for infringement or to defend any proceedings for revocation of any claims pursuant to this Section 12.1 and subsequently ceases to continue or withdraws from such action or defense, it shall forthwith so notify the other party in writing and the other party may substitute itself for the withdrawing party and the parties’ respective rights and obligations under this Section 12.1 shall be reversed. The obligations of this Section 12.1(e) shall not apply to PDL as the Acting Party after either the Reversion Effective Date or the Put Right Effective Date.

Sole Patents. (a) Except for enforcement or revocation actions involving Sole PDL Patents or Roche Owned Patents outside the Field, in In the event of any action against a Third Party third party for infringement of any claim in any issued patent within the Sole PDL Patents or Sole Daclizumab Roche Owned Patents, as the case may be, or the institution by a Third Party third party of any proceedings for the revocation of any such claim, each party will notify the other promptly and, following such notification, the parties shall confer. [CONFIDENTIAL TREATMENT REQUESTED] PDL shall have the right, but shall not the obligationbe obligated, to prosecute such actions or to defend such proceedings involving the Sole PDL Patents at its own expense, in its own name and entirely under its own direction and control. [CONFIDENTIAL TREATMENT REQUESTED] Roche shall have the right, but shall not the obligationbe obligated, to prosecute such actions or to defend such proceedings involving the Sole Daclizumab Roche Owned Patents Patents, at its own expense, in its own name and entirely under its own direction and control. (b) If a party with the first right hereunder elects not to prosecute any action for infringement or to defend any proceeding for revocation of any claims in any issued patent within the Sole PDL Patents (other than those or Sole PDL Patents for which PDL [CONFIDENTIAL TREATMENT REQUESTED]) or Daclizumab Roche Owned Patents (other than those Roche Owned Patents [CONFIDENTIAL TREATMENT REQUESTED])Patents, as the case may be, within [CONFIDENTIAL TREATMENT REQUESTED] ninety (90) days of being requested by the other party to do so, the other party may prosecute such action or defend such proceeding at its own expense, in its own name and entirely under its own direction and control. This Section 12.1(b) shall expire on the Reversion Effective Date or the Put Right Effective Date. (c) In any event, the party bringing an action (“Acting Party”"acting party") pursuant to this Section 12.1 10.1 shall solicit, and seriously consider in good faith the non-acting party’s 's input with respect to all material aspects of such action, including without limitation, the development of the litigation strategy and the execution thereof. In furtherance and not in limitation of the foregoing, the Acting Party acting party shall keep the other party promptly and fully informed of the status of any such action, and the non-acting party shall have the right to review and comment on upon the Acting Party’s acting party's activities related thereto. The obligations of this Section 12.1(c) shall not apply to PDL as the Acting Party after either the Reversion Effective Date or the Put Right Effective Date. (d) Each party will reasonably assist the Acting Party acting party in any such action or proceeding being prosecuted or defended by the Acting Partyacting party, if so requested by the Acting Party acting party or required by law. Without limiting the generality of the foregoing, the non-The acting party agrees to join such action or proceeding if required by law to maintain such action or proceeding. The Acting Party will pay or reimburse the assisting party for all costs, expenses and liabilities that which the assisting party may incur or suffer in affording assistance to such actions or proceedings. No settlement of any such action or defense that which restricts the scope or affects the enforceability of PDL Know-How or Sole PDL Patents may be entered into by either PDL (if it would affect Roche’s rights under this Agreement) or Roche without the prior consent of the other party hereto, [CONFIDENTIAL TREATMENT REQUESTED]which consent, in the case of Roche shall not be unreasonably withheld and in the case of PDL may be withheld in PDL's sole and absolute discretion. No settlement of any such action or defense that which restricts the scope or affects the enforceability of Roche Know-How or Sole Daclizumab Roche Owned Patents may be entered into by either PDL or Roche without the prior consent of the other party hereto (if it would affect hereto, which consent, in the other party’s rights under this Agreement, [CONFIDENTIAL TREATMENT REQUESTED]. The consent obligations case of this Section 12.1(d) PDL shall not apply to PDL as be unreasonably withheld and in the Acting Party after either the Reversion Effective Date or the Put Right Effective Datecase of Roche may be withheld in Roche's sole and absolute discretion. (e) If either party elects to prosecute an action for infringement or to defend any proceedings for revocation of any claims pursuant to this Section 12.1 10.1 and subsequently ceases to continue or withdraws from such action or defense, it shall forthwith so notify the other party in writing and the other party may substitute itself for the withdrawing party and the parties’ ' respective rights and obligations under this Section 12.1 10.1 shall be reversed. The obligations of this Section 12.1(e) shall not apply to PDL as the Acting Party after either the Reversion Effective Date or the Put Right Effective Date.

Sole Patents. (a) Except for enforcement or revocation actions involving Sole PDL Patents or Roche Owned Patents outside the Field, in the event of any action against a Third Party for infringement of any claim in any issued patent within the Sole PDL Patents or Roche Owned Patents, as the case may be, or the institution by a Third Party of any proceedings for the revocation of any such claim, each party will notify the other promptly and, following such notification, the parties shall confer. [CONFIDENTIAL TREATMENT REQUESTED****] shall have the right, but not the obligation, to prosecute such actions or to defend such proceedings involving the Sole PDL Patents [****] at its own expense, in its own name and entirely under its own direction and control. [CONFIDENTIAL TREATMENT REQUESTED****] shall have the right, but not the obligation, to prosecute such actions or to defend such proceedings involving the Roche Owned Patents [****] at its own expense, in its own name and entirely under its own direction and control. (b) If a party with the first right hereunder elects not to prosecute any action for infringement or to defend any proceeding for revocation of any claims in any issued patent within the Sole PDL Patents (other than those Sole PDL Patents for which PDL [CONFIDENTIAL TREATMENT REQUESTED****]) or Roche Owned Patents (other than those Roche Owned Patents [CONFIDENTIAL TREATMENT REQUESTED****]), as the case may be, within [CONFIDENTIAL TREATMENT REQUESTED****] of being requested by the other party to do so, the other party may prosecute such action or defend such proceeding at its own expense, in its own name and entirely under its own direction and control. This Section 12.1(b) shall expire on the Reversion Effective Date or the Put Right Effective Date. (c) In any event, the party bringing an action (“Acting Party”) pursuant to this Section 12.1 shall solicit, and seriously consider in good faith the non-acting party’s input with respect to all material aspects of such action, including without limitation, the development of the litigation strategy and the execution thereof. In furtherance and not in limitation of the foregoing, the Acting Party shall keep the other party promptly and fully informed of the status of any such action, and the non-acting party shall have the right to review and comment on the Acting Party’s activities related thereto. The obligations of this Section 12.1(c) shall not apply to PDL as the Acting Party after either the Reversion Effective Date or the Put Right Effective Date. (d) Each party will reasonably assist the Acting Party in any such action or proceeding being prosecuted or defended by the Acting Party, if so requested by the Acting Party or required by law. Without limiting the generality of the foregoing, the non-acting party agrees to join such action or proceeding if required by law to maintain such action or proceeding. The Acting Party will pay or reimburse the assisting party for all costs, expenses and liabilities that the assisting party may incur or suffer in affording assistance to such actions or proceedings. No settlement of any such action or defense that restricts the scope or affects the enforceability of PDL Know-How or Sole PDL Patents may be entered into by either PDL (if it would affect Roche’s rights under this Second Amended and Restated Worldwide Agreement) or Roche without the prior consent of the other party hereto, [CONFIDENTIAL TREATMENT REQUESTED****]. No settlement of any such action or defense that restricts **** Certain information on this page has been omitted and filed separately with the scope or affects commission. Confidential treatment has been requested with respect to the enforceability of Roche Know-How or Roche Owned Patents may be entered into by either PDL or Roche without the prior consent of the other party hereto (if it would affect the other party’s rights under this Agreement, [CONFIDENTIAL TREATMENT REQUESTED]. The consent obligations of this Section 12.1(d) shall not apply to PDL as the Acting Party after either the Reversion Effective Date or the Put Right Effective Dateomitted portions. (e) If either party elects to prosecute an action for infringement or to defend any proceedings for revocation of any claims pursuant to this Section 12.1 and subsequently ceases to continue or withdraws from such action or defense, it shall forthwith so notify the other party in writing and the other party may substitute itself for the withdrawing party and the parties’ respective rights and obligations under this Section 12.1 shall be reversed. The obligations of this Section 12.1(e) shall not apply to PDL as the Acting Party after either the Reversion Effective Date or the Put Right Effective Date.

Sole Patents. (a) Except for enforcement or revocation actions involving Sole PDL Patents or Roche Owned Patents outside the Field, in the event of any action against a Third Party for infringement of any claim in any issued patent within the Sole PDL Patents or Roche Owned Patents, as the case may be, or the institution by a Third Party of any proceedings for the revocation of any such claim, each party will notify the other promptly and, following such notification, the parties shall confer. [CONFIDENTIAL TREATMENT REQUESTED*] shall have the right, but not the obligation, to prosecute such actions or to defend such proceedings involving the Sole PDL Patents at its own expense, in its own name and entirely under its own direction and control. [CONFIDENTIAL TREATMENT REQUESTED*] shall have the right, but not the obligation, to prosecute such actions or to defend such proceedings involving the Roche Owned Patents at its own expense, in its own name and entirely under its own direction and control. (b) If a party with the first right hereunder elects not to prosecute any action for infringement or to defend any proceeding for revocation of any claims in any issued patent within the Sole PDL Patents (other than those Sole PDL Patents for which PDL [CONFIDENTIAL TREATMENT REQUESTED*]) or Roche Owned Patents (other than those Roche Owned Patents [CONFIDENTIAL TREATMENT REQUESTED*]), as the case may be, within [CONFIDENTIAL TREATMENT REQUESTED*] of being requested by the other party to do so, the other party may prosecute such action or defend such proceeding at its own expense, in its own name and entirely under its own direction and control. This Section 12.1(b) shall expire on the Reversion Effective Date or the Put Right Effective Date. (c) In any event, the party bringing an action (“Acting Party”) pursuant to this Section 12.1 shall solicit, and seriously consider in good faith the non-acting party’s input with respect to all material aspects of such action, including without limitation, the development of the litigation strategy and the execution thereof. In furtherance and not in limitation of the foregoing, the Acting Party shall keep the other party promptly and fully informed of the status of any such action, and the non-acting party shall have the right to review and comment on the Acting Party’s activities related thereto. The obligations of this Section 12.1(c) shall not apply to PDL as the Acting Party after either the Reversion Effective Date or the Put Right Effective Date. (d) Each party will reasonably assist the Acting Party in any such action or proceeding being prosecuted or defended by the Acting Party, if so requested by the Acting Party or required by law. Without limiting the generality of the foregoing, the non-acting party agrees to join such action or proceeding if required by law to maintain such action or proceeding. The Acting Party will pay or reimburse the assisting party for all costs, expenses and liabilities that the assisting party may incur or suffer in affording assistance to such actions or proceedings. No settlement of any such action or defense that restricts the scope or affects the enforceability of PDL Know-How or Sole PDL Patents may be entered into by either PDL (if it would affect Roche’s rights under this Agreement) or Roche without the prior consent of the other party hereto, [CONFIDENTIAL TREATMENT REQUESTED*]. No settlement of any such action or defense that restricts the scope or affects the enforceability of Roche Know-How or Roche Owned Patents may be entered into by either PDL or Roche without the prior consent of the other party hereto (if it would affect the other party’s rights under this Agreement, )[CONFIDENTIAL TREATMENT REQUESTED*]. The consent obligations of this Section 12.1(d) shall not apply to PDL as the Acting Party after either the Reversion Effective Date or the Put Right Effective Date. (e) If either party elects to prosecute an action for infringement or to defend any proceedings for revocation of any claims pursuant to this Section 12.1 and subsequently ceases to continue or withdraws from such action or defense, it shall forthwith so notify the other party in writing and the other party may substitute itself for the withdrawing party and the parties’ respective rights and obligations under this Section 12.1 shall be reversed. The obligations of this Section 12.1(e) shall not apply to PDL as the Acting Party after either the Reversion Effective Date or the Put Right Effective Date.