Common use of Third Party Infringement of Patents Clause in Contracts

Third Party Infringement of Patents. (a) Each party shall promptly report in writing to the other party during the term of this Agreement any (i) known infringement or suspected infringement of any of the patented inventions in the Know-How, or (ii) unauthorized use or misappropriation of Know-How or Confidential Information by a third party (‘Third Party Infringement”)of which it becomes aware, and shall provide the other party with all available evidence supporting said infringement, suspected infringement or unauthorized use or misappropriation. (b) In the event of a report of a Third Party Infringement under Section 5.6(a), EURAND and RELIANT shall consult with each other in order to develop a strategy for addressing the Third Party Infringement. In the event that the parties agree to take legal action to stop the Third Party Infringement, they shall agree upon legal counsel and unless they agree upon a different formula for sharing the expenses (including attorney and expert fees) of such action and for sharing any award or settlement, they shall share them equally. In the event that one of the parties does not desire to participate in the action (the “nonparticipating party”), the other party shall be free to bring the action in its own name, at its own expense and retain any award or settlement in its entirety. If necessary, the nonparticipating party shall join as a party to the suit but shall be under no obligation to participate except to the extent that such participation is required as the result of being a named party to the suit. The nonparticipating party shall also offer reasonable assistance in connection therewith at no charge to the other party except for reimbursement of reasonable out-of-pocket expenses. If either party desires to retain counsel independently, at its own expense, the party may do so, but it shall not relieve the party of its obligations under this section.

Third Party Infringement of Patents. (a) Each party shall promptly report in writing to the other party during the term of this Agreement any (i) known infringement or suspected infringement of any of the patented inventions in the Know-How, or (ii) unauthorized use or misappropriation of Know-How or Confidential Information by a third party (‘“Third Party Infringement”)of Infringement”) of which it becomes aware, and shall provide the other party with all available evidence supporting said infringement, suspected infringement or unauthorized use or misappropriation. (b) In the event of a report of a Third Party Infringement under Section 5.6(a), EURAND and RELIANT shall consult with each other in order to develop a strategy for addressing the Third Party Infringement. In the event that the parties agree to take legal action to stop the Third Party Infringement, they shall agree upon legal counsel and unless they agree upon a different formula for sharing the expenses (including attorney and expert fees) of such action and for sharing any award or settlement, they shall share them equally. In the event that one of the parties does not desire to participate in the action (the “nonparticipating party”), the other party shall be free to bring the action in its own name, at its own expense and retain any award or settlement in its entirety. If necessary, the nonparticipating party shall join as a party to the suit but shall be under no obligation to participate except to the extent that such participation is required as the result of being a named party to the suit. The nonparticipating party shall also offer reasonable assistance in connection therewith at no charge to the other party except for reimbursement of reasonable out-of-pocket expenses. If either party desires to retain counsel independently, at its own expense, the party may do so, but it shall not relieve the party of its obligations under this section.

Third Party Infringement of Patents. (a) Each party To the extent related to or involving any Competitive Product, each Party shall promptly report in writing to the other party Party during the term of this Agreement Term any (i) known infringement or suspected infringement of any of the patented inventions in the Know-How*** or the ***, or (ii) unauthorized use or misappropriation of Know-How or Confidential Information or *** by a third party Third Party, or (‘iii) known infringement or suspected infringement relating to either the Formulation or Product (in each case, “Third Party Infringement”)of Infringement”) of which it becomes aware, and shall provide the other party Party with all available evidence supporting indicative of said infringement, suspected infringement or unauthorized use or misappropriation. (b) In the event of a report of a Third Party Infringement under Section 5.6(a8.7(a), EURAND and RELIANT AVANIR shall consult with each other in order to develop a strategy for addressing the Third Party Infringement. In Pursuant to such strategy, *** shall have the event that right, but not the parties agree obligation, to take commence and control any Action against Third Party Infringement at its own expense. An “Action” for purposes of this Section 8.7 shall be any legal action to stop or proceeding, or the Third Party Infringement, they shall agree upon legal counsel and unless they agree upon a different formula for sharing the expenses (including attorney and expert fees) filing of such action and for sharing any award or settlement, they shall share them equallycounterclaim. In the event that one *** elects not to bring an Action or fails to do so within *** Calendar Days after the consultation contemplated by this Section 8.7, *** shall have the right to do so jointly with ***, or if *** is not agreeable to bringing the action jointly, *** shall have the right to bring the Action alone, but only if it pertains solely to infringement of *** or misappropriation of ***. *** Portions of this page have been omitted pursuant to a request for Confidential Treatment and filed separately with the Commission. (c) In any Action pursuant to Section 8.7(b), any damages or other recovery, including compensatory and other non-compensatory damages or recovery actually received from a Third Party, shall be allocated first to reimburse the costs and expenses, including reasonable attorneys’ fees and expert witness fees, of the parties Party commencing such Action and then to reimburse the other Party, if any, for such costs and expenses. If the Parties pursued such Action jointly, they shall be reimbursed pari passu. Reimbursement shall be made first from any compensatory damages including attorneys’ fees and costs recovered. If any balance remains of the damages or other recovery made from the Third Party after such reimbursement, the balance shall be shared *** percent (***%) to AVANIR and *** percent (***%) to EURAND. If EURAND pursues such Action pursuant to Section 8.7(b) alone, then EURAND shall retain the entire balance of the damages received from such Third Party. (d) In the event that a Party (the “Nonparticipating Party”) does not desire to participate in the action (the “nonparticipating party”)an Action, the other party shall be free to bring the action in its own name***, at its own expense and retain any award or settlement in its entirety. If if necessary, the nonparticipating party shall join as a party to the suit but such *** shall be under no obligation to participate *** except to the extent that such participation *** is required *** as the result *** of being a named party to the suit***. The nonparticipating party Nonparticipating Party shall also offer reasonable assistance in connection therewith at no charge to the other party Party except for reimbursement of reasonable out-of-pocket expenses. If either party Party desires to retain counsel independently, at its own expense, the party Party may do so, but it shall not relieve the party Party of its obligations under this section.

Third Party Infringement of Patents. (a) 9.7.1 Each party Party shall promptly report in writing to the other party Party during the term of this Agreement Term any (i) known infringement or suspected infringement of any of the patented inventions Patent Rights included in the Know-How*** or the ***, or (ii) unauthorized use or misappropriation of Know-How Confidential Information, Eurand Intellectual Property Rights or Confidential Information GSK Program Rights by a third party Third Party, or (‘iii) known infringement or suspected infringement relating to either the Formulation or Product (in each case, “Third Party Infringement”)of Infringement”) of which it becomes awareaware (including infringement under 35 U.S.C. Section 271(e)(2)), and which relate to a Product or a Competitive Product, and shall provide the other party Party with all available evidence supporting indicative of said infringement, suspected infringement or unauthorized use or misappropriation. (b) 9.7.2 In the event of a report of a Third Party Infringement under Section 5.6(a)9.7.1, EURAND Eurand and RELIANT GSK shall consult with each other in order to develop a strategy for addressing the Third Party Infringement. In the event that the parties Parties agree to take legal action to stop the Third Party InfringementInfringement (the “Action”), they shall agree upon legal counsel and unless they agree upon a different formula for sharing the expenses (including attorney and expert fees) of such action and for sharing any award or settlement, they shall share them equally. In the event that one of a Party (the parties “Nonparticipating Party”) does not desire to participate in the Action, the other Party shall be free (at its sole discretion) to bring the action (the “nonparticipating partyParticipating Party”), ) based on the other party shall be free to bring the action Participating Party’s own Intellectual Property Rights in its own name, at its own expense and retain any award or settlement in its entirety. If necessaryThe Participating Party may, only with the written consent of the Nonparticipating Party, bring an Action based on the Nonparticipating Party’s Intellectual Property Rights (i.e., the nonparticipating party shall join as a party Eurand Intellectual Property Rights if Eurand is the Nonparticipating Party and the GSK Program Rights if GSK is the Nonparticipating Party), in its Participating Party’s own name, and own expense, and retain any award or settlement in its entirety. The Nonparticipating Party will in *** and ***, or *** to the suit but shall be under no *** Party if the *** Party ***, *** Party to legal or regulatory harm. *** obligation to participate except to the extent that such participation is required as the result of being a named party to the suit. The nonparticipating party ***, and shall also offer reasonable assistance *** in connection therewith at no *** charge to the other party except Party *** for reimbursement *** of reasonable out-of-pocket expenses***. If either party Party desires to retain counsel independently, at its own expense, the party Party may do so, but it shall not relieve the party Party of its obligations under this section.