Common use of Third Party Patents Clause in Contracts

Third Party Patents. In the event that in a country in the Territory a ------------------- third party claims either that an issued patent in which it has rights contains patent claims covering Licensed Products, Improvements, Licensed Compounds and/or Licensed Processes or that it has an ownership right or interest in Licensed Patent Rights, Improvements or Proprietary Information, MRE shall have the right, at MRE's sole election, either: (a) directly or indirectly through its Affiliates and sublicensees, to suspend or stop manufacture, use and sale of Licensed Products or development of Licensed Compounds for use in Licensed Processes under this Agreement in such country and to stop all royalty and other payments due to DTI under Sections 4.1(h) and (i) for such country upon giving DTI one (1) month's notice; or (b) to continue to manufacture, use and/or sell Licensed Products and/or Licensed Compounds for use in Licensed Processes directly or through its Affiliates and sublicensees and stand suit for patent infringement or against claims by a third party to ownershiprights or interest in the Licensed Patent Rights, Improvements or Proprietary Information, at its own risk and expense. In addition to the foregoing options of MRE, MRE shall have the right to obtain a license for the subject country within the Territory from any such third party on such terms as MRE, in its sole discretion, shall negotiate, and in any such event MRE shall be entitled and permitted to offset against and deduct from the royalties and other compensation payable to DTI under Sections 4.1(h) and (i) hereof with respect to sales in the subject country within the Territory 100% of the Third Party Royalties which MRE, its Affiliates and/or sublicensees shall become obligated to pay to said third party under such license if the third party's patent claims cover the composition of matter of a Licensed Product. Unused credits may be carried forward and offset against subsequent payments to DTI under such Sections.

Third Party Patents. In If during the event term of this Agreement either Party receives any notice, claim or proceedings from any Third Party alleging infringement of that in a country in the Territory a ------------------- third party claims Third Party’s intellectual property by reason of either that an issued patent in which it has rights contains patent claims covering Licensed ProductsParty’s activities under this Agreement, Improvements, Licensed Compounds and/or Licensed Processes or that it has an ownership right or interest in Licensed Patent Rights, Improvements or Proprietary Information, MRE shall have the right, at MRE's sole election, eitherthen: (a) directly the notified Party shall forthwith inform the other Party of the notice, claim or indirectly through its Affiliates and sublicensees, to suspend or stop manufacture, use and sale of Licensed Products or development of Licensed Compounds for use in Licensed Processes under this Agreement in such country and to stop all royalty and other payments due to DTI under Sections 4.1(h) and (i) for such country upon giving DTI one (1) month's notice; orproceeding; (b) if the alleged infringement is due in particular to continue Licensed Compound (i.e., but for Licensed Compound, as opposed to manufacturea different adjuvant compound, use and/or sell Licensed Products and/or Licensed Compounds for use in Licensed Processes directly or through its Affiliates and sublicensees and stand suit for patent infringement or against claims by a third party to ownershiprights or interest in there would be no infringement), then 3M shall have the Licensed Patent Rightsright , Improvements or Proprietary Informationbut shall not be obliged to, at its own risk cost and expense. In addition to , defend such claim or other proceeding in accordance with the foregoing options of MRE, MRE following: (i) 3M shall have sole conduct of the claim and any proceedings including any counterclaim for invalidity or unenforceability or any declaratory judgment action and including the right to obtain a license settle provided always that 3M shall not settle any claim which prejudices any right or interest of CELLDEX other than with the prior written consent of CELLDEX. If 3M elects to unilaterally control the conduct of such claim or proceeding, 3M shall pay its counsel and other litigation fees and pay the full cost of damages awarded in favor of the patentee for the subject country within the Territory from past infringement but shall have no other duty or liability to CELLDEX. CELLDEX shall provide reasonable assistance to 3M in relation to such proceedings provided 3M shall reimburse CELLDEX for its reasonable out-of-pocket expenses in providing any such third party on such terms as MRErequested assistance, but not any other expenses if, for example, CELLDEX elects to be separately represented (which shall be at CELLDEX’s discretion), in its sole discretion, which case such separate representation shall negotiate, be at CELLDEX’s cost and expense; (ii) if 3M succeeds in any such event MRE proceedings whether at trial or by way of settlement, it shall be entitled to retain any part of an award of costs and permitted damages made in such proceedings or settlement sum paid that is necessary to offset against recover its costs and deduct from the royalties and other compensation payable balance shall then be shared between the Parties in proportion to DTI under Sections 4.1(hthe loss suffered by each Party in consequence of such proceedings. (c) and (i) hereof with respect If 3M elects not to sales in unilaterally control the subject country within the Territory 100% conduct of the Third Party Royalties which MREsuch claim or proceeding, its Affiliates and/or sublicensees shall become obligated to pay to said third party under such license or if the third party's patent claims cover the composition of matter of a alleged infringement is not due to Licensed ProductCompound, then CELLDEX shall be fully responsible for defending conducting such claim or proceeding at its sole cost and expenses and shall indemnify and hold harmless 3M for any damages or liability resulting from such litigation. Unused credits may 3M shall provide reasonable assistance to CELLDEX in relation to such proceedings provided CELLDEX shall reimburse 3M for its reasonable out-of-pocket expenses in providing any such requested assistance, but not any other expenses if, for example, 3M elects to be carried forward separately represented (which shall be at 3M’s discretion), in which case such separate representation shall be at 3M’s cost and offset against subsequent payments to DTI under such Sections.expense

Third Party Patents. In If a Third Party sues a Party alleging that such Party’s or such Party’s Affiliates’, Distributors’ or sublicensees’ Development, Commercialisation or Manufacturing activities (other than as a Manufacturer, which shall be governed by the event that in a country in the Territory a ------------------- third party claims either that an issued patent in which it has rights contains patent claims covering Licensed Products, Improvements, Licensed Compounds and/or Licensed Processes or that it has an ownership right or interest in Licensed Patent Rights, Improvements or Proprietary Information, MRE shall have the right, at MRE's sole election, either: (aapplicable Manufacturing Agreement) directly or indirectly through its Affiliates and sublicensees, to suspend or stop manufacture, use and sale of Licensed Products or development of Licensed Compounds for use in Licensed Processes under this Agreement infringe or will infringe said Third Party’s Patent Rights or misappropriate said Third Party’s trade secret or said Third Party’s Trademark or other intellectual property, then the sued Party shall give the other Party and the JPC prompt written notice thereof, and upon the sued Party’s request and in connection with such Party’s defence of any such Third Party suit, the other Party shall provide [***] [Confidential Treatment Required] assistance to the sued Party for such defence and shall join such suit where required to do so under the Applicable Law. The sued Party shall keep the JPC and the other Party, if such other Party has not joined in such country and suit, reasonably informed, in person or by telephone, prior to stop all royalty and other payments due to DTI under Sections 4.1(h(if possible) and (i) for such country upon giving DTI one (1) month's notice; or (b) to continue to manufacture, use and/or sell Licensed Products and/or Licensed Compounds for use in Licensed Processes directly or through its Affiliates and sublicensees and stand suit for patent infringement or against claims by a third party to ownershiprights or interest in during the Licensed Patent Rights, Improvements or Proprietary Information, at its own risk and expense. In addition to the foregoing options pendency of MRE, MRE shall have the right to obtain a license for the subject country within the Territory from any such third party on suit. The sued Party shall not admit the invalidity, unenforceability or non-infringement of any Patent Rights licensed under this Agreement or any infringement of a Third Party Patent in connection with activities conducted under this Agreement nor settle any such terms as MREsuit, [***] [Confidential Treatment Required]. The [***] [Confidential Treatment Required] out of pocket litigation costs and expenses incurred by each Party, including settlement costs, royalties paid in its sole discretion, shall negotiatesettlement of any such suit, and in the payment of any such event MRE shall be entitled and permitted damages to offset against and deduct from the royalties and other compensation payable to DTI under Sections 4.1(h) and (i) hereof with respect to sales in the subject country within the Territory 100% of the Third Party Royalties which MRE, its Affiliates and/or sublicensees shall become obligated to pay to said third party under such license if be [***] [Confidential Treatment Required]. Any amounts recovered from the third party's patent claims cover the composition Third Party by way of matter of a Licensed Product. Unused credits may costs shall be carried forward and offset against subsequent payments to DTI under such Sections[***] [Confidential Treatment Required].

Third Party Patents. In If during the event period of this Agreement either Party receives any notice, claim or proceedings from any Third Party alleging infringement of that in Third Party’s intellectual property by reason of the Development or Commercialisation of a country in the Territory a ------------------- third party claims either that an issued patent in which it has rights contains patent claims covering Licensed Products, Improvements, Licensed Compounds and/or Licensed Processes Product by Lorantis or that it has an ownership right or interest in Licensed Patent Rights, Improvements or Proprietary Information, MRE shall have the right, at MRE's sole election, eitherits Permitted Sublicensees hereunder: (a) directly 7.3.1 The notified Party shall forthwith inform the other Party of the notice, claim or indirectly through its Affiliates and sublicensees, to suspend or stop manufacture, use and sale of Licensed Products or development of Licensed Compounds for use in Licensed Processes under this Agreement in such country and to stop all royalty and other payments due to DTI under Sections 4.1(h) and (i) for such country upon giving DTI one (1) month's notice; orproceeding; (b) to continue to manufacture, use and/or sell Licensed Products and/or Licensed Compounds for use in Licensed Processes directly or through its Affiliates and sublicensees and stand suit for patent infringement or against claims by a third party to ownershiprights or interest in the Licensed Patent Rights, Improvements or Proprietary Information7.3.2 Lorantis shall, at its own risk cost and expense. In addition to , defend such claim or other proceeding in accordance with the foregoing options of MRE, MRE following: (i) Lorantis shall have sole conduct of the claim and any proceedings including any counterclaim for invalidity or unenforceability or any declaratory judgment action and including the right to obtain a license for settle provided always that Corixa shall not take any action (including without limitation, the subject country within settlement of any claim) which prejudices any right or interest of Lorantis other than with the Territory from any prior written consent of Lorantis. Each Xxxxx shall provide all reasonable necessary assistance to the other Party in relation to such third party on proceedings and Lorantis shall promptly indemnify Corixa and its Affiliates against the costs of such terms as MREactivity, except to the extent Corixa and its Affiliates elects to be separately represented at hearings and other proceedings (which shall be at Corixa’s and such Affiliates’s discretion), in which case to the extent of such separate representation, Corixa and such Affiliates shall bear its sole discretion, shall negotiate, own cost and expense; and (ii) if Lorantis succeeds in any such event MRE proceedings whether at trial or by way of settlement, it shall be entitled to retain any part of an award of costs and permitted damages made in such proceedings or settlement sum paid that is necessary to offset against recover its costs and deduct from the royalties and other compensation payable balance shall then be shared between the Parties in proportion to DTI under Sections 4.1(h) and (i) hereof with respect to sales the loss suffered by each Party in the subject country within the Territory 100% consequence of the Third Party Royalties which MRE, its Affiliates and/or sublicensees shall become obligated to pay to said third party under such license if the third party's patent claims cover the composition of matter of a Licensed Product. Unused credits may be carried forward and offset against subsequent payments to DTI under such Sectionsproceedings.

Third Party Patents. In Either Party may terminate this Agreement at any time in the event that such Party determines, in a country in its sole, reasonable, good faith judgment, that the Territory a ------------------- third party claims either that an issued patent in which it has rights contains patent claims covering Licensed ProductsBD Cartridge, Improvements, Licensed Compounds and/or Licensed Processes Inhaler or that it has an ownership right Product cannot be developed or interest in Licensed Patent Rights, Improvements or Proprietary Information, MRE shall have the right, at MRE's sole election, either: (a) directly or indirectly through its Affiliates and sublicensees, to suspend or stop manufacture, use and sale of Licensed Products or development of Licensed Compounds for use in Licensed Processes commercialized under this Agreement or the Supply Agreement because of a Third Party Patent that covers the manufacture, having manufactured, use, importation, offering for sale or sale of the BD Cartridge, Inhaler or Product in the United States, subject to the following: [*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED. (i) Prior to providing such country notice, such Party shall refer the issue to the JDT for its analysis of whether the development, manufacture, use, importation, offer for sale or sale of the [*] by a Party pursuant to this Agreement would infringe such Patent, and if so, whether a license under such Patent can be obtained on commercially reasonable terms (as determined in the sole discretion of the Party required to stop all royalty obtain such license) and/or whether it is commercially feasible to redesign the BD Cartridge, Inhaler and/or the Product so that such Patent would not be so infringed, and shall recommend a course of action to the Parties; and (ii) Such Party shall take the JDT's recommendation under good faith consideration, and if such Party still desires to terminate this Agreement despite such recommendation and the other payments due Party does not desire such termination, then the Parties shall attempt to DTI under Sections 4.1(hresolve such dispute first through referral to the Steering Committee and then, if necessary, pursuant to Section 15.2. If the Parties are unable to resolve such issue as set forth in subsections (i) and (iii) for above, then such country Party may terminate this Agreement upon giving DTI one thirty (130) month's notice; or (b) to continue to manufacture, use and/or sell Licensed Products and/or Licensed Compounds for use in Licensed Processes directly or through its Affiliates and sublicensees and stand suit for patent infringement or against claims by a third party to ownershiprights or interest in the Licensed Patent Rights, Improvements or Proprietary Information, at its own risk and expense. In addition days written notice to the foregoing options of MRE, MRE shall have the right to obtain a license for the subject country within the Territory from any such third party on such terms as MRE, in its sole discretion, shall negotiate, and in any such event MRE shall be entitled and permitted to offset against and deduct from the royalties and other compensation payable to DTI under Sections 4.1(h) and (i) hereof with respect to sales in the subject country within the Territory 100% of the Third Party Royalties which MRE, its Affiliates and/or sublicensees shall become obligated to pay to said third party under such license if the third party's patent claims cover the composition of matter of a Licensed Product. Unused credits may be carried forward and offset against subsequent payments to DTI under such SectionsParty.

Third Party Patents. In Either Party may terminate this Agreement at any time in the event that such Party determines, in a country in its sole, reasonable, good faith judgment, that the Territory a ------------------- third party claims either that an issued patent in which it has rights contains patent claims covering Licensed ProductsBD Cartridge, Improvements, Licensed Compounds and/or Licensed Processes Inhaler or that it has an ownership right Product cannot be developed or interest in Licensed Patent Rights, Improvements or Proprietary Information, MRE shall have the right, at MRE's sole election, either: (a) directly or indirectly through its Affiliates and sublicensees, to suspend or stop manufacture, use and sale of Licensed Products or development of Licensed Compounds for use in Licensed Processes commercialized under this Agreement or the Supply Agreement because of a Third Party Patent that covers the manufacture, having manufactured, use, importation, offering for sale or sale of the BD Cartridge, Inhaler or Product in the United States, subject to the following: [*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED. (i) Prior to providing such country notice, such Party shall refer the issue to the JDT for its analysis of whether the development, manufacture, use, importation, offer for sale or sale of the BD Cartridge, Inhaler or the Product by a Party pursuant to this Agreement would infringe such Patent, and if so, whether a license under such Patent can be obtained on commercially reasonable terms (as determined in the sole discretion of the Party required to stop all royalty obtain such license) and/or whether it is commercially feasible to redesign the BD Cartridge, Inhaler and/or the Product so that such Patent would not be so infringed, and shall recommend a course of action to the Parties; and (ii) Such Party shall take the JDT's recommendation under good faith consideration, and if such Party still desires to terminate this Agreement despite such recommendation and the other payments due Party does not desire such termination, then the Parties shall attempt to DTI under Sections 4.1(hresolve such dispute first through referral to the Steering Committee and then, if necessary, pursuant to Section 15.2. If the Parties are unable to resolve such issue as set forth in subsections (i) and (iii) for above, then such country Party may terminate this Agreement upon giving DTI one thirty (130) month's notice; or (b) to continue to manufacture, use and/or sell Licensed Products and/or Licensed Compounds for use in Licensed Processes directly or through its Affiliates and sublicensees and stand suit for patent infringement or against claims by a third party to ownershiprights or interest in the Licensed Patent Rights, Improvements or Proprietary Information, at its own risk and expense. In addition days written notice to the foregoing options of MRE, MRE shall have the right to obtain a license for the subject country within the Territory from any such third party on such terms as MRE, in its sole discretion, shall negotiate, and in any such event MRE shall be entitled and permitted to offset against and deduct from the royalties and other compensation payable to DTI under Sections 4.1(h) and (i) hereof with respect to sales in the subject country within the Territory 100% of the Third Party Royalties which MRE, its Affiliates and/or sublicensees shall become obligated to pay to said third party under such license if the third party's patent claims cover the composition of matter of a Licensed Product. Unused credits may be carried forward and offset against subsequent payments to DTI under such SectionsParty.

Third Party Patents. If any Third Party claims that a patent it owns or controls claims any aspect of a Licensed Product or its manufacture, use, sale, offer for sale, or importation, the Party with notice of such claim shall notify the other Party promptly. In such circumstances, Biogen Idec shall have the event that in a country in sole right (but not the Territory a ------------------- third party claims either that an issued patent in which it has rights contains patent claims covering Licensed Productsobligation), Improvementsat its own expense, Licensed Compounds and/or Licensed Processes to defend or that it has an ownership right bring suit (or interest in Licensed Patent Rights, Improvements or Proprietary Information, MRE take other appropriate legal action) using legal counsel of its own choice. ImmunoGen shall have the right, at MRE's sole election, either: (a) directly or indirectly through its Affiliates and sublicenseesown expense, to suspend or stop manufacturebe represented in any such action by Biogen Idec by counsel of ImmunoGen’s own choice; provided, use and sale however, that under no circumstances shall the foregoing affect the right of Licensed Products or development of Licensed Compounds for use in Licensed Processes under this Agreement in such country and Biogen Idec to stop all royalty and other payments due to DTI under Sections 4.1(h) and (i) for such country upon giving DTI one (1) month's notice; or (b) to continue to manufacture, use and/or sell Licensed Products and/or Licensed Compounds for use in Licensed Processes directly or through its Affiliates and sublicensees and stand control the suit for patent infringement or against claims by a third party to ownershiprights or interest as described in the Licensed Patent Rights, Improvements or Proprietary Information, at its own risk and expensefirst sentence of Section 7.4(c). In addition to the foregoing options of MRE, MRE Biogen Idec shall have the right sole control and authority over how to obtain a license for the subject country within the Territory from respond to and defend against such Third Party claims and whether and how to bring any such third party on such terms as MRE, in its sole discretion, shall negotiate, counterclaims and in any such event MRE shall be entitled and permitted to offset against and deduct from the royalties and other compensation payable to DTI under Sections 4.1(h) and (i) hereof with respect to sales in the subject country within the Territory 100% will keep ImmunoGen reasonably informed of the status of the claims. In the event that pursuant to any suit, proceeding or other legal action taken under this Section 7.5, a court of competent jurisdiction orders the payment of any damages, monetary awards or other amounts by Biogen Idec to such Third Party Royalties which MREand such court determines that all or a portion of such damages, its Affiliates and/or sublicensees shall become obligated monetary award or other award is attributable to pay to said third party under such license if the third party's patent claims cover development, manufacture, sale or importation of the composition of matter MAY Compound portion of a Licensed Product, Biogen Idec shall be entitled to offset [***] percent ([***]%) of the applicable portion of such damages, monetary award or other amounts against any royalties then owed or which become due thereafter under this Agreement to ImmunoGen. Unused credits may be carried forward Notwithstanding the foregoing, in no event shall the reductions under Sections 5.3 and offset against subsequent payments 5.5 and this Section 7.5 reduce the royalty for any Licensed Product payable under Section 5.3(a) to DTI less than [***] percent ([***]%) of Net Sales in any country. In the event further manufacture, use, sale, offer for sale or importation of the Licensed Product is enjoined as a result of a judgment in any suit, proceeding or other legal action taken under this Section 7.5 the Parties shall cooperate with each other reasonably and in good faith to comply with such Sections.judgment. ​

Third Party Patents. In If the event that manufacture, use or sale of LICENSED PRODUCT, LICENSED PROCESS, TECHNOLOGICAL INFORMATION, PATENT, and IMPROVEMENTS in connection with a country in the Territory a ------------------- third party claims either that an issued patent in which it has rights contains patent claims covering Licensed ProductsROYALTY PRODUCT by USSC, Improvements, Licensed Compounds and/or Licensed Processes or that it has an ownership right or interest in Licensed Patent Rights, Improvements or Proprietary Information, MRE shall have the right, at MRE's sole election, either:its affiliates, (a) directly or indirectly through its Affiliates to third party(s), if, any, for awarded damages, costs and sublicensees, to suspend or stop manufacture, use and sale of Licensed Products or development of Licensed Compounds for use in Licensed Processes under this Agreement expenses in such country and lawsuit or legal action pursuant to stop all royalty and other payments due to DTI under Sections 4.1(h) and (i) for such country upon giving DTI one (1) month's notice; or award, (b) to continue to manufacturethird party(s), use and/or sell Licensed Products and/or Licensed Compounds for use in Licensed Processes directly if any, with whom USSC settles any such claim, lawsuit or through its Affiliates and sublicensees and stand suit for patent infringement or against claims by a third party to ownershiprights or interest in the Licensed Patent Rights, Improvements or Proprietary Information, at its own risk and expense. In addition other legal action to the foregoing options extent required by the terms of MREsuch settlement, MRE shall have the right and (c) to obtain a license for the subject country within the Territory from pay fifty percent (50%) of USSC’s legal costs and expenses as and when billed to USSC in connection with any such third party on such terms as MREclaim, in its sole discretionlawsuit or other legal action, shall negotiatewith the balance, if any, to be released to LICENSOR after final determination of and in any such event MRE reduction for all of the foregoing. Any other instructions to the escrow agent shall be entitled mutually agreed upon by LICENSOR and permitted USSC. Assuming LICENSOR has not breached or defaulted on this Agreement, LICENSOR’s liability for such award, amounts paid in settlement and USSC’s legal costs and expenses shall be limited to offset against [CONFIDENTIAL TREATMENT REQUESTED] /*/ percent ([CONFIDENTIAL TREATMENT REQUESTED] /*/ %) of the amounts in escrow pursuant to this Paragraph, plus [CONFIDENTIAL TREATMENT REQUESTED] /*/ % ([CONFIDENTIAL TREATMENT REQUESTED] /*/ %) of all future minimum and deduct from the earned royalties and other compensation payable to DTI LICENSOR under Sections 4.1(h) this Agreement. Such future minimum and (i) hereof earned royalties shall be subject to escrow in accordance with respect to sales in the subject country within the Territory 100% of the Third Party Royalties which MRE, its Affiliates and/or sublicensees shall become obligated to pay to said third party under such license if the third party's patent claims cover the composition of matter of a Licensed Product. Unused credits may be carried forward and offset against subsequent payments to DTI under such Sectionsthis Paragraph.