Common use of XOMA Covenant Clause in Contracts

XOMA Covenant. Subject to the limitations contained therein, MORPHOSYS hereby grants to CENTOCOR and those Affiliates agreeing to the requirements set forth in this Section 3.8(a) the benefits of the covenant-not-to-xxx (“XOMA Covenant”) under a license agreement between MORPHOSYS and XOMA IRELAND LIMITED (“XOMA License Agreement”), with regard to the “Patent Rights” listed in Schedule 1.17 of the XOMA License Agreement, to the extent necessary to permit CENTOCOR and such Affiliates to practice any licenses granted by MORPHOSYS to CENTOCOR hereunder . The benefits of the XOMA Covenant shall be personal CONFIDENTIAL to CENTOCOR and its Affiliates (as the case may be) and non-sublicensable or further conveyable, and shall not include the right to commercialize any products under XOMA’s patent rights. CENTOCOR and any Affiliate wishing to receive the benefits of the XOMA Covenant hereby acknowledge that each has read the redacted copy of the XOMA License Agreement that is appended hereto as Appendix 1.51, and CENTOCOR and any Affiliate wishing to benefit from the XOMA Covenant agree to abide by the provisions contained therein. In particular, CENTOCOR and such Affiliates agree that each shall abide by each of the provisions under Sections 2.4(b)(i) through 2.4(b)(iv) of the XOMA License Agreement, and CENTOCOR, its Affiliates and MORPHOSYS hereby agree that XOMA shall be an intended third party beneficiary with respect to such agreement to abide by such provisions. CENTOCOR acknowledges, on its own behalf and on behalf of its Affiliates, that the benefits under the XOMA Covenant are limited by the exclusions set forth in Section 2.3 of the XOMA License Agreement. CENTOCOR will notify MORPHOSYS of each Affiliate desiring access to the XOMA Covenant.

XOMA Covenant. Subject As required by the XOMA Agreement, the Parties acknowledge and agree that the XOMA Covenant is subject to the limitations contained thereinfollowing provisions: (a) Merrimack will abide by each of the limitations, MORPHOSYS hereby grants restrictions and other obligations applicable to CENTOCOR Merrimack provided for in the XOMA Agreement including, without limitation, the restrictions on use of Transferred Materials for purposes other than Research and those Affiliates agreeing Development; (b) Merrimack covenants not to use the Transferred Materials for any purpose other than for Research and Development purposes; (c) Merrimack agrees that the “first sale” doctrine does not apply to any Disposition of Transferred Materials; (d) Merrimack shall Dispose of Transferred Materials only to a Third Party who otherwise meets the definition of a Dyax Collaborator under the XOMA Agreement and who executes a written agreement in which its undertakes all of the obligations set forth herein; (e) XOMA shall be an intended Third Party beneficiary with respect to the requirements set forth in this foregoing provisions of Section 3.8(a3.3(a) through (d); (f) If Merrimack or any person or entity controlled by Merrimack contests the benefits validity or enforceability of the covenant-not-to-xxx (“XOMA Covenant”) under a license agreement between MORPHOSYS and XOMA IRELAND LIMITED (“XOMA License Agreement”), with regard to the “Patent Rights” listed in Schedule 1.17 any of the XOMA License AgreementPatent Rights hereunder, to the extent necessary to permit CENTOCOR and such Affiliates to practice any licenses granted by MORPHOSYS to CENTOCOR hereunder . The benefits of the XOMA Covenant shall be personal CONFIDENTIAL to CENTOCOR and its Affiliates (as the case may be) and non-sublicensable or further conveyable, and shall not include have the right to commercialize any products under XOMA’s patent rights. CENTOCOR and any Affiliate wishing terminate (or cause Dyax to receive the benefits terminate) all of the rights hereby granted to Merrimack under the XOMA Covenant hereby acknowledge Patent Rights; (g) Merrimack acknowledges and agrees that each it has read received from Dyax, and is subject to the relevant provisions of, the following documents: (i) a redacted copy of the XOMA License Agreement that is appended containing all of the limitation, restrictions and other obligations provided therein with respect to the XOMA Patent Rights; and (ii) the Form of Notice attached hereto as Appendix 1.51G and incorporated herein; (h) Merrimack acknowledges and agrees that nothing in this Agreement shall be construed as a release or waiver of past, present or future infringement of the XOMA Patent Rights by Merrimack acting outside the scope of this Agreement nor as a release from Dyax from any claim of infringement of the XOMA Patent Rights nor as any right to release any Third Party from any claim of infringement under the XOMA Patent Rights; (i) Merrimack acknowledges and CENTOCOR and any Affiliate wishing to benefit from agrees that the XOMA Covenant agree shall not extend to abide by the provisions contained therein. In particular, CENTOCOR and such Affiliates agree that each shall abide by each of the provisions under Sections 2.4(b)(i) through 2.4(b)(iv) infringement of the XOMA License AgreementPatent Rights arising out of making or the means or methods used to make any amount of a Dyax Antibody or Product other than those quantities of Antibody reasonably required for Research and Development purposes; provided, and CENTOCORhowever, its Affiliates and MORPHOSYS hereby agree that XOMA Dyax or Merrimack shall be an intended third party beneficiary permitted to make or have made any Dyax Antibody by any means of its selection other than those which otherwise infringe a Valid Claim of the XOMA Patent Rights; (j) Merrimack acknowledges and agrees that the XOMA Covenant shall become void and without effect as to Merrimack if Merrimack fails to materially discharge or comply with any terms of this Agreement with respect to such agreement to abide by such provisions. CENTOCOR acknowledges, on its own behalf the XOMA Patent Rights; (k) Merrimack acknowledges and on behalf of its Affiliates, agrees that the benefits XOMA Covenant is personal to Dyax and Merrimack and Merrimack’s Affiliates and cannot be assigned or transferred; (l) Merrimack agrees that Dyax shall have the right to deliver to XOMA a written report which shall specify the name, address and contact person for Merrimack; and (m) In the event of the termination of the XOMA Agreement by Dyax, the covenants, licenses and rights granted to Dyax and Merrimack under the XOMA Covenant are limited by Agreement shall survive. In the exclusions set forth in Section 2.3 event of the termination of the XOMA License AgreementAgreement by XOMA, the licenses and rights granted to Dyax and Merrimack under the XOMA Agreement shall terminate. CENTOCOR will notify MORPHOSYS of each Affiliate desiring access Notwithstanding anything to the contrary in this Agreement, Merrimack’s sole and exclusive liability for any failure to comply with the foregoing provisions of this Section 3.3 shall be that the XOMA CovenantCovenant may not apply.

XOMA Covenant. Subject to the limitations contained therein, MORPHOSYS hereby grants to CENTOCOR and those Affiliates agreeing to the requirements set forth in this Section 3.8(a) the benefits of the covenant-not-to-xxx (“XOMA Covenant”) under a license agreement between MORPHOSYS and XOMA IRELAND LIMITED (“XOMA License Agreement”), with regard to the “Patent Rights” listed in Schedule 1.17 of the XOMA License Agreement, to the extent necessary to permit CENTOCOR and such Affiliates to practice any licenses granted by MORPHOSYS to CENTOCOR hereunder . The benefits of the XOMA Covenant shall be personal 22 of 124 ***Confidential Treatment Requested CONFIDENTIAL to CENTOCOR and its Affiliates (as the case may be) and non-sublicensable or further conveyable, and shall not include the right to commercialize any products under XOMA’s patent rights. CENTOCOR and any Affiliate wishing to receive the benefits of the XOMA Covenant hereby acknowledge that each has read the redacted copy of the XOMA License Agreement that is appended hereto as Appendix 1.51, and CENTOCOR and any Affiliate wishing to benefit from the XOMA Covenant agree to abide by the provisions contained therein. In particular, CENTOCOR and such Affiliates agree that each shall abide by each of the provisions under Sections 2.4(b)(i) through 2.4(b)(iv) of the XOMA License Agreement, and CENTOCOR, its Affiliates and MORPHOSYS hereby agree that XOMA shall be an intended third party beneficiary with respect to such agreement to abide by such provisions. CENTOCOR acknowledges, on its own behalf and on behalf of its Affiliates, that the benefits under the XOMA Covenant are limited by the exclusions set forth in Section 2.3 of the XOMA License Agreement. CENTOCOR will notify MORPHOSYS of each Affiliate desiring access to the XOMA Covenant.