Common use of Blocking Patents Clause in Contracts

Blocking Patents. If [*] cannot Manufacture or Commercialize an FDC Product in the Field in the Territory without infringing Patent Rights other than Patent Rights Controlled by Forest or its Affiliate (including those [*]) and not licensed to Forest hereunder, which Patent Rights Covers such FDC Product, unless it obtains a license to such patent from a Third Party (other than [*]) (a “Forest Blocking Patent”) and pays a royalty under such license (including in connection with settlement of a patent infringement claim in accordance with Section 7.7), or (B) becomes subject to a final court or other binding order or ruling requiring the payment of a royalty to a Third Party with respect to a Forest Blocking Patent in order to Manufacture or Commercialize an FDC Product in the Field in the Territory (collectively, “Forest Third Party Patent Licenses”), [*] of any royalties paid under Forest Third [*] = 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. Party Patent Licenses by Forest, its Affiliates or Sublicensees on Net Sales of such FDC Products after the applicable Royalty Commencement Date shall be fully creditable against royalties payable to Adamas hereunder with respect to such FDC Product; provided, however, that in no event shall such credit, together with any offset under Section 6.4(c)(vi), cause the royalties paid to Adamas with respect to such FDC Product for any particular Calendar Quarter to be reduced to less than [*] of the amount that would otherwise be payable to Adamas for such Calendar Quarter pursuant to Section 6.4(a) or Section 6.4(c)(ii), as applicable, provided, further, that any such royalty paid on sales of such FDC Product after the Royalty Commencement Date under Forest Third Party Patent Licenses by Forest that is not used by Forest in a particular Calendar Quarter to reduce royalties on sales of such FDC Product paid to Adamas in such Calendar Quarter may be carried over to subsequent Calendar Quarters until fully used in accordance with this Section 6.4(c)(vii).

Blocking Patents. If [*] cannot Manufacture In the event that: (a) changes to the design or Commercialize an FDC Product in function of the Field in the Territory without infringing Patent Rights other than Patent Rights Controlled by Forest or its Affiliate Inhaler are Necessary (including those [*]defined below) and not licensed such design or function is embodied within the Standard Inhaler; (b) it is Necessary for SALUS, its Affiliates or Sublicensees to Forest hereundermake changes to the Package where PARI was responsible for the Package; or (c) due to any design or function of the Inhaler, which Patent Rights Covers where such FDC Productdesign or function is embodied within the Standard Inhaler, unless it obtains is Necessary for SALUS, its Affiliates or Sublicensees to obtain a license to such patent from a Third Party (other than [*]) (a “Forest Blocking Patent”) and pays pay a royalty under such license (including in connection with settlement of a patent infringement claim in accordance with Section 7.7), or (B) becomes subject to a final court third party under any patent or other binding order or ruling requiring the payment proprietary interest of a royalty to a Third Party with respect to a Forest Blocking Patent such third party in order to Manufacture or Commercialize an FDC Product in fully exercise the Field in the Territory (collectively, “Forest Third Party Patent Licenses”), [*] of any royalties paid under Forest Third [*] = Certain confidential information contained licenses granted to SALUS and its Affiliates in this documentAgreement, marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant SALUS’ obligations to Rule 406 of the Securities Act of 1933, as amended. Party Patent Licenses by Forest, its Affiliates pay Royalties or Sublicensees Step-Down Royalties to PARI on Net Sales of such FDC Products after the applicable Royalty Commencement Date in that country shall be fully creditable against royalties payable to Adamas hereunder with respect to such FDC Product; provided, however, that in no event shall such credit, together with any offset under Section 6.4(c)(vi), cause the royalties paid to Adamas with respect to such FDC Product for any particular Calendar Quarter to be reduced to less than by [*] of the amount that would otherwise be of the cost to SALUS, its Affiliates and Sublicensees of such changes or the royalties paid or payable to Adamas for such Calendar Quarter third party, only to the extent PARI has not already paid SALUS pursuant to PARI’s indemnification obligations under Section 6.4(a) or Section 6.4(c)(ii)13.1 of this Agreement. Notwithstanding the foregoing, as applicable, provided, further, that any such royalty paid on sales of such FDC Product after SALUS’ obligation to pay the Royalty Commencement Date under Forest Third Party Patent Licenses or Step-Down Royalty shall not be reduced by Forest that is not used by Forest more than [*]. This Section shall have no effect on SALUS’ obligation to pay PARI the minimum annual royalty. It shall be considered “Necessary” to make changes or obtain a license if so ordered in a particular Calendar Quarter to reduce royalties on sales non- *Confidential Treatment Requested. appealable decision by a court of such FDC Product paid to Adamas competent jurisdiction in such Calendar Quarter country or if SALUS, any Affiliate of SALUS or any Sublicensee obtains a written opinion from two qualified mutually agreed upon independent patent counsels in such country that the Inhaler, Formulation for the Drug Product or Package for the Drug Product, whichever the case may be carried over to subsequent Calendar Quarters until fully used in accordance with this Section 6.4(c)(vii)be, infringes upon such third party’s patent rights.

Blocking Patents. If [*[ * ] cannot Manufacture or Commercialize an FDC Product in the Field in the Territory without infringing Patent Rights other than Patent Rights Controlled by Forest or its Affiliate (including those [*[ * ]) and not licensed to Forest hereunder, which Patent Rights Covers such FDC Product, unless it obtains a license to such patent from a Third Party (other than [*[ * ]) (a “Forest Blocking Patent”) and pays a royalty under such license (including in connection with settlement of a patent infringement claim in accordance with Section 7.7), or (B) becomes subject to a final court or other binding order or ruling requiring the payment of a royalty to a Third Party with respect to a Forest Blocking Patent in order to Manufacture or Commercialize an FDC Product in the Field in the Territory (collectively, “Forest Third Party Patent Licenses”), [*[ * ] of any royalties paid under Forest Third [*] = 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. Party Patent Licenses by Forest, its Affiliates or Sublicensees on Net Sales of such FDC Products after the applicable Royalty Commencement Date shall be fully creditable against royalties payable to Adamas hereunder with respect to such FDC Product; provided, however, that in no event shall such credit, together with any offset under Section 6.4(c)(vi), cause the royalties paid to Adamas with respect to such FDC Product for any particular Calendar Quarter to be reduced to less than [*[ * ] of the amount that would otherwise be payable to Adamas for such Calendar Quarter pursuant to Section 6.4(a) or Section 6.4(c)(ii), as applicable, provided, further, that any such royalty paid on sales of such FDC Product after the Royalty Commencement Date under Forest Third Party Patent Licenses by Forest that is not used by Forest in a particular Calendar Quarter to reduce royalties on sales of such FDC Product paid to Adamas in such Calendar Quarter may be carried over to subsequent Calendar Quarters until fully used in accordance with this Section 6.4(c)(vii).

Blocking Patents. If [*] cannot Manufacture or Commercialize an FDC Product in the Field in the Territory without infringing Patent Rights other than Patent Rights Controlled by Forest or its Affiliate (including those [*]) and not licensed to Forest hereunder, which Patent Rights Covers such FDC Product, unless it obtains a license to such patent from a Third Party (other than [*]) (a “Forest Blocking Patent”) and pays a royalty under such license (including in connection with settlement of a patent infringement claim in accordance with Section 7.7), or (B) becomes subject to a final court or other binding order or ruling requiring the payment of a royalty to a Third Party with respect to a Forest Blocking Patent in order to Manufacture or Commercialize an FDC Product in the Field in the Territory (collectively, “Forest Third Party Patent Licenses”), [*] of any royalties paid under Forest Third [*] = 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. Party Patent Licenses by Forest, its Affiliates or Sublicensees on Net Sales of such FDC Products after the applicable Royalty Commencement Date shall be fully creditable against royalties payable to Adamas Xxxxxx hereunder with respect to such FDC Product; provided, however, that in no event shall such credit, together with any offset under Section 6.4(c)(vi), cause the royalties paid to Adamas with respect to such FDC Product for any particular Calendar Quarter to be reduced to less than [*] of the amount that would otherwise be payable to Adamas for such Calendar Quarter pursuant to Section 6.4(a) or Section 6.4(c)(ii), as applicable, provided, further, that any such royalty paid on sales of such FDC Product after the Royalty Commencement Date under Forest Third Party Patent Licenses by Forest that is not used by Forest in a particular Calendar Quarter to reduce royalties on sales of such FDC Product paid to Adamas in such Calendar Quarter may be carried over to subsequent Calendar Quarters until fully used in accordance with this Section 6.4(c)(vii).

Blocking Patents. If [*] Adamas (A) reasonably determines that it cannot Manufacture or Commercialize an FDC a Product for which compensation is due to Forest under Section 6.4(d) in the Field in outside the Territory without infringing Patent Rights other than Patent Rights Controlled by Forest Adamas or its Affiliate (including or those [*]licensed to Forest by [ * ] under the [ * ] Agreements) and not licensed to Forest Adamas hereunder, which Patent Rights Covers Cover such FDC Product, Product unless it obtains a license to such patent from a Third Party (other than [*]from [ * ] or any of its licensees) (a an “Forest Adamas Blocking Patent”) and pays a royalty under such license (including in connection with settlement of a patent infringement claim in accordance with Section 7.7), or (B) becomes subject to a final court or other binding order or ruling requiring the payment of a royalty to a Third Party with respect to a Forest an Adamas Blocking Patent in order to Manufacture or Commercialize an FDC such Product in the Field in outside the Territory (collectively, “Forest Adamas Third Party Patent Licenses”), [*[ * ] of any royalties paid under Adamas Third Party Patent Licenses by Adamas, its Affiliates or (sub)licensees on net sales of such Product for which Adamas has a payment obligation to Forest under Section 6.4(d)(i)(B) shall be fully creditable against royalties and Sublicensing Revenue payments payable to Forest under Sections 6.4(d)(i)(A) and (B) with respect to such Product; provided, however, that in no event shall such offset, together with any offset under Section 6.4(d)(iii), cause the amounts due to Forest pursuant to Section 6.4(d)(i) for any particular Calendar Quarter for any country to be reduced (A) in any case of Section 6.4(d)(i)(A), to less than [ * ] of the amount that would otherwise be payable to Forest for such Calendar Quarter for such country pursuant to such clause or (B) in any case of Section 6.4(d)(i)(B), to less than [ * ] of the amount that would otherwise be payable to Forest for such Calendar Quarter pursuant to such clause; provided, further, that any such royalty paid under Adamas Third Party Patent Licenses by Adamas that is not used by Adamas in a particular Calendar Quarter to reduce royalties paid to Forest in such Calendar Quarter may be carried over to subsequent Calendar Quarters until fully used in accordance with this Section 6.4(d)(iv). [*] = 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. Party Patent Licenses by Forest, its Affiliates or Sublicensees on Net Sales of such FDC Products after the applicable Royalty Commencement Date shall be fully creditable against royalties payable to Adamas hereunder with respect to such FDC Product; provided, however, that in no event shall such credit, together with any offset under Section 6.4(c)(vi), cause the royalties paid to Adamas with respect to such FDC Product for any particular Calendar Quarter to be reduced to less than [*] of the amount that would otherwise be payable to Adamas for such Calendar Quarter pursuant to Section 6.4(a) or Section 6.4(c)(ii), as applicable, provided, further, that any such royalty paid on sales of such FDC Product after the Royalty Commencement Date under Forest Third Party Patent Licenses by Forest that is not used by Forest in a particular Calendar Quarter to reduce royalties on sales of such FDC Product paid to Adamas in such Calendar Quarter may be carried over to subsequent Calendar Quarters until fully used in accordance with this Section 6.4(c)(vii).