Infringement. 5.1. In the event that, during the Term of this Agreement, BNED learns of any infringement or threatened infringement of the Licensed Marks, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks. 5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N. 5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. 5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 3 contracts
Sources: Trademark License Agreement (Barnes & Noble Education, Inc.), Trademark License Agreement (Barnes & Noble Inc), Trademark License Agreement (Barnes & Noble Education, Inc.)
Infringement. 5.1. In A. Licensee and CMCC shall each inform the event that, during other promptly in writing with reasonably sufficient facts of any alleged infringement by a third-party of the Term Patent Rights in the Field of Use within the scope of this Agreement, BNED learns Agreement and of any infringement or threatened infringement of available evidence thereof.
B. Licensee will have the Licensed Marksfirst right, or dilution by a third party in but not the U.S. obligation, at its own costs and expense, to defend the Patent Rights throughout the Territory with respect to the Licensed MarksField of Use (subject to consultation with CMCC on strategy, BNED filings and selection and use of outside counsel), provided that Licensee will not settle or compromise any claim, without the prior approval of CMCC, which may not be withheld, conditioned or delayed, unreasonably and will not make any admission as to CMCC without the prior approval of CMCC.
C. During the Term, Licensee shall promptly notify B&N have the first right, but not the obligation, to prosecute at its own expense any infringement of the Patent Rights provided however that if such alleged infringer is an academic institution, a non-profit entity or a foundation (each a “NP Party”), then to the extent Licensee’s rights to prosecute such action are not limited or compromised by such delay because of a tolling or statute of limitations with respect to bringing a cause of action, CMCC shall have two (2) months from receipt from Licensee of sufficient facts of alleged infringement so that CMCC may investigate and persuade such NP Party to desist. Licensee shall not take any action against such NP Party during such two month period. If CMCC is unsuccessful within such two months or waives its authorized representative giving particulars thereofinitial right with respect to a NP Party, then Licensee shall have the right to proceed as set forth herein. CMCC may join Licensee as a party plaintiff in any such suit described herein, at its own expense, and hereby consents to join Licensee as a party plaintiff, at Licensee’s expense, if CMCC is required as a necessary party for such suit. Any recovery of damages by Licensee for each such suit shall be applied first in satisfaction of any unreimbursed expenses and legal fees of CMCC and Licensee relating to such suit and next toward reimbursement of CMCC for any payments under Article IV past due or withheld and applied pursuant to this Article VIII. Any balance remaining will then be divided [***] to Licensee and [***] to CMCC. Notwithstanding the foregoing, BNED is not obligated such right to monitor bring such an infringement action permitted under this Paragraph C shall remain in effect only for so long as the license granted hereunder remains exclusive. No settlement, consent judgment or police unauthorized use other voluntary final disposition of the Licensed Marks by third parties to which it has not granted a sub-license with respect to suit may be entered into without the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringementconsent of CMCC, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed delayed. Licensee shall indemnify CMCC against any order for costs that may be made against CMCC in such proceedings caused by Licensee which are not due to the negligence, recklessness or intentional misconduct of any CMCC Indemnitee (defined below), breach by CMCC of any of its obligations under this Agreement or CMCC’s use of any Patent Right.
D. If within [***] after having been notified of any alleged infringement, Licensee shall have been unsuccessful in persuading the alleged infringer to desist or alternatively actively negotiating a license agreement with such alleged infringer and shall not have brought or shall not be diligently prosecuting an infringement action, or if B&N elects Licensee shall notify CMCC of its intention not to initiate Enforcement Proceedings). Any bring suit against any alleged infringer then, CMCC shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Patent Rights.
E. In the event Licensee shall undertake the enforcement and/or defense of the Patent Rights by litigation pursuant to Paragraph C of this Article VIII, Licensee may withhold up to [***] of the payments otherwise thereafter due to CMCC under Article IV above and apply the same toward reimbursement of up to [***] of Licensee’s expenses, including reasonable attorneys’ fees, in connection therewith, provided that Licensee sends a quarterly report to CMCC detailing such Enforcement Proceedings brought by B&N at BNED’s request expenses, offset and withholdings.
F. In the event that a declaratory judgment action alleging invalidity or non-infringement of any of the Patent Rights shall be brought against Licensee, CMCC, at its option, shall have the right, within [***] after commencement of such action, to participate in the defense of the action at its own expense under the lead of BNEDLicensee however in collaboration with CMCC.
G. In any infringement suit which either Party may institute to enforce the Patent Rights pursuant to this Agreement, the other Party hereto shall cooperate in all reasonable respects and, to the extent reasonably possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the Parties like.
H. Licensee shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at during the exclusive option and expense period of BNED, and (iv) all recoveries shall belong exclusively to BNED, this Agreement have the sole right subject to the following: (x) B&N shall not have terms and conditions hereof to sublicense any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in alleged infringer for future use of the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related Patent Rights to the bringing extent licensed by this Agreement. Any upfront fees paid to Licensee as part of such Enforcement Proceedings, a sublicense shall be shared between Licensee and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the CMCC as if they were Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement ProceedingsRoyalty Sublicensing Income.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 3 contracts
Sources: Exclusive License Agreement (Morphic Holding, Inc.), Exclusive License Agreement (Morphic Holding, Inc.), Exclusive License Agreement (Morphic Holding, Inc.)
Infringement. 5.1. In Section 5.1 Either Party shall promptly inform the event that, during the Term of this Agreement, BNED learns other Party in writing of any infringement or threatened alleged infringement of the Licensed Marks, or dilution any patent applicable to the Protector by a third party in and shall provide the U.S. other Party with respect any available evidence thereof. Neither Party shall notify a third party of the infringement or alleged infringement of any patent applicable to the Licensed MarksProtector without first consulting with the other Party. Both Parties shall use reasonable efforts and cooperation to terminate infringement without litigation, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding but, notwithstanding the foregoing, BNED in the event that either Party shall determine that it is in its best business interest to commence or threaten to commence litigation against an infringing third-party, then the other Party shall cooperate fully in assisting in such litigation proceeding.
Section 5.2 During the term of this License Agreement, Licensee shall have the first right, but not obligated the obligation, to monitor or police unauthorized use prosecute at its own expense all infringements of the Licensed Marks by third parties to which it has not granted a sub-license with respect any patent applicable to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringementProtector and, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing furtherance of such Enforcement Proceedings. In additionright, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to Licensor hereby agrees that Licensee may include the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined Licensor as a party plaintiff in any Enforcement Proceedings such suit, without its prior written consentexpense to the Licensor provided, however, that such right to bring such an infringement action shall remain in effect only for so long as the License granted herein remains exclusive. The total cost of any such infringement action commenced or defended solely by Licensee shall be borne by Licensee. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of the Licensor, which consent shall not unreasonably be withheld. Licensee shall indemnify the Licensor against any order for costs that may be granted or withheld made against the Licensor in its sole discretionsuch proceedings.
Section 5.3 If, unless such joinder is required within six (6) months after having been notified of any alleged infringement, Licensee shall have been unsuccessful in order persuading the alleged infringer to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings desist and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any have brought and shall not be diligently prosecuting an infringement action, or make if Licensee shall notify the Licensor at any admissionstime prior thereto of its intention not to bring suit against any alleged infringer then, that may affect and in those events only, the validity Licensor shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of any registration patent applicable to the Protector, and the Licensor may, for such purposes, use the name of the Exclusively Licensed Marks, without the prior written consent of B&N.Licensee as party plaintiff.
5.3. With respect to Section 5.4 In any infringement or threatened infringement, or dilution by a third party with respect suit as either Party may institute to enforce any patent rights applicable to the Non-Exclusively Licensed ▇▇▇▇Protector pursuant to this License Agreement, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bringother Party hereto shall, maintain or settle any such Enforcement Proceedings shall be at the exclusive option request and expense of B&Nthe Party initiating such suit, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingslike.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 3 contracts
Sources: License Agreement (Medisafe 1 Technologies Corp), License Agreement (Safecode Drug Technologies Corp.), License Agreement (Medisafe 1 Technologies Corp)
Infringement. 5.1. In Company shall have the event that, during the Term of this Agreement, BNED learns of first right to enforce any patent within PATENT RIGHTS against any infringement or threatened alleged infringement of the Licensed Marksthereof, or dilution by a third party in the U.S. with respect and shall at all times keep JHU informed as to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars status thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license Before Company commences an action with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringementof such patents, or dilution by a third party with respect Company shall give careful consideration to the Exclusively Licensed Marksviews of JHU and to potential effects on the public interest in making its decision whether or not to ▇▇▇. Thereafter, BNED Company may, at its own expense, institute suit against any such infringer or alleged infringer and control and defend such suit in a manner consistent with the terms and provisions hereof and recover any damages, awards or settlements resulting therefrom, subject to Paragraph 4.5. If required by law, JHU shall permit action under this Section to be brought in its name, including being joined as party-plaintiff. However, no settlement, consent judgment or other voluntary final disposition of the suit that concedes the invalidity or unenforceability of any patent within PATENT RIGHTS may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide be entered into without the prior written consent to the initiation of Enforcement Proceedings by BNED (JHU, which consent shall not be unreasonably withheld, conditioned . This right to ▇▇▇ for infringement shall not be used in an arbitrary or delayed if B&N capricious manner. JHU shall reasonably cooperate in any such litigation at Company’s expense. If Company elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request enforce any patent within the PATENT RIGHTS, then it shall be at the expense so notify JHU in writing within [**] days of BNEDreceiving notice that an infringement exists, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expenseJHU may, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretionjudgment and at its own expense, unless such joinder is required in order take steps to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be broughtenforce any patent and control, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingssettle, and (z) BNED shall not take defend such suit in a manner consistent with the terms and provisions hereof, and recover, for its own account, any actiondamages, awards or make any admissionssettlements resulting therefrom. However, no settlement, consent judgment or other voluntary final disposition of the suit that may affect concedes the validity invalidity or unenforceability of any registration of the Exclusively Licensed Marks, patent within PATENT RIGHTS may be entered into without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringementCompany, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED which consent shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingsunreasonably withheld.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 3 contracts
Sources: Exclusive License Agreement, Exclusive License Agreement (Kala Pharmaceuticals, Inc.), Exclusive License Agreement (Kala Pharmaceuticals, Inc.)
Infringement. 5.1. 9.1 In the event that, during that LICENSEE learns of the Term substantial infringement of any Licensed Patent Rights under this Agreement, BNED learns LICENSEE will promptly provide LICENSORS with notice and reasonable evidence of any such infringement or threatened infringement (“Infringement Notice”). During the period and in a jurisdiction where LICENSEE has exclusive rights under this Agreement, no party will notify a third party, including the infringer, of the Licensed Marks, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use infringement without first obtaining consent of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringementother parties, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall will not be unreasonably withheld. All parties will use diligent efforts, conditioned in cooperation with each other, to terminate such infringement without litigation.
9.2 If the infringing activity of potential commercial significance has not been abated within [***] following the effective date of the Infringement Notice, LICENSEE may institute suit for patent infringement against the infringer. LICENSEE may not join REGENTS or delayed UNIVERSITY OF VIENNA in a suit initiated by LICENSEE without LICENSORS’ respective prior written consent. If, in a suit initiated by LICENSEE, either or both LICENSORS are involuntarily joined other than by LICENSEE, LICENSEE will pay the costs incurred by LICENSORS arising out of such suit, including but not limited to, any legal fees of counsel that LICENSORS select and retain to represent them in the suit. If, within one hundred and eighty (180) days following the effective date of the Infringement Notice, the infringing activity of potential commercial significance has not been abated and if B&N elects LICENSEE has not brought suit against the infringer, LICENSORS may institute suit for patent infringement against the infringer. If LICENSORS institute such suit, LICENSEE may not join such suit without LICENSORS’ consent and may not thereafter commence suit against the infringer for the acts of infringement that are the subject of LICENSOR’S suit or any judgment rendered in that suit.
9.3 Any recovery or settlement received in connection with such suit will belong to initiate Enforcement Proceedings)the party that brings the suit. Any If such Enforcement Proceedings suit is brought jointly by B&N at BNED’s request shall LICENSORS and LICENSEE and the parties all participated, any recovery or settlement will be allocated in the following order: a) equally to cover any unreimbursed litigation costs each incurred, and b) any remaining amount shared jointly by the parties in proportion to the share of expenses paid by each party, but in no event will the LICENSORS’ share be less than [***] of such remaining amount to each LICENSOR if either one is or both LICENSORS are a party.
9.4 All parties will cooperate with each other in litigation instituted hereunder but at the expense of BNED, and the Parties shall equally share in the recovery party on account of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder whom suit is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings Such litigation will be controlled by the party bringing the action, except that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to LICENSORS may be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out represented by counsel of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff its choice in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution suit brought by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement ProceedingsLICENSEE.
5.4. B&N 9.5 Any agreement made by LICENSEE for the purposes of settling litigation or other dispute shall incur no liability to BNED under any legal theory by reason comply with the requirements of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution Section 3.2 of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNEDthis Agreement.
Appears in 3 contracts
Sources: Exclusive License Agreement (Caribou Biosciences, Inc.), Exclusive License (Caribou Biosciences, Inc.), Exclusive License Agreement (Caribou Biosciences, Inc.)
Infringement. 5.19.1 Licensee will notify Licensors in writing of any suspected infringement of the Licensed Patents in the Field of Use, and each Party will inform the other of any evidence of such suspected infringement within a reasonable time of obtaining such evidence.
9.2 Licensors will have the right during the term of this Agreement to institute, prosecute, and settle at its own expense suits for infringement of the Licensed Patents for any infringement occurring within the Field of Use, and if required by law, Licensee will join as party plaintiff in such suit. Where such suit is brought by Licensors, Licensors will be entitled to retain all damages and any other consideration recovered at successful conclusion of the suit, after having reimbursed the Licensors and the Licensee for any cost incurred in such suit (including compensation for the time and expenses of any Licensee’s personnel involved in the suit), such reimbursement being made on a prorated basis in the event such damages and other consideration are not sufficient to cover the costs incurred by both the Licensors and the Licensee.
9.3 In the event thatLicensors decides not to bring any such suit, Licensors will so notify Licensee and Licensee may bring such suit provided that (1) there are no other licensees of any of the Licensed Patents and (2) Licensors has not commenced suit for enforcement of the Licensed Patents pursuant to 9.4 below. Settlement of any suit brought by Licensee will require the consent of Licensors and Licensee, which neither will unreasonably withhold from the other, and any settlement amount or recovery for damages will be applied as follows: (i) first, to reimburse the Parties for their expenses in connection with the litigation, including compensation for the time and expenses of any Licensors and Licensee’s personnel involved in the suit in accordance with an agreement entered into between the Parties before such suit is brought, and (ii) second, the Parties will share any monies remaining in accordance with an agreement entered into between the Parties before such suit is brought.
9.4 Licensors will have the right in its absolute discretion during the Term of this Agreement, BNED learns Agreement to commence suits for infringement of the Licensed Patents for any infringement outside the Field of Use.
9.5 Notwithstanding the pendency of any infringement or threatened infringement of the Licensed Marksother claim or action by or against Licensee, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall Licensee will have no right to initiate reduce, terminate, suspend or escrow payment of any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is amounts required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be broughtpaid to Licensors pursuant to this Agreement. If B&N brings any such Enforcement Proceedings, * Confidential treatment requested UT-B #PLA 1562 and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.UC-A #IPA 0749 RRS/MTF
Appears in 3 contracts
Sources: Exclusive Commercial Patent License Agreement (BioAmber Inc.), Exclusive Commercial Patent License Agreement (BioAmber Inc.), Exclusive Commercial Patent License Agreement (BioAmber Inc.)
Infringement. 5.17.1 GENERAL will protect its PATENT RIGHTS from infringement and prosecute infringers when, in its sole judgement, such action may be reasonably necessary, proper and justified.
7.2 If VIACELL shall have supplied GENERAL with written evidence demonstrating to GENERAL's reasonable satisfaction prima facie infringement of a claim of a PATENT RIGHT in the LICENSE FIELD by a third party, VIACELL may by notice request GENERAL to take steps to protect the PATENT RIGHT. GENERAL shall notify VIACELL within three (3) months of the receipt of such notice whether GENERAL intends to prosecute the alleged infringement. If GENERAL notifies VIACELL that it intends to prosecute, GENERAL shall, within three (3) months of its notice to VIACELL either (i) cause infringement to terminate or (ii) initiate legal proceedings against the infringer. In the event thatGENERAL notifies VIACELL that GENERAL does not intend to prosecute said infringement VIACELL may, during upon notice to GENERAL, initiate legal proceedings against the Term of this Agreementinfringer at VIACELL's expense and in GENERAL's name if so required by law. No settlement, BNED learns of any infringement consent judgment or threatened infringement other voluntary final disposition of the Licensed Markssuit which invalidates or restricts the claims of such PATENT RIGHTS may be entered into without the consent of GENERAL, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably reasonably withheld. VIACELL shall indemnify GENERAL against any order for payment that may be made against GENERAL in such proceedings.
7.3 In the event one party shall initiate or carry on legal proceedings to enforce any PATENT RIGHT against any alleged infringer or defend a declaratory judgment action as provided in Paragraph 7.5, conditioned the other party shall fully cooperate with and supply all assistance reasonably requested by the party initiating or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle carrying on such proceedings. If B&N does not elect The party which institutes any suit to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) protect or enforce a PATENT RIGHT shall have exclusive sole control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not suit and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in bear the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a reasonable expenses (excluding legal fees) incurred by said other party in any action taken by B&N providing such assistance and cooperation as is requested pursuant to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingsthis Paragraph 7.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 3 contracts
Sources: License Agreement (Viacell Inc), License Agreement (Viacell Inc), License Agreement (Viacell Inc)
Infringement. 5.17.1. LICENSEE, as the exclusive commercial user of the Patent Rights, shall have the first right (but not obligation) to enforce the Patent Rights in the Field of Use. In the event thatexercising these rights, during the Term of this AgreementLICENSEE, BNED learns of any infringement or threatened infringement of the Licensed Marks, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless may contact alleged third party infringers and take steps to persuade such joinder is required third parties to desist from infringing the Patent Rights. LICENSEE shall have the first right, but not the obligation, to initiate and prosecute an infringement action. If LICENSEE declines, then LICENSOR shall, in order to confer jurisdiction in its sole discretion, have the jurisdiction in which right (but not the Enforcement Proceedings are to be brought, (yobligation) if BNED brings any such Enforcement Proceedings of initiating and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any prosecuting an infringement action, or make any admissions, that may affect defending a challenge to the validity of any registration the Patent Rights. LICENSEE shall notify LICENSORS of each instance of alleged unlicensed infringement and shall keep LICENSORS informed of all stages of Patent Rights enforcement, and LICENSOR shall use good faith efforts to cooperate with and supply all assistance reasonably requested at the expense of LICENSEE. Without limiting the generality of the Exclusively Licensed Marksforegoing, LICENSORS shall, if necessary to initiate or continue any such legal proceedings, join as party plaintiffs any legal proceedings initiated by LICENSEE at the LICENSEE’s request and expense. All costs of any action to enforce the Patent Rights taken by LICENSEE shall be borne by LICENSEE and any awarded damages derived therefrom less LICENSEE’s costs and expenses in bringing such action shall be treated as Non-Royalty Sublicensing Income under this License Agreement. All costs of any action to enforce the Patent Rights taken by LICENSORS shall be borne by LICENSORS and LICENSORS shall keep any awarded damages derived therefrom. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the prior written consent of B&N.
5.3LICENSORS, which consent shall not unreasonably be withheld. With respect to For clarity, LICENSEE shall not be relieved of any monetary obligations under this License Agreement during the pendency of any infringement or threatened infringement, or dilution by action taken under Article VII.
7.2. Each party shall promptly notify the other in writing in the event that a third party shall bring a claim of infringement against LICENSORS or LICENSEE with respect to the Non-Exclusively Licensed ▇▇▇▇Patent Rights, B&N either in the United States or in any foreign country in which there are Patent Rights.
7.3. In the event LICENSEE is sued for patent infringement with respect to exercising its license rights granted hereunder, threatened with such suit, or enjoined from exercising its license rights granted hereunder, LICENSEE may terminate this License Agreement according to Section 12.1(d) or contest the action against it. In any such action, LICENSEE shall have exclusive control be fully CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. responsible for all its costs, including expenses, judgments and settlements, and shall be entitled to proceeds that it may recover, including judgments, settlements and awards. LICENSORS shall not be liable for any losses incurred as the result of an action for infringement brought against LICENSEE as the result of LICENSEE’s exercise of any Enforcement Proceedings relating rights granted under this License Agreement. LICENSEE may not deduct, from payments due to LICENSORS, any portion of its costs related to any judgment or settlement of such actions.
7.4. In any infringement suit as either party may institute to enforce the Non-Exclusively Licensed ▇▇▇▇. The decision whether Patent Rights against third parties pursuant to bringthis License Agreement, maintain or settle in any such Enforcement Proceedings shall be infringement action brought against either party by a third party, each party hereto shall, at the exclusive option request and expense of B&Nthe other party, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and all recoveries shall belong exclusively the like.
7.5. Pursuant to B&N. BNED the LICENSORS’ retained rights under Section 2.2, the parties agree to make the Patent Rights and Tangible Materials available to non-profit research organizations and allow such non-profit research organizations to practice the Patent Rights and use the Tangible Materials solely for non-commercial teaching, research, other educationally-related purposes and clinical patient care purposes at the site(s) of such non-profit research organizations, and such activities shall not constitute an infringement, provided that any transfer of Patent Rights and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should Tangible Materials will be commenced, including to join or be joined as administered by a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing suitable agreement barring commercial use of such Enforcement ProceedingsPatent Rights and Tangible Materials.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 3 contracts
Sources: Exclusive License Agreement (Jounce Therapeutics, Inc.), Exclusive License Agreement (Jounce Therapeutics, Inc.), Exclusive License Agreement (Jounce Therapeutics, Inc.)
Infringement. 5.1. In A. Licensee and CMCC shall each inform the event that, during other promptly in writing of any alleged infringement by a third party of the Patent Rights in the Field of Use and of any available evidence thereof.
B. During the Term of this Agreement, BNED learns CMCC shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Patent Rights and, in furtherance of such right, Licensee hereby agrees that CMCC may include Licensee as a party plaintiff in any such suit, without expense to Licensee. No settlement, consent judgment or other voluntary final disposition of the suit that adversely affects the rights of Licensee under this Agreement may be entered into without the consent of Licensee. The total cost of any infringement action commenced or threatened defended solely by CMCC shall be borne by CMCC. Any recovery or damages for past infringement derived therefrom will first be applied to CMCC and Licensee’s expenses, including reasonable attorney’s fees, in connection therewith, and any balance remaining then will be divided eighty percent (80%) to CMCC and twenty percent (20%) to Licensee.
C. If within three (3) months after having been notified with sufficient facts of any alleged infringement, CMCC shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if CMCC notifies Licensee of its intention not to bring suit against any alleged infringer then, provided that the exclusive license granted to Licensee in ARTICLE II is still in effect for such relevant Patent Rights, Licensee shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Licensed MarksPatent Rights. CMCC hereby agrees that Licensee may include CMCC as a party plaintiff in any such suit, without expense to CMCC. No settlement, consent judgment or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use other voluntary final disposition of the Licensed Marks by third parties to which it has not granted a sub-license with respect to suit may be entered into without the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringementconsent of CMCC, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld. Licensee shall indemnify CMCC against any order for costs that may be made against CMCC in such proceedings to the extent that such order does not relate to or arise from CMCC’s negligence, conditioned reckless misconduct or delayed if B&N elects not intentional misconduct during such proceeding.
D. In the event Licensee shall undertake the enforcement and/or defense of the Patent Rights by litigation pursuant to initiate Enforcement Proceedings)Paragraph C of this ARTICLE VII, Licensee may withhold up to fifty percent (50%) of the payments otherwise thereafter due to CMCC under ARTICLE IV above and apply the same toward reimbursement of up to fifty percent (50%) of Licensee’s expenses, including reasonable attorney’s fees, in connection therewith provided that Licensee sends a quarterly report to CMCC detailing such expenses, offset and withholdings. Any recovery of damages by Licensee for each such Enforcement Proceedings brought by B&N at BNED’s request suit shall be applied first in satisfaction of any unreimbursed expenses and legal fees of CMCC and Licensee relating to such suit and next toward reimbursement of CMCC for any payments under ARTICLE IV past due or withheld and applied pursuant to this ARTICLE VII. Any balance remaining will then be divided eighty percent (80%) to Licensee and twenty percent (20%) to CMCC.
E. In the event that a declaratory judgment action alleging invalidity or non-infringement of any of the Patent Rights shall be brought against Licensee, CMCC, at its option, shall have the expense right, within thirty (30) days after commencement of BNEDsuch action, to intervene and participate along with Licensee in the defense of the action at its own expense.
F. In any infringement suit which either Party may institute to enforce the Patent Rights pursuant to this Agreement, the other Party hereto shall cooperate in all reasonable respects and, to the extent reasonably possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expenselike.
G. Licensee shall, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at during the exclusive option and expense period of BNEDthis Agreement, and (iv) all recoveries shall belong exclusively to BNED, have the sole right subject to the following: (x) B&N shall not have terms and conditions hereof to sublicense any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in alleged infringer for future use of the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related Patent Rights to the bringing extent licensed by this Agreement. Any upfront fees paid to Licensee as part of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings sublicense shall be at shared between Licensee and CMCC in accordance with the exclusive option and expense terms of B&NARTICLE IV, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined Paragraph C as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingsthey were Sublicensee Payments under this Agreement.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 3 contracts
Sources: Exclusive License Agreement (Genocea Biosciences, Inc.), Exclusive License Agreement (Genocea Biosciences, Inc.), Exclusive License Agreement (Genocea Biosciences, Inc.)
Infringement. 5.1. In 9.1 Each Party agrees to provide prompt written notice to the event thatother Party of any alleged infringement of the Patent Rights in the Field by a third party, during and of any available evidence thereof, of which it becomes aware.
9.2 During the Term term of this Agreement, BNED learns of any infringement or threatened infringement of the Licensed MarksLicensee, or dilution by a third party in the U.S. with respect to the Licensed Marksextent permitted by law, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding have the foregoingright, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent but shall not be unreasonably withheldobligated, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N prosecute at BNED’s request shall be at its own expense all infringements of the expense of BNED, and the Parties shall equally share Patent Rights in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expenseField and, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing furtherance of such Enforcement Proceedings. In additionright, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED Northwestern hereby agrees that Licensee may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined include Northwestern as a party plaintiff in such suit, without expense to Northwestern, provided, however, that such right to bring such infringement action shall remain in ef fect only for so long as the license granted herein remains exclusive. Prior to commencing any Enforcement Proceedings without such action, Licensee shall consult with Northwestern and shall consider the view of Northwestern regarding the advisability of the proposed action and its prior written consenteffect on the public interest. No settlement, which consent judgment or other voluntary final disposition of the suit may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, entered into without the prior written consent of B&N.Northwestern. Licensee shall indemnify Northwestern against any order for costs that may be made against Northwestern in such proceedings. Any recovery resulting from an action brought by Licensee shall be distributed as follows:
5.3(a) each Party shall be reimbursed for any expenses it incurred in the action; (b) as to ordinary damages for past infringement , Licensee shall receive an amount equal to either (i) its lost profits, (ii) a reasonable royalty on the infringing sales, or (iii) whatever alternative measure of such damages the court shall have applied, and such amount shall be treated as Net Sales for the purpose of calculating running royalties under Section 5.5; and (c) the Parties shall share equally in any additional award, including any special or punitive damages.
9.3 If six (6) months after having become aware of any alleged infringement Licensee has been unsuccessful in persuading the alleged infringer to desist and either has not brought or is not diligently prosecuting an infringement action, or if Licensee shall notify Northwestern at any time of its intention not to bring suit against any alleged infringer, then Northwestern shall have the right, at its sole discretion, to prosecute such infringement of the Patent Rights under its sole control and at its sole expense. With respect In the event Northwestern elects to prosecute an infringement of any Patent Rights as set forth in this Section 9.3, then (a) Northwestern shall keep any recovery or damages for past infringement derived therefrom, and (b) Licensee shall not offer to sublicense the infringed Patent Rights to the alleged infringer without Northwestern’s written consent.
9.4 In the event that a declaratory judgment action alleging invalidity, unenforceability, or noninfringement of any of the Patent Rights shall be brought against Northwestern or Licensee, Northwestern, at its option, shall have the right, within thirty (30) days after it receives notice of the commencement of such action, to intervene and take over the sole defense of the action (but only to the extent of the Patent Rights) at its own expense. If Northwestern does not exercise this right, Licensee may take over the sole defense of the action at Licensee's sole expense. No settlement, consent judgment or other voluntary final disposition of the action may be entered into without the prior written consent of Northwestern, which shall not be unreasonably withheld.
9.5 In any infringement or threatened infringementsuit that either Party may institute to enforce the Patent Rights in the Field pursuant to this Agreement and in any declaratory judgment action that one Party is defending, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇other Party hereto shall, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option request and expense of B&Nthe Party initiating or defending such suit, and cooperate in all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, reasonable respects (including to join or be joined joining as a party in if required by law) and, to the extent possible, have its employees testify when requested and make available relevant records, pa pers, information, samples, specimens, and the like.
9.6 For so long as the license granted herein remains exclusive during the term of this Agreement, Licensee shall have the sole right to sublicense any action taken by B&N to enforce its rights alleged infringer for future use of the Patent Rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required Field in order accordance with the terms and conditions of this Agreement relating to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be broughtsublicenses. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing Any upfront fees as part of such Enforcement Proceedingsa sublicense shall be shared equally between Licensee and Northwestern; other revenues to Licensee resulting from such a sublicense shall be treated pursuant to Section 5.6.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 3 contracts
Sources: License Agreement, License Agreement, License Agreement
Infringement. 5.19.1 If the production, sale or use of Licensed Products under this Agreement by Licensee results in any claim by third party for patent infringement against Licensee, Licensee shall promptly notify University thereof in writing, setting forth the facts of such claim in reasonable detail. University shall promptly notify Licensee if University receives notification of patent infringement from a Third Party Licensee, if any or any other third party. As between the parties to this Agreement, Licensee shall have the first and primary right and responsibility at its own expense to defend and control the defense of any such claim against Licensee and/or Third Party Licensees, by counsel of its own choice. It is understood that any settlement, consent judgment or other voluntary disposition of such actions must be approved by University, such approval not being unreasonably withheld. Subject to the policies of the Board of Governors of the University of North Carolina, University agrees to cooperate with Licensee in any reasonable manner deemed by Licensee to be necessary in defending any such action. Licensee and Third Party Licensees shall reimburse University on a pro-rata basis for any out of pocket expenses incurred in providing such assistance, except to the extent such patent infringement claim against Licensee or Third Party Licenses is a result of a breach of this Agreement by University.
9.2 In the event that, during the Term of this Agreement, BNED learns of that any infringement or threatened infringement of the Licensed Marks, or dilution Patent Rights licensed to Licensee are infringed by a third party in party, Licensee shall have the U.S. primary right, but not the obligation, to institute, prosecute and control any action or proceeding with respect to such infringement, by counsel of its choice, including any declaratory judgment action arising from such infringement. It is understood that any settlement, consent judgment or other voluntary disposition of such actions must be approved by University, such approval not to be unreasonably withheld. If Licensee recovers monetary damages in the Licensed Marksform of lost profits or reasonable royalty from a third party infringer, BNED then Licensee shall promptly pay to University a royalty on such amounts calculated in accordance with Section 3.5.
9.3 If Licensee elects not to enforce any patent within the Patent Rights, then Licensee shall notify B&N University in writing within *** days of receiving notice that an infringement exists. University may, at its own expense and control, take steps to defend or enforce any patent within the Patent Rights and recover, for its authorized representative giving particulars thereofown account, any damages, awards or settlements resulting therefrom. Licensee agrees to cooperate with University in any reasonable manner deemed by University to be necessary in defending any such action, provided that University reimburses Licensee for any out of pocket expenses incurred in providing such assistance.
9.4 Notwithstanding the foregoing, BNED is not obligated and in University’s sole discretion and at its sole expense, University shall be entitled to monitor or police unauthorized use participate through counsel of its own choosing in any legal action involving the Invention and Patent Rights. Nothing in the foregoing Sections shall be construed in any way which would limit the authority of the Licensed Marks Attorney General of North Carolina. University agrees that any future Third Party Licensees of the Patent Rights will be bound by third parties to terms which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNEDare consistent with, and not in conflict with, the Parties shall equally share in the recovery terms of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingsthis Article 9.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 3 contracts
Sources: License Agreement (Immune Design Corp.), License Agreement (Immune Design Corp.), License Agreement (Immune Design Corp.)
Infringement. 5.110.3.1 DuPont and Rosetta agree that Rosetta will indemnify DuPont against and will defend, at its own expense, all proceedings, suits, and claims against and/or affecting DuPont or any of its officers, directors, or employees alleging the infringement, breach or violation of any Intellectual Property Rights of any third party covering, or alleged to cover, the Software, in the form furnished or as subsequently modified by Rosetta. In Rosetta agrees to defend any such proceeding, suit, or claim, and to pay all costs, fees, and expenses including, without limitation, all reasonable attorneys' fees and other costs, incurred by DuPont and its officers, directors, agents or employees in connection with the defense of any such proceeding, suit, or claim, provided that:
(i) Rosetta will be given written notice of all claims of any such infringement or violation and of any suits or claims brought or threatened against DuPont;
(ii) Rosetta will be given full authority to assume control of the defense thereof through its own counsel at its sole expense but will not compromise or settle any suits or claims without the express prior written consent of DuPont, provided that such consent will not be unreasonably withheld or delayed;
(iii) DuPont will reasonably cooperate with Rosetta in the defense of such proceeding, suit, or claim at Rosetta's sole expense; and
(iv) the total expense that Rosetta shall be obligated to bear and pay under this Section 10.3.1 shall not exceed [***], the amount of the Resolver-TM- Software license paid by DuPont.
10.3.2 DuPont will indemnify Rosetta against all liabilities and costs, including reasonable attorneys' fees, for defense and settlement of any and all claims against DuPont or Rosetta in the event thatan allegation of infringement or violation of Intellectual Property Rights of a third party is caused by (i) modification of the Software by DuPont, during (ii) any infringement caused by DuPont's use or maintenance of the Term Software which conflicts with the terms and conditions of this Agreement, BNED learns of any infringement or threatened infringement of the Licensed Marks, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized and (iii) DuPont's willful use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed MarksSoftware after receipt of notice of infringement.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 3 contracts
Sources: License Agreement (Rosetta Inpharmatics Inc), License Agreement (Rosetta Inpharmatics Inc), License Agreement (Rosetta Inpharmatics Inc)
Infringement. 5.1. In 7.1 Each party shall promptly report in writing to the event that, other party during the Term of this Agreement, BNED learns of any infringement or threatened suspected infringement of any patent, or unauthorized use or misappropriation of the Licensed Marks, Technology or dilution Know-how by a third party in within the U.S. Territory of which it becomes aware, and shall provide the other party with respect to the Licensed Marksall available evidence supporting such infringement, BNED shall promptly notify B&N suspected infringement, or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use or misappropriation.
7.2 Except as provided in Paragraph 7.3, Licensee shall have the right to initiate an infringement suit or other appropriate action against any third party who at any time has infringed or is suspected of infringing any of the Patents or of using without proper authorization all or any portion of the Licensed Marks Technology or Know-how within the Territory. Licensee shall give PTI sufficient advance written notice of its intent to initiate such action and the reasons therefor, and shall provide PTI with an opportunity to make suggestions and comments regarding such action. Licensee shall keep PTI promptly informed of the status of any such action. Licensee shall have the sole and exclusive right to select counsel for and shall pay all expenses of such action. PTI shall offer reasonable assistance to Licensee at no charge to Licensee except for reimbursement by third parties to which it has not granted a subLicensee of PTI's reasonable out-license with respect to the Exclusively Licensed Marksof-pocket expenses. Any damages, profits, or awards of whatever nature recovered from such action shall, after deduction of Licensee's actual out-of-pocket legal expenses and court costs incurred in such action, shall be split equally between Licensee and PTI.
5.2. With respect to any infringement or threatened 7.3 In the event that Licensee does not within six (6) months (a) secure cessation of the infringement, or dilution (b) file and serve suit against the infringer, or (c) provide PTI with evidence of the pendency of a bona fide negotiation for the acceptance by the infringer of a third party sublicense under this Agreement, PTI shall thereafter have the right, but not the obligation, to convert Licensee's exclusive license hereunder to a non-exclusive license and/or to take action against the infringer at PTI's own expense, at PTI's election. Licensee shall offer reasonable assistance to PTI in connection with respect such action at no charge to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation PTI except for reimbursement by PTI of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings)Licensee's reasonable out-of-pocket expenses. Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense damages, profits, or awards of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting whatever nature recovered from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation action shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement ProceedingsPTI.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 3 contracts
Sources: Exclusive Technology License Agreement (China Rx Holdings, Inc.), Exclusive Technology License Agreement (Bitech Pharma, Inc.), Exclusive Technology License Agreement (Bitech Pharma, Inc.)
Infringement. 5.1COMPANY shall inform GI promptly in writing of any alleged infringement of the PATENT RIGHTS by a third party and of any available evidence thereof. Subject to COMPANY's right to join in the prosecution of infringements set forth below, the OWNERS shall have the right, but not the obligation, to prosecute in their own discretion and at their own expense, all infringements of the PATENT RIGHTS. The total cost of any such sole infringement action shall be borne by the OWNERS, and the OWNERS shall keep any recovery or damages derived therefrom. In any such infringement suits, COMPANY shall, at the OWNERS' expense, cooperate in all respects. COMPANY shall have the right to join the OWNERS' prosecution of any infringements of the PATENT RIGHTS: In any such joint infringement suits, the OWNERS and COMPANY will cooperate in all respects. The OWNERS and COMPANY will agree in good faith on the sharing of the total cost of any such joint infringement action and the sharing of any recovery or Alnylam; GI 2716, 2782 ZTM Dec. 19, 2002; page 13 damages derived therefrom. In the event thatthat the OWNERS decide not to prosecute infringements of the PATENT RIGHTS, during the Term of this Agreementneither solely nor jointly with COMPANY, BNED learns GI shall offer to COMPANY to prosecute any such infringement in its own discretion and at its own expense. GI will offer EuropeRNAi respectively. The OWNERS shall, at COMPANY'S expense, cooperate. The total cost of any such sole infringement action shall be borne by COMPANY, and COMPANY shall keep any recovery or threatened damages derived therefrom. In the event that COMPANY intends to make any arrangements with the infringer to settle the infringement of (such as sublicenses), and solely the Licensed Marks, OWNERS or dilution by a third party in the U.S. OWNERS jointly with respect to COMPANY have prosecuted the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without settlement needs the prior written consent approval of B&N.
5.3GI, which shall not unreasonably be withheld; reasons to withheld include, without limitation, that the settlement is financially disadvantageous for the OWNERS or GI. With respect Any infringer to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any which COMPANY grants such Enforcement Proceedings sublicenses shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement ProceedingsSUBLICENSEE under this Agreement.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 3 contracts
Sources: Co Exclusive License Agreement (Alnylam Pharmaceuticals Inc), Co Exclusive License Agreement (Alnylam Pharmaceuticals Inc), Co Exclusive License Agreement (Alnylam Pharmaceuticals Inc)
Infringement. 5.1. In Company shall have the event thatfirst right, during but not the Term of this Agreementobligation, BNED learns of to enforce any patent within the PATENT RIGHTS against any infringement or threatened alleged infringement of the Licensed Marks, or dilution by a third party thereof in the U.S. with respect LICENSED FIELD, and shall at all times keep JHU informed as to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars status thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license Before Company commences an action with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringementof such patents, or dilution by a third party with respect Company shall give careful consideration to the Exclusively Licensed Marksviews of JHU and to potential effects on the public interest in making its decision whether or not to ▇▇▇. Thereafter, BNED Company may, at its own expense, institute suit against any such infringer or alleged infringer and control and defend such suit in a manner consistent with the terms and provisions hereof and recover any damages, awards or settlements resulting therefrom, subject to Paragraph 4.5. However, no settlement, consent judgment or other voluntary final disposition of the suit may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide be entered into without the prior written consent to the initiation of Enforcement Proceedings by BNED (JHU, which consent shall not be unreasonably withheld, conditioned withheld unless such settlement amounts to a permitted sublicense hereunder. This right to ▇▇▇ for infringement shall not be used in an arbitrary or delayed if B&N elects not to initiate Enforcement Proceedings)capricious manner. Any such Enforcement Proceedings brought by B&N at BNED’s request JHU shall be at the expense of BNED, and the Parties shall equally share reasonably cooperate in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedingslitigation (including, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expensewithout limitation, including to join or be joined as a party if joining such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined action as a party plaintiff if necessary or desirable for initiation or continuation of such action) at Company’s expense for JHU’s out-of-pocket expenses. If Company elects not to enforce any patent within the PATENT RIGHTS, then it shall so notify JHU in any Enforcement Proceedings without its prior written consentwriting within six (6) months of receiving notice that an infringement exists, which may be granted or withheld and if such infringement is commercially material, JHU may, in its sole discretionjudgment and at its own expense, unless such joinder is required in order take steps to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be broughtenforce any patent and control, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingssettle, and (z) BNED shall not take any action, or make any admissions, that may affect defend such suit in a manner consistent with the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option terms and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingsprovisions hereof.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Exclusive License Agreement (BIND Therapeutics, Inc), Exclusive License Agreement (BIND Therapeutics, Inc)
Infringement. 5.1. In Each Party shall promptly provide written notice to the event that, other Party during the Agreement Term of this Agreement, BNED learns any (i) known infringement or suspected infringement by a Third Party of any Patent Rights, it is Handling hereunder to the extent that such Patent Rights cover a Degronimid or Product, or (ii) known or suspected unauthorized use or misappropriation by a Third Party of any C4T Know-How, Roche Know-How or Joint Know-How pertaining to a Degronimid or Product, and shall provide the other Party with all evidence in its possession supporting such infringement or threatened unauthorized use or misappropriation. Within [***] after Roche provides or receives such written notice (“Decision Period”), Roche, in its sole discretion, shall decide whether or not to initiate a suit or action in the Territory regarding such infringement or unauthorized use or misappropriation and shall notify C4T in writing of its decision in writing (“Suit Notice”). If Roche decides to bring a suit or take action, once Roche provides Suit Notice, Roche may immediately commence such suit or take such action. Roche shall keep C4T informed of the Licensed Marksstatus of any such suit or action and shall provide C4T with copies, or dilution by a third party in the U.S. with respect to the Licensed Marksextent Roche is lawfully permitted to do so, BNED of all substantive documents or communications filed in such suit or action. Roche shall promptly notify B&N have the sole and exclusive right to select counsel for any such suit or its authorized representative giving particulars thereofaction. Notwithstanding the foregoingRoche shall, BNED is not obligated to monitor or police unauthorized use except as provided below, pay all expenses of the Licensed Marks by third parties suit or action, including Roche’s attorneys’ fees and court costs. Any damages, settlement fees or other consideration received as a result of such suit or action shall be allocated as follows:
(a) First, to which reimburse Roche for its costs and, if any remains, to C4T for any advisory counsel fees and costs; and
(b) Second, the balance, if any, shall be allocated [***] to Roche, and [***] to C4T. If Roche believes it has not granted is reasonably necessary or desirable to obtain an effective remedy, upon written request C4T agrees to be joined as a sub-license with respect party to the Exclusively Licensed Marks.
5.2. With respect suit or action but shall be under no obligation to any infringement or threatened infringement, or dilution by a third party with respect participate except to the Exclusively Licensed Marksextent that such participation is required as the result of its being a named party to the suit or action. At Roche’s written request, BNED C4T shall offer reasonable assistance to Roche in connection therewith at no charge to Roche except for reimbursement of reasonable out-of-pocket expenses incurred by C4T in rendering such assistance. C4T shall have the right to participate and be represented in any such suit or action by its own counsel at its own expense. Roche may request that B&N bring litigationsettle, opposition, cancellation consent judgment or related legal proceedings otherwise voluntarily dispose of the suit or action (collectively, “Enforcement ProceedingsSettlement”) or provide prior without the written consent to of C4T but only if such Settlement can be achieved without adversely affecting C4T (including any of its Patent Rights and including by resulting in a reduction in royalties or milestones payable hereunder). If a Settlement could adversely affectC4T, then the initiation written consent of Enforcement Proceedings by BNED (C4T would be required, which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then event that Roche (i) BNED may initiate such proceedingsdoes not in writing advise C4T within the Decision Period that Roche will commence suit or take action, or (ii) fails to commence suit or take action within a reasonable time after providing Suit Notice, Roche shall assign such Patent Right to C4T and C4T shall thereafter have the right to commence suit or take action in the Territory with respect to such infringement or suspected infringement. In such situation and, notwithstanding anything in this Agreement to the contrary, C4T shall have exclusive control of the Enforcement Proceedingsfull discretion as to how it wishes to handle such suit and may reach settlement and retain all damages, (iii) settlement fees or other consideration under any decision terms and conditions it desires. If C4T believes it is reasonably necessary or desirable to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNEDobtain an effective remedy, and (iv) all recoveries shall belong exclusively to BNEDupon written request, subject to the following: (x) B&N shall not have any obligation Roche agrees to be joined as a party plaintiff in to the suit or action but shall be under no obligation to participate except to the extent that such participation is required as the result of its being a named party to the suit or action. For any Enforcement Proceedings without its prior written consentRoche Patent Right that Covers a Roche Compound, which may be granted or withheld Roche, in its sole discretion, unless shall decide whether or not to initiate such joinder is required in order to confer jurisdiction suit or action in the jurisdiction Territory. Roche shall have full discretion as to how it wishes to handle such suit and may reach Settlement and retain all damages, settlement fees or other consideration under any terms and conditions it desires. However, if a Settlement could adversely affect C4T by resulting in which a reduction in royalties or milestones payable hereunder or adversely affect a C4T Patent Right or Collaboration Patent Right, then the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings C4T shall be at the exclusive option and expense of B&Nrequired, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any for such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingssettlement.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: License Agreement (C4 Therapeutics, Inc.), License Agreement (C4 Therapeutics, Inc.)
Infringement. 5.111.1 LICENSEE shall notify ARM immediately upon learning of any claim which may be made or threatened that the exercise by LICENSEE of the rights hereby licensed constitutes an infringement of the patent, copyright, maskwork right, or trade secret (together “Rights”) of a third party and will not take any action in relation to such claim which may be prejudicial to the interests of ARM without the written consent of ARM.
11.2 ARM agrees that it will, at its expense, timely defend any suit instituted against LICENSEE and shall indemnify LICENSEE against any award of damages and costs made against LICENSEE in any such suit insofar as the same is based on a claim that the exercise by LICENSEE of its licensed rights under Clause 2.1, infringes any Right of a third party, provided that LICENSEE gives ARM timely notice in writing of the institution of such suit and permits ARM through ARM’s lawyers of choice to defend the same and LICENSEE provides all available information, assistance and authority to so defend. ARM shall have control of the defence of any such suit, including appeals, and of all negotiations for settlement, including the right to effect the settlement or compromise thereof.
11.3 In the event thatthat rights licensed to LICENSEE under Clause 2.1 are, during the Term of this Agreement, BNED learns in any suit for infringement of any infringement Right of a third party, held to constitute an infringement, ARM shall, at its option and expense, procure for LICENSEE the right to continue exercising its rights under Clause 2.1, or, to the extent commercially practicable, replace or threatened infringement modify the ARM Transfer Materials, as appropriate, provided that such replacement or modification of the Licensed MarksARM Transfer Materials maintain compatibility, or dilution so that the exercise by a third party in the U.S. LICENSEE of its rights under Clause 2.1, does not constitute an infringement.
11.4 ARM shall have no liability under this Clause 11 with respect to any suit or claim to the Licensed Marksextent that infringement is due solely to; ARM shall have no liability under this Clause for any infringement arising from;
(i) the combination of the ARM Transfer Materials with other products not supplied by ARM if such infringement arises exclusively from such combination;
(ii) the modification of the ARM Transfer Materials unless the modification was made or approved by ARM if such infringement arises exclusively from modification;
(iii) any manufacturing process applied to the ARM Transfer Materials by LICENSEE or LICENSEE’S agent; or
(iv) compliance by ARM with the LICENSEE requirement specification where such compliance necessarily lead to such infringement.
11.5 LICENSEE agrees that it will, BNED at its expense, timely defend any suit instituted against ARM and shall promptly notify B&N indemnify ARM against any award of damages and costs made against ARM in any such suit insofar as the same is based on a claim that; (i) the combination of the ARM Transfer Materials with other products not supplied by ARM if such infringement arises exclusively from such combination; (ii) the modification of the ARM Transfer Materials unless the modification was made or its authorized representative giving particulars approved by ARM if such infringement arises exclusively from modification; (iii) any manufacturing process applied to the ARM Transfer Materials by LICENSEE; or (iv) compliance by ARM with the LICENSEE requirement specification where such compliance necessarily lead to infringement, infringes any Right of a third party, provided that ARM gives LICENSEE timely notice in writing of the institution of such suit and permits LICENSEE through LICENSEE’s lawyers of choice to defend the same and ARM provides, at ARM’s expense, all available information, assistance and authority to so defend. LICENSEE shall have control of the defence of any such suit, including appeals, and of all negotiations for settlement, including the right to effect the settlement or compromise thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent LICENSEE shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at liable under the expense of BNED, and the Parties shall equally share indemnification provided in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder this Clause 11.5 unless it is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff held in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in suit that the jurisdiction in which infringement has been caused by the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out wilful action of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement ProceedingsLICENSEE.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Technology License Agreement (Magnachip Semiconductor LLC), Technology License Agreement (MagnaChip Semiconductor LTD (United Kingdom))
Infringement. 5.1. In 8.1 LICENSOR and LICENSEE shall promptly give notice to the event that, during the Term of this Agreement, BNED learns other in writing of any infringement or threatened alleged infringement of the Licensed Marks, or dilution Patents and of any other legal action undertaken by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third either party with respect to the Exclusively defense or enforcement of Licensed MarksPatents. The parties shall thereupon confer as to what steps are to be taken to stop or prevent such infringement.
8.2 LICENSEE shall have the first right to defend or enforce Licensed Patents against any infringer at LICENSEE's cost and expense including by bringing any legal action for infringement or defending any counterclaim of invalidity or action of a third party for declaratory judgment of non-infringement, BNED which LICENSEE, in its sole discretion, decides is reasonable and necessary for it to undertake. LICENSEE shall bring or defend or may request settle any such actions solely [+] DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR CONFIDENTIALITY PURPOSES. at its own discretion and expense and through counsel of its selection. LICENSEE will be entitled to retain any settlement or damage award received except as provided for in Article 8.4; provided, however, that B&N bring litigationthe LICENSOR shall be entitled in each instance to participate through counsel of its own selection and its own expense and share in any damage award or settlement as mutually agreed upon in writing by the parties prior to such participation. LICENSEE shall not join LICENSOR as a party-plaintiff in any suit which LICENSEE may institute unless necessary for the maintenance of said suit, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide and then only with the prior knowledge and written consent to the initiation of Enforcement Proceedings by BNED (LICENSOR, which consent shall not be unreasonably withheld. In such event that LICENSOR is an unwilling participant in any suit which LICENSEE may institute, conditioned LICENSOR shall not be chargeable for any costs or delayed if B&N elects not to initiate Enforcement Proceedings)expenses and those costs and expenses shall be borne by LICENSEE. Any such Enforcement Proceedings LICENSOR shall execute all documents necessary for the prosecution of any infringement suit brought by B&N at BNED’s request shall be at the expense of BNEDLICENSEE and provide other such support as LICENSEE may require including having its employees testify when requested and make available relevant records, papers, information, samples, specimens and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear like, all however at the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to travel and the Non-Exclusively Licensed ▇▇▇▇like, B&N of LICENSEE.
8.3 LICENSOR shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N defend or its authorized representatives at B&N’s expense enforce the Licensed Patents against infringement in the event that B&N decides LICENSEE declines to exercise its rights to defend or enforce Licensed Patents under Article 8.2 and shall have sole discretion to file and prosecute, defend or settle such infringement and declaratory judgment action at its own expense through counsel of its own selection and will be entitled to retain any settlement or damage award received; provided, however, that LICENSEE shall be entitled in each instance to participate through counsel of its own selection and at its own expense. LICENSEE shall have no responsibility or financial obligation with respect to any such Enforcement Proceedings should be commencedinfringement action except to provide reasonable assistance to LICENSOR as requested and LICENSOR shall reimburse LICENSEE for LICENSEE's out-of-pocket expenses in connection with any such assistance. LICENSEE shall execute all documents necessary for the prosecution of any infringement suit brought by LICENSOR and provide other such support as LICENSOR may require, including having its employees testify when requested and make available relevant records, papers, information, samples, specimens and the like, all however at the expense, with respect to join or travel and the like, of LICENSOR.
8.4 LICENSOR shall be joined as a party entitled to the percentage of any recovery obtained in any action taken infringement suit brought by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related LICENSEE equal to the bringing amount to which LICENSOR would be entitled under the sublicensee royalty provision of this Agreement had said recovery been paid to LICENSEE as sublicense royalties by the defendant in said infringement suit. LICENSEE may deduct its reasonable direct costs and attorneys' fees paid to third parties incurred in prosecuting such suit, to the extent such costs and fees are not otherwise recovered, prior to calculating the share owing to LICENSOR pursuant to this provision.
8.5 Should LICENSEE commence a suit under the provisions of Paragraphs 8.2 and thereafter elect to abandon the same, it shall give timely notice to LICENSOR, which may, if it so desires, continue prosecution of such Enforcement Proceedingssuit under Article 8.3.
5.4. B&N 8.6 During the period of this Agreement, if LICENSOR's actions under Article 8.3 require a sublicense to an infringer, LICENSEE shall incur no liability grant such a sublicense to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings said infringer in accordance with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason terms and conditions herein and the terms and conditions of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNEDor [+] DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR CONFIDENTIALITY PURPOSES.
Appears in 2 contracts
Sources: Exclusive Patent License Agreement (Biomira CORP), Agreement and Plan of Reorganization (Biomira Inc)
Infringement. 5.16.2.1 In the event that RevitaLid has reason to believe that a third party is infringing upon a Licensed Patent, RevitaLid will promptly notify Licensor in writing of such alleged infringement. In the event thatthat Licensor has reason to believe that a third party is infringing upon a Licensed Patent and that the infringement could have a materially adverse impact on RevitaLid’s use of a Licensed Product (“Adverse Infringement”), during the Term Licensor will promptly notify RevitaLid in writing of this Agreement, BNED learns of any infringement such alleged Adverse Infringement. If a third party alleges or threatened infringement asserts that one or more claims of the Licensed MarksPatent is invalid, this event shall be deemed to be an Adverse Infringement and Licensor will promptly notify RevitaLid in writing of such event.
6.2.2 After receipt of notification from RevitaLid as set forth above or dilution by after Licensor otherwise learns of a potential infringement, Licensor will investigate such third party infringement and will obtain sufficient facts and information concerning the same in sufficient detail to permit a complete infringement determination to be made. If such third party is infringing the U.S. Licensed Patent, Licensor shall have the first right, but not the obligation, at its own expense, to endeavor to ▇▇▇▇▇ such infringement. If such infringement is an Adverse Infringement, Licensor will provide RevitaLid with copies of all correspondence relating to its efforts to ▇▇▇▇▇ such infringement.
6.2.3 In the event that Licensor is unable to terminate such infringement within a reasonable period of time, Licensor shall have the first right, but not the obligation, to commence a patent infringement action against such infringer at its own expense and will retain any recovery from such litigation. In this regard, RevitaLid agrees to cooperate with Licensor to bring any such suit to a successful conclusion. If such infringement is an Adverse Infringement, Licensor will consult with RevitaLid throughout the litigation as to its course of action with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is thereto and will not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license enter into any settlement agreement with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect without first obtaining the consent of RevitaLid to the Exclusively Licensed Markssuch settlement agreement, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects delayed.
6.2.4 In the event that Licensor determines that such third party is infringing a Licensed Patent in an Adverse Infringement, but chooses not to initiate Enforcement Proceedings)commence a patent infringement action against such infringer, RevitaLid shall have the right to bring suit at its own expense to terminate such infringement. Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including Licensor agrees to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined suit as a party plaintiff and to cooperate with RevitaLid, at its own expense, in connection with the conduct of such litigation. RevitaLid shall retain all recovery from such litigation. RevitaLid shall indemnify Licensor against any order for costs that may be made against Licensor in such proceedings unless such costs are assessed based on acts, other than the act of entering into this Agreement, of Licensor or its agents.
6.2.5 RevitaLid shall have the right to be represented in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out Adverse Infringement by counsel of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, selection and BNED shall provide necessary information and assistance to B&N or at its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingsown expense.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: License Agreement (Osmotica Pharmaceuticals PLC), License Agreement (Osmotica Pharmaceuticals LTD)
Infringement. 5.1. In This Section 7.4 is subject to the event that, rights of UBC in Section 11.1(a).
(a) Each Party shall promptly report in writing to the other Party during the Term term of this Agreement, BNED learns Agreement any (i) known infringement or suspected infringement of any infringement or threatened infringement of the Licensed MarksPatents in the Territory, or dilution (ii) unauthorized use or misappropriation of Know-How or Confidential Information by a third party in the U.S. Territory of which it becomes aware, and shall provide the other Party with respect to the Licensed Marksall available evidence supporting said infringement, BNED shall promptly notify B&N suspected infringement or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marksor misappropriation.
5.2. With respect to any infringement or threatened infringement(b) Except as provided in subsection (c) below, or dilution by a third party with respect to ESPERION shall have, upon receiving the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent of INEX, not to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned the right anywhere in the Territory to defend an allegation of invalidity of one or delayed if B&N elects not more Licensed Patents, and to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N an infringement or other appropriate suit against any third party who at BNED’s request shall be at the expense any time has infringed, or is suspected of BNEDinfringing, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines is anticipated to bear the expense, infringe any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including Licensed Patents or of using without proper authorization all or any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control portion of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without Confidential Information and/or Know-How. Provided that it has first granted its prior written consent, which may not to be granted or withheld unreasonably withheld, INEX agrees to co- operate to the extent of executing all necessary documents and to vest in its sole discretionESPERION the right to institute any such suits, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which name of ESPERION or INEX or both, so long as all the Enforcement Proceedings are to be brought, (y) if BNED brings direct or indirect costs and expenses of bringing and conducting any such Enforcement Proceedings litigation or settlement shall be borne by ESPERION and B&N is joined in such event all recoveries shall inure to such Enforcement Proceedings without its consent solely to confer jurisdiction ESPERION. For purposes of this Agreement, if ESPERION requests in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the writing INEX's prior written consent of B&N.
5.3. With respect to any infringement matter, as required hereby, and INEX does not either grant or threatened infringementdeny such consent within ten (10) days of receiving such request from ESPERION, or dilution by a third party with respect INEX shall be deemed to have granted the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control requested consent. In the event of any Enforcement Proceedings relating litigation:
i) Each Party shall keep the other fully informed of the actions and positions taken or proposed to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, Party and BNED is joined actions and positions taken by all other parties to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.litigation;
Appears in 2 contracts
Sources: License Agreement (Esperion Therapeutics Inc/Mi), License Agreement (Esperion Therapeutics Inc/Mi)
Infringement. 5.1. In 9.1 Licensee and Licensor shall promptly inform each other in writing of any alleged infringement of which it shall have notice committed by a third party regarding any patents within the event that, during Patent Rights and shall provide each other with any available evidence of such infringement.
9.2 During the Term term of this Agreement, BNED learns of any infringement or threatened infringement of Licensee shall have the Licensed Marksright, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent but shall not be unreasonably withheldobligated, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N prosecute at BNED’s request shall be at its own expense any infringements of the expense of BNEDPatent Rights and, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing furtherance of such Enforcement Proceedings. In additionright, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED Licensor hereby agrees that Licensee may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined join Licensor as a party plaintiff in any Enforcement Proceedings infringement suit, without expense to Licensor. The total cost of any infringement action commenced or defended solely by Licensee shall be borne by Licensee, and Licensee shall keep any recovery or damages for past infringement derived therefrom.
9.3 If within * * * after having been notified of any alleged infringement, Licensee shall not have obtained from the alleged infringer an agreement to desist and shall not have brought and shall not be prosecuting any infringement actions, or if Licensee shall notify Licensor at any time prior thereto of its prior written consentintention not to bring suit against any alleged infringer, then, and in those events only, Licensor shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Patent Rights, and Licensor may, for such purposes, use the name of Licensee as party plaintiff, and shall pay Licensee's legal fees and expenses related thereto. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of Licensee, which consent shall not unreasonably be withheld. Licensor shall indemnify Licensee against any order for costs that may be granted or withheld made against Licensee in its sole discretionsuch proceedings.
9.4 If Licensee and Licensor agree to institute suit jointly, unless such joinder is required the suit shall be brought in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out both of or related to the bringing of such Enforcement Proceedingstheir names, and all expenses and recoveries (zwhether by judgment, accord, decree or settlement) BNED shall not take any actionbe borne equally. Licensee shall exercise control over such suit, or make any admissions, that may affect the validity including employment of any registration counsel of the Exclusively Licensed Marks, without the prior written consent of B&N.its own selection at its own expense.
5.3. With respect to 9.5 In any infringement or threatened infringementsuit as either party may institute to enforce the Patent Rights pursuant to this Agreement, or dilution by a third the other party with respect to the Non-Exclusively Licensed ▇▇▇▇hereto shall, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option request and expense of B&Nthe party initiating such suit, cooperate in all respects and, to the extent possible, have * * * Confidential Treatment Requested its employees testify when requested and make available relevant records, papers, information, samples, specimens, and all recoveries shall belong exclusively to B&N. BNED shall not and the like.
9.6 Licensee, during the exclusive period of this Agreement, shall have no the sole right in accordance with the terms and conditions of this Agreement to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, sublicense any alleged infringement or dilution of infringer under the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNEDPatent Rights.
Appears in 2 contracts
Sources: License and Development Agreement (Vista Medical Technologies Inc), License and Development Agreement (Vista Medical Technologies Inc)
Infringement. 5.1Novirio shall promptly inform TherapX and ▇▇. In ▇▇▇▇▇▇▇▇ and TherapX and ▇▇. ▇▇▇▇▇▇▇▇ will promptly notify Novirio of any suspected infringement of any Licensed Patents. During the event that, during the Term term of this Agreement, BNED learns of any infringement or threatened TherapX and ▇▇. ▇▇▇▇▇▇▇▇ and Novirio shall have the right to institute an action for infringement of the Licensed Marks, or dilution by a Patents against such third party in accordance with the U.S. following:
(a) If UAB, TherapX and ▇▇. ▇▇▇▇▇▇▇▇ and Novirio, agree to institute suit jointly, the suit shall be brought in all their names and the out-of-pocket costs thereof shall be borne equally. Any recovery or settlement received by TherapX and ▇▇. ▇▇▇▇▇▇▇▇ and/or Novirio for punitive or exemplary damages shall be shared equally, and any other recovery or settlement received, including compensatory damages or damages based on a loss of revenues, shall be paid to Novirio, and Novirio shall pay to TherapX and ▇▇. ▇▇▇▇▇▇▇▇ an amount representing the royalty which would have been paid by Novirio on such amount in accordance with respect the provisions of Article 3 had such amount been accrued by Novirio as Sales. The parties shall agree upon the manner in which they shall exercise control over such action and may, if they so desire, also be represented by separate counsel of their own such action and may, if they so desire, also be represented by separate counsel of their own selection. The fees of which counsel shall be paid by the respective parties so represented;
(b) In the absence of agreement to institute a suit jointly, UAB may, as provided in the Licensed MarksPrimary License, BNED institute suit, and, at its option, name TherapX and ▇▇. ▇▇▇▇▇▇▇▇ as plaintiffs. UAB shall promptly bear the entire cost of such litigation and shall be entitled to retain the entire amount of any recovery or settlement; and
(c) In the absence of agreement to institute a suit jointly and if UAB notify B&N or its authorized representative giving particulars thereofTherapX and ▇▇. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which ▇▇▇▇▇▇▇▇ that it has decided not granted to join in or institute a sub-license with respect suit, as provided in (a) or (b) above, TherapX and ▇▇. ▇▇▇▇▇▇▇▇ may institute suit and, at its option, name the Primary Licensor and/or Novirio as plaintiff. TherapX and ▇▇. ▇▇▇▇▇▇▇▇ shall bear the entire cost of such litigation, including defending any counterclaims brought against UAB or Novirio and paying any judgments rendered against UAB or Novirio, and TherapX and ▇▇. ▇▇▇▇▇▇▇▇ shall be entitled to retain the Exclusively Licensed Marksentire amount of any recovery or settlement.
5.2(d) In the absence of agreement to institute suit jointly and if UAB and TherapX and ▇▇. With respect ▇▇▇▇▇▇▇▇ have decided not to any infringement join in or threatened infringementinstitute a suit, or dilution by a third party with respect to as provided in (a) - (c) above, Novirio may institute suit and at its option name UAB and/or TherapX and ▇▇. ▇▇▇▇▇▇▇▇ as plaintiffs. Novirio shall bear the Exclusively Licensed Marks, BNED may request that B&N bring enter cost of such litigation, opposition, cancellation including defending any considerations brought against UAB or related legal proceedings (collectively, “Enforcement Proceedings”) TherapX and ▇▇. ▇▇▇▇▇▇▇▇ and paying any judgments rendered against UAB or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings)TherapX and ▇▇. Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇▇▇▇▇, B&N and Novirio shall have exclusive control be entitled to retain the entire amount of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain recovery or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingssettlement.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: License Agreement (Idenix Pharmaceuticals Inc), License Agreement (Idenix Pharmaceuticals Inc)
Infringement. 5.19.1 Licensee will notify Licensor in writing of any suspected infringement of the Licensed Patents in the Field of Use, and each Party will inform the other of any evidence of such suspected infringement within a reasonable time of obtaining such evidence.
9.2 Licensee will have the right during the term of this Agreement to institute, prosecute, and settle at its own expense suits for infringement of the Licensed Patents for any infringement occurring within the Field of Use, and if required by law, Licensor will join as party plaintiff in such suit. Licensee shall obtain Licensor’s consent before instituting any such action, such consent not to be unreasonably withheld. For avoidance of doubt, it shall not be unreasonable for Licensor to withhold such consent in the event that the proposed enforcement action would reasonably be anticipated to result in a narrowing of the scope of any of the Licensed Patents or a finding that the asserted claims of a Licensed Patent are invalid. Licensee shall not be permitted to settle any such action in a manner that limits the scope of any Licensed Patent or that admits liability or fault on the part of the Licensor. Licensee will be entitled to retain all damages and any other consideration recovered at successful conclusion of the suit.
9.3 In the event thatLicensee decides not to bring any such suit, Licensee will so notify Licensor and Licensor may bring such suit. Where such suit is brought by Licensor, Licensor will be entitled to retain all damages and any other consideration recovered at successful conclusion of the suit.
9.4 Licensor will have the right in its absolute discretion during the Term of this Agreement, BNED learns of any infringement or threatened Agreement to commence suits for infringement of the Licensed Marks, or dilution by a third party in Patents for any infringement outside the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Field of Use.
9.5 Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use pendency of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement (or threatened infringementother) claim or action by or against Licensee, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall Licensee will have no right to initiate reduce, terminate or suspend (or escrow) payment of any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is amounts required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined paid to such Enforcement Proceedings solely Licensor pursuant to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingsthis Agreement.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Patent License Agreement (908 Devices Inc.), Patent License Agreement (908 Devices Inc.)
Infringement. 5.113.1 Palomar will protect the Palomar Patent Rights from infringement and prosecute infringers when, in its sole judgement, such action may be reasonably necessary, proper and justified.
13.2 If Coherent shall have supplied Palomar with written evidence demonstrating to Palomar's reasonable satisfaction prima facie infringement of a claim of a Palomar Patent Right by a third party, Coherent may by notice request Palomar to take steps to protect such Patent Right. Palomar shall notify Coherent within sixty (60) days of the receipt of such notice whether Palomar intends to prosecute the alleged infringement. If Palomar notifies Coherent that it intends to so prosecute, Palomar shall, within three (3) months of its notice to Coherent either (i) cause infringement to terminate or (ii) initiate legal proceedings against the infringer. In the event thatthat Palomar notifies Coherent that Palomar does not intend to prosecute said infringement, during Coherent may, upon notice to Palomar, initiate legal proceedings against the Term of this Agreementinfringer at Coherent's expense and in Palomar's name if so required by law. No settlement, BNED learns of any infringement consent judgment or threatened infringement other voluntary final disposition of the Licensed Markssuit which invalidates or restricts the claims of such Patent Rights will be entered into without the consent of Palomar, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects and shall not to initiate Enforcement Proceedings)be withheld unless Palomar assumes responsibility for future expenses in litigation. Any such Enforcement Proceedings brought by B&N at BNED’s request Coherent shall indemnify Palomar against any order for payment that may be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined made against Palomar as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings result of any such Enforcement Proceedings that are not at BNED’s requestsettlement, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of judgment or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control other voluntary final disposition of the Enforcement Proceedingssuit entered into without Palomar's consent.
13.3 In the event that one party shall initiate or carry on legal proceedings to enforce any Patent Right against any alleged infringer, including any decision to maintain the other party shall fully cooperate with and supply all assistance reasonably requested by the party initiating or settle carrying on such proceedings. If B&N does not elect The party which institutes any suit to initiate Enforcement Proceedings after receiving BNED’s written request protect or enforce a Patent Right shall have sole control of that suit and shall bear the reasonable expenses (excluding legal fees) incurred by said other party in providing such assistance and cooperation as is requested pursuant to this paragraph. The party initiating or carrying on such legal proceedings shall keep the other party informed of the progress of such proceedings and said other party shall be entitled to counsel in such proceedings but consents at its own expense. Any award paid by third parties as the result of such proceedings (whether by way of settlement or otherwise) shall first be applied to reimbursement of the initiation of Enforcement Proceedings unreimbursed legal fees and expenses incurred by BNEDeither party, including reimbursement to Palomar, and then the remainder shall be divided between the parties as follows:
(i) BNED may initiate If the amount is based on lost profits, Coherent shall receive an amount equal to the damages the court determines Coherent has suffered as a result of the infringement less the amount of any royalties and other payments that would have been due Palomar on sales of products lost by Coherent as a result of the infringement had Coherent made such proceedings, sales; and
(ii) Palomar shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject receive an amount equal to the following: royalties and other payments it would have received if such sales had been made by Coherent, or
13.3.2 As to awards other than those based on lost profits, sixty (x60) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related percent to the bringing of party initiating such Enforcement Proceedings, proceedings and forty (z40) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect percent to the Non-Exclusively Licensed ▇▇▇▇other party, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense provided that in the event that B&N decides that Palomar has paid for further litigation subsequent to Palomar's refusal to agree to a settlement, consent judgement or voluntary final disposition of a suit pursuant to paragraph 13.2, such Enforcement Proceedings should awards shall be commenceddivided equally between the parties.
13.4 For the purposes of the proceedings referred to in this Section 13, including Palomar and Coherent shall permit the use of their names and shall execute such documents and carry out such other acts as may be necessary. The party initiating or carrying on such legal proceedings shall keep the other party informed of the progress of such proceedings and said other party shall be entitled to join or be joined as a party counsel in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are proceedings but at tits own expense, said expenses to be brought. If B&N brings off-set against any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction damages received by the party bringing suit in accordance with the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.foregoing paragraph 13.3
Appears in 2 contracts
Sources: Sales Agency, Development and License Agreement (Palomar Medical Technologies Inc), Sales Agency, Development and License Agreement (Palomar Medical Technologies Inc)
Infringement. 5.1. In (a) Each Party shall promptly report in writing to the event that, other Party during the Term term of this Agreement, BNED learns Agreement any known infringement or suspected infringement of any infringement Patent Rights covering Licensed Compounds or threatened infringement of the Licensed Marks, or dilution Products by a third party of which it becomes aware, and shall provide the other Party with all available evidence supporting said infringement or suspected infringement.
(b) Except as provided in paragraph (d) below, HMR shall have the U.S. right to initiate an infringement or other appropriate suit against any third party who at any time has infringed, or is suspected of infringing, any Patent Rights covering Licensed Compounds or Licensed Products. HMR shall give SCRIPTGEN sufficient advance notice of its intent to file said suit and the reasons therefor, and shall provide SCRIPTGEN with respect an opportunity to make suggestions and comments regarding such suit. HMR shall keep SCRIPTGEN properly informed, and shall from time to time consult with SCRIPTGEN, regarding the status of any such suit.
(c) HMR shall have the sole and exclusive right to select counsel for any suit referred to in paragraph (b) above and shall pay all expenses of the suit, including without limitation attorneys' fees and court costs. Any damages, royalties, settlement fees or other consideration received by HMR or any of its Affiliates shall be divided [***] to HMR [***] to SCRIPTGEN [***]. If necessary, SCRIPTGEN shall join as a party to the Licensed Marks, BNED suit but shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated be under no obligation to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect participate except to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by extent that such participation is required as the result of being a third named party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings suit. SCRIPTGEN shall offer reasonable assistance to HMR in connection therewith at no charge to HMR except for reimbursement of reasonable out-of-pocket expenses (collectively, “Enforcement Proceedings”not including salaries of SCRIPTGEN personnel) or provide incurred in rendering such assistance. SCRIPTGEN shall have the right to participate and be represented in any such suit by its own counsel at its own expense. HMR shall not settle any such suit involving rights of SCRIPTGEN without obtaining the prior written consent to the initiation of Enforcement Proceedings by BNED (SCRIPTGEN, which consent shall not be unreasonably withheld, conditioned or delayed if B&N .
(d) In the event that HMR elects not to initiate Enforcement Proceedings). Any an infringement or other appropriate suit pursuant to paragraph (b) above, HMR shall promptly advise SCRIPTGEN of its intent not to initiate such Enforcement Proceedings brought by B&N at BNED’s request suit, and SCRIPTGEN shall be have the right, at the expense of BNEDSCRIPTGEN, of initiating an infringement or other appropriate suit against any third party who at any time has infringed, or is suspected of infringing, any Patent Rights covering Licensed Compounds or Licensed Products. In exercising its rights pursuant to this paragraph (d), SCRIPTGEN shall have the sole and exclusive right to select counsel and shall pay all expenses of the suit, including without limitation, attorneys' fees and court costs, and the Parties shall equally share in the recovery of damages be entitled to receive and retain any damages, royalties, settlement fees or compensation resulting from such Enforcement Proceedingsother consideration. If B&N initiates Enforcement Proceedings and BNED declines to bear the expensenecessary, any resulting damages or compensation HMR shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if to the suit but shall be under no obligation to participate except to the extent that such joinder participation is required in order to confer jurisdiction in as a result of being a named party of the jurisdiction in which the Enforcement Proceedings are to be broughtsuit. If B&N brings any such Enforcement Proceedings that are not at BNED’s At SCRIPTGEN's request, and BNED does HMR shall offer reasonable assistance to SCRIPTGEN at no charge to SCRIPTGEN except for reimbursement of reasonable out-of-pocket expenses (not consent including salaries of HMR personnel) incurred in rendering such assistance. HMR shall have the right to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction be represented in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution suit by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or counsel at its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingsown expense.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Collaboration and License Agreement (Scriptgen Pharmaceuticals Inc), Collaboration and License Agreement (Scriptgen Pharmaceuticals Inc)
Infringement. 5.1. In 15.1 TEMIC warrants to SMI that TEMIC owns the event thatknow-how, during the Term of this Agreementcopyrights, BNED learns of any infringement or threatened infringement of the Licensed Marks, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNEDmask work rights, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong other intellectual rights solely to B&N. In enable TEMIC to produce the wafers or parts for SMI lawfully. SMI hereby indemnifies and holds TEMIC and its directors, officers, employees and agents harmless from any such Enforcement Proceedingsclaim, BNED shall nevertheless provide necessary information suit or other liability (including reasonable attorneys, fees and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses ) arising out of or related resulting from a material breach of the foregoing warranty.
15.2 SMI warrants to TEMIC that SMI owns, or otherwise has the right to use on behalf of TEMIC all applicable intellectual property rights to the bringing of such Enforcement Proceedingsmanufacturing processes not otherwise licensed to SMI by TEMIC which will be used by TEMIC to produce the wafers or parts. In additionSMI hereby indemnifies and holds TEMIC and its directors, if B&N elects to bring Enforcement Proceedingsofficers, whether at BNED’s request employees and agents harmless from any claim, suit or otherwiseother liability (including reasonable attorneys, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (ifees and costs) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to resulting from a material breach of the bringing foregoing warranty.
15.3 In the event of the institution of any suit or claim against an indemnified party alleging that TEMIC manufacture of the wafers or parts violates any circuit design patent or mask work, manufacturing process patent, or other circuit design or manufacturing process proprietary right of a third party recognised under the laws of the United States of America (hereinafter "Third Party Rights"), or shall become the subject of any claim for violation of Third Party Rights, the indemnified party shall promptly notify the indemnifying party of such Enforcement Proceedingssuit or claim and provide reasonable details thereof. Failure to give such notice, if it materially impairs the ability of the indemnifying party to defend against such suit or claim, shall terminate any duty of indemnification under this Section.
15.4 The indemnifying party shall have sole control of any action or settlement negotiations relating to any such suit or claim, and (z) BNED the indemnified party shall render all cooperation reasonably requested by the indemnifying party in defense of such suit or claim, provided that the indemnified party may retain its own counsel at its own expense. The indemnified party shall not take settle or attempt to settle any action, such suit or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, claim without the prior express written consent of B&N.the indemnifying party.
5.315.5 In addition to its duty of indemnification hereunder, the indemnifying party may, at its sole discretion and expense:
(a) alter or change the circuit design or manufacturing process, as may be the case, so as to make said design or process non-infringing of any third Party Right; or
(b) obtain permission from the affected thirty party to use the Third Party right, it being the intention of both parties to continue the performance of this Agreement if commercially reasonable to do so. With respect If neither of these methods is appropriate to eliminate the infringement of the Third Party Right, the indemnifying party at its sole discretion may terminate this Agreement or withdraw the infringing products without any infringement additional obligation or threatened infringement, or dilution by a third party with respect liability to the Non-Exclusively Licensed ▇▇▇▇indemnified party, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bringfor lost opportunity or profits or otherwise, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined due to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingstermination.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Foundry Agreement (Stanford Microdevices Inc), Foundry Agreement (Stanford Microdevices Inc)
Infringement. 5.1. In (a) Each Party shall promptly notify in writing the event that, other Party during the Term term of this Agreement, BNED learns Agreement of any: (1) known infringement or suspected infringement of any infringement of the Patent Rights; or threatened infringement (2) unauthorized use or misappropriation of the Licensed Marks, or dilution Technology by a third party in of which it becomes aware, and shall provide the U.S. other Party with respect to the Licensed Marksall available evidence supporting said infringement, BNED shall promptly notify B&N suspected infringement or its authorized representative giving particulars thereofunauthorized use or misappropriation. Notwithstanding Within ninety (90) days after InnoZen becomes, or is made aware of any of the foregoing, BNED is InnoZen shall decide whether or not obligated to monitor initiate an infringement or police unauthorized use other appropriate action and shall notify SMI of its decision in writing. The failure of InnoZen to inform SMI of InnoZen’s decision within such ninety (90) day period shall be deemed a decision not to initiate an infringement or other appropriate action. Notwithstanding anything else herein to the contrary, InnoZen agrees to and does hereby commit to defend, indemnify and hold SMI harmless against and from any third party actions claiming or challenging SMI’s right to Manufacture Products for the Field to the extent that such claim alleges that the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution Technology infringes intellectual property rights owned by a third party.
(b) In the event that InnoZen notifies SMI of its intent to initiate an infringement or other appropriate action within the ninety (90) day period provided in Section 6.2(a), provided such infringement is continuing, InnoZen shall initiate such an infringement or other appropriate action within thirty (30) days of the end of such 90-day period. InnoZen shall be entitled to join SMI as a party with respect to such suit, but SMI shall be under no obligation to participate except to the Exclusively extent that such participation is required as the result of being a named party to the suit or being involved in the commercialization of any Patent Rights and/or Licensed MarksTechnology at issue. If SMI chooses to participate, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide SMI shall have the right to be represented by its own counsel at its own expense. InnoZen shall not settle any such suit involving rights of SMI nor make an admission of liability on behalf of SMI without obtaining the prior written consent to the initiation of Enforcement Proceedings by BNED (SMI, which consent shall not be unreasonably withheld. In the event InnoZen initiates proceedings pursuant to this Section 6.2(b), conditioned InnoZen shall be entitled to 100% of any and all amounts recovered in such suit, whether through judgment, settlement or delayed if B&N elects otherwise, including without limitation, any punitive damages that may be awarded, up to the amount of InnoZen’s costs of suit, and InnoZen and SMI shall each be entitled to 50% of all amounts recovered in such suit, whether through judgment, settlement or otherwise, including without limitation, any punitive damages that may be awarded, in excess of InnoZen’s costs of suit.
(c) In the event that InnoZen decides not to initiate, or is deemed to have not decided to initiate Enforcement Proceedingsan infringement or other appropriate action within the 90-day period provided in Section 6.2(a). Any , or does not initiate such Enforcement Proceedings brought by B&N an infringement or other appropriate action within 30 days of such 90-day period as provided in Section 6.2(b), SMI shall have the right, at BNED’s request its expense, to initiate an infringement or other appropriate action, and shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including entitled to join or be joined InnoZen as a party if to such joinder suit, but InnoZen shall be under no obligation to participate except to the extent that such participation is required in order as a result of its being a named party to confer jurisdiction the suit or being the owner of any Patent Rights and/or Licensed Technology at issue. Notwithstanding the foregoing, in the jurisdiction event that InnoZen is engaged at the end of said 90-day period in negotiations for the settlement of the said patent infringement which has been the Enforcement Proceedings are subject of notice from SMI to InnoZen and has advised SMI in writing of such negotiations, then the above mentioned right and option of SMI to bring suit shall be exercised only with the written consent of InnoZen which will not be unreasonably withheld. If InnoZen chooses to participate in any suit initiated by SMI, InnoZen shall have the right to be brought. If B&N brings represented in any such Enforcement Proceedings that are suit by its own counsel at its own expense. SMI shall not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense suit involving rights of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings InnoZen nor make an admission of liability on behalf of InnoZen without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without obtaining the prior written consent of B&N.
5.3InnoZen, which consent shall not be unreasonably withheld. With respect In the event SMI initiates proceedings pursuant to this Section 6.2(c), SMI shall be entitled to 100% of any infringement and all amounts recovered in such suit, whether through judgment, settlement or threatened infringementotherwise, or dilution by a third party with respect including without limitation, any punitive damages that may be awarded, up to the Non-Exclusively Licensed ▇▇▇▇amount of SMI’s costs of suit, B&N and InnoZen and SMI shall have exclusive control each be entitled to 50% of all amounts recovered in such suit, whether through judgment, settlement or otherwise, including without limitation, any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bringpunitive damages that may be awarded, maintain or settle any such Enforcement Proceedings in excess of SMI’s costs of suit.
(d) Nothing herein contained shall be at construed to require either party to expend money in litigation or in the exclusive option enforcing of Patent Rights and/or Licensed Technology rights unless it so elects and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party proceeds with litigation in the name of the other party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction cause in which such other party is not voluntarily a party, as evidenced by written notice, such party shall and agrees to hold the Enforcement Proceedings are to be brought. If B&N brings other party harmless from any such Enforcement Proceedingsall liabilities arising thereunder, including, but not limited to, attorney’s fees, court costs, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses damages arising out of or related to counterclaims, cross-claims and the bringing of such Enforcement Proceedingslike.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Manufacturing License Agreement (Healthsport, Inc.), Manufacturing License Agreement (Healthsport, Inc.)
Infringement. 5.1. In the event that, during the Term of this Agreement, BNED learns If either Party becomes aware of any activity that such Party believes represents an infringement or threatened by a Third Party, anywhere in the world, of any Licensed Patents, the Party obtaining such knowledge shall promptly advise the other in writing of all relevant facts and circumstances pertaining to the potential infringement. Altairnano and ALSHER shall thereafter consult and cooperate fully to determine a course of action, including but not limited to, the commencement of legal action to terminate any infringement of the Licensed MarksPatents.
3.6.1 In the ALSHER TiO2 Pigment Field, ALSHER shall have the first right, but not the obligation, to institute and control an action, in its name and at its sole expense, against such Third Party for infringement of any Licensed Patents, and Altairnano shall cooperate with ALSHER in such action at the expense of ALSHER. If ALSHER finds it necessary or dilution desirable to join Altairnano as a party to such action, Altairnano will execute all papers and perform any other acts as may be reasonably required by ALSHER, at the expense of ALSHER. ALSHER shall have the right to control, with such cooperation by Altairnano as is reasonably required by ALSHER at ALSHER’S expense, any claim by a third party in Third Party asserting invalidity of any Licensed Patents. If ALSHER elects not to institute and control such action against a Third Party for infringement of any of the U.S. with respect Licensed Patents, Altairnano shall have the right, but not the obligation, to institute and control such action at its own expense. Neither Party shall incur any liability to the other Party as a consequence of such litigation or any unfavorable decision resulting therefrom, including any decision holding any of the Licensed MarksPatents invalid or unenforceable.
3.6.2 Outside of the ALSHER TiO2 Pigment Field, BNED Altairnano shall promptly notify B&N have the first right, but not the obligation, to institute and control an action, in its name and at its sole expense, against such Third Party for infringement of any Licensed Patents, and ALSHER shall cooperate with Altairnano in such action at the expense of Altairnano. If Altairnano finds it necessary or desirable to join ALSHER as a party to such action, ALSHER will execute all papers and perform any other acts as may be reasonably required by Altairnano, at the expense of Altairnano. Altairnano shall have the right to control, with such cooperation by ALSHER as is reasonably required by Altairnano at Altairnano's expense, any claim by a Third Party asserting invalidity of any Licensed Patents. If Altairnano elects not to institute and control such action against a Third Party for infringement of any of the Licensed Patents, ALSHER shall have the right, but not the obligation, to institute and control such action at its authorized representative giving particulars thereofown expense. Neither Party shall incur any liability to the other Party as a consequence of such litigation or any unfavorable decision resulting therefrom, including any decision holding any of the Licensed Patents invalid or unenforceable.
3.6.3 The Party initiating and controlling a litigation action against a Third Party infringer under Section 3.6.1 or 3.6.2 shall (a) control all aspects of such action, including the right to enter into any settlement, consent judgment or other voluntary final disposition respecting such action; provided that no settlement shall be entered into by such Party without the written consent of the other Party if such settlement would materially detrimentally affect the other Party’s interests hereunder, (b) bear all costs and attorneys’ fees respecting such action, and (c) be entitled to all litigation or settlement recoveries received (including without limitation all amounts received under any applicable license or sublicense agreement(s) entered into between the Third Party and the Party initiating and controlling such action).
3.6.4 Notwithstanding the foregoing, BNED is not obligated Altairnano and ALSHER may agree to monitor institute an infringement action against a Third Party jointly, in which case the suit shall be brought in both of their names, the reasonable and documented out-of-pocket costs thereof shall be borne equally (50% each) by the Parties and any recovery or police unauthorized use of settlement shall be allocated first to reimburse the Licensed Marks by third parties Parties for their out-of-pocket costs and the remainder shall be shared fifty percent (50%) to which it has not granted a sub-license with respect Altairnano and fifty percent (50%) to the Exclusively Licensed Marks.
5.2ALSHER. With respect Altairnano and ALSHER shall work together to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring manage such joint litigation, oppositionwith Altairnano having the primary responsibility for controlling such suit. ALSHER may, cancellation or related legal proceedings (collectivelyif it so desires, “Enforcement Proceedings”) or provide prior written consent to the initiation also be represented by separate counsel of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNEDits own selection, and the Parties shall equally share in the recovery of damages or compensation resulting from fees for such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings counsel shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution paid by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement ProceedingsALSHER.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: License Agreement (Altair Nanotechnologies Inc), License Agreement (Altair Nanotechnologies Inc)
Infringement. 5.1. In the event that, during the Term of this Agreement, BNED learns (a) Licensee shall notify Licensor promptly after Licensee becomes aware of any infringement infringements, imitations or threatened infringement of the Licensed Marks, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks Trademarks by third parties others. Licensor reserves the right but shall not have the obligation, to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringementprosecute, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related and conduct all legal proceedings (collectivelyand litigations involving the Trademarks and to take any action or institute any proceedings that it may deem proper or necessary for the protection of the Trademarks. If Licensor elects to do so, “Enforcement Proceedings”) it shall offer Licensee the opportunity to participate therein, and in the event of such participation, the parties shall share all costs and recoveries one-half for Licensor, one-half for Licensee or provide prior written consent in such other proportion as may be agreed by the parties at the commencement of each action or proceeding. If Licensor elects not to exercise such right, Licensee may take any such action or conduct any such proceeding in Licensor’s name, if necessary, at its own expense, and shall be entitled to all of the initiation recovery, except that Licensor shall have the right to approve any non-monetary elements of Enforcement Proceedings by BNED (any settlement that materially adversely affects the validity or use of the Trademarks, which consent approval shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In additioneither event, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N the parties will cooperate fully with each other. Licensee shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity notify Licensor promptly of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement adverse pending or threatened infringement, or dilution by a third party litigation with respect to the Non-Exclusively Licensed ▇▇▇▇Trademarks, B&N shall have exclusive control and of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks use by third parties, nor by reason of which it becomes aware which would or might be adverse to the rights of Licensor or Licensee.
(b) Licensee shall, at the direction of Licensor, promptly discontinue its use of any settlement of the Trademarks alleged to which B&N may agreeinfringe rights of others, provided that prior to requesting any such settlement does not require a payment discontinuance of money by BNEDthe Trademarks, Licensor will provide Licensee with written documentation containing details of any alleged infringement and cooperate with Licensee to develop non-infringing uses.
Appears in 2 contracts
Sources: Master Agreement (Westwood One Inc /De/), Trademark License Agreement (Westwood One Inc /De/)
Infringement. 5.1(a) Licensee shall promptly notify Licensor of any suspected infringement(s) of the Licensed Property and shall inform Licensor of any evidence of such infringement(s).
(b) Licensor shall have the sole first right but not the obligation, under its own control and at its own expense, to undertake Enforcement Efforts. Any and all damages, profits, and other monetary awards resulting from such Enforcement Efforts shall be the sole property of Licensor. If required by law, Licensee shall permit any Enforcement Efforts under this Section to be brought in its name, including being joined as a party-plaintiff, provided that Licensor shall both hold harmless Licensee from and indemnify Licensee against, and shall pay any and all costs, expenses, and liabilities that Licensee incurs in connection with such Enforcement Efforts. In the event that, during the Term of this Agreement, BNED learns of any infringement or threatened infringement of the Licensed Marks, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N Licensor elects not to initiate pursue an Enforcement Proceedings). Any Effort and Licensee desires to undertake such Enforcement Proceedings brought Efforts itself, the Parties will discuss options in good faith and determine whether Licensee will take such Enforcement Effort on its own, at its own expense. In any Enforcement Efforts undertaken by B&N at BNED’s request Licensee, Licensee shall be at the expense of BNEDobtain prior written approval from Licensor as to counsel, general litigation strategy, and any settlement or other voluntary disposition of the Parties Enforcement Efforts and provided further that Licensee shall equally share both hold harmless Licensor from and indemnify Licensor against, and shall pay any and all costs, expenses, and liabilities that Licensor incurs in connection with such Enforcement Efforts. In the recovery of damages or compensation event that Licensee does undertake Enforcement Efforts on its own, any and all damages, profits, and other monetary awards resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings Efforts shall be at the exclusive option and expense sole property of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement ProceedingsLicensee.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: License Agreement (SciPlay Corp), License Agreement (SciPlay Corp)
Infringement. 5.19.1 Each Party agrees to provide prompt written notice to the other Party of any alleged infringement of the Patent Rights by a third party, and of any available evidence thereof, of which it becomes aware.
9.2 During the Term of this Agreement, Licensee, to the extent permitted by law, shall have the right, but shall not be obligated, to prosecute at its own expense all infringements of the Patent Rights and, in furtherance of such right, Northwestern hereby agrees that Licensee may include Northwestern as a party plaintiff in such suit, without expense to Northwestern, provided, however, that such right to bring such infringement action shall remain in effect only for so long as the license granted herein remains exclusive. Prior to commencing any such action, Licensee shall consult with Northwestern and shall consider the view of Northwestern regarding the advisability of the proposed action and its effect on the public interest. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the prior written consent of Northwestern, which shall not be unreasonably withheld. If it is determined that Licensee does not have the right to prosecute an infringement of the Patent Rights, and Licensee notifies Northwestern of its desire to have such infringement action pursued, Northwestern agrees to prosecute such infringement of the Patent Rights on Licensee’s behalf and at Licensee’s sole expense, and Northwestern shall consult with Licensee on any such infringement action. Licensee shall indemnify Northwestern against any order for costs that may be made against Northwestern in any such proceedings. Any recovery resulting from an action brought by Licensee shall be distributed as follows: (a) each Party shall be reimbursed for any expenses it incurred in the action; (b) as to ordinary damages for past infringement, Licensee shall receive an amount equal to either (i) its lost profits, (ii) a reasonable royalty on the infringing sales, or (iii) whatever alternative measure of such damages the court shall have applied, and such amount shall be treated as Net Sales for the purpose of calculating running royalties under Section 5.3(b).
9.3 If [***] after having become aware of any alleged infringement Licensee has been unsuccessful in persuading the alleged infringer to desist and either has not brought or is not diligently prosecuting an infringement action, or if Licensee shall notify Northwestern at any time of its intention not to bring suit against any alleged infringer, then Northwestern shall have the right, at its sole discretion, to prosecute such infringement of the Patent Rights under its sole control and at its sole expense. In the event thatNorthwestern elects to prosecute an infringement of any Patent Rights as set forth in this Section 9.3, then (a) Northwestern shall keep any recovery or damages for past infringement derived therefrom, and (b) Licensee shall not offer to sublicense the infringed Patent Rights to the alleged infringer without Northwestern’s written consent.
9.4 In the event that a declaratory judgment action alleging invalidity, unenforceability, or noninfringement of any of the Patent Rights shall be brought against Northwestern or Licensee, Northwestern, at its option, shall have the right, within [***] after it receives notice of the commencement of such action, to intervene and take over the sole defense of the action (but only to the extent of the Patent Rights) at its own expense. If Northwestern does not exercise this right, Licensee may take over the sole defense of the action at Licensee’s sole expense. No settlement, consent judgment or other voluntary final disposition of the action may be entered into without the prior written consent of Northwestern, which shall not be unreasonably withheld.
9.5 In any infringement suit that either Party may institute to enforce the Patent Rights pursuant to this Agreement and in any declaratory judgment action that one Party is defending, the other Party hereto shall, at the request and expense of the Party initiating or defending such suit, cooperate in all reasonable respects (including joining as a party if required by law) and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like.
9.6 For so long as the license granted herein remains exclusive during the Term of this Agreement, BNED learns of Licensee shall have the sole right to sublicense any infringement or threatened infringement of the Licensed Marks, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized alleged infringer for future use of the Licensed Marks by third parties Patent Rights in accordance with the terms and conditions of this Agreement relating to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to sublicenses, provided, however, as set forth in Section 9.3 above for any alleged infringer against whom Northwestern is pursuing an infringement or threatened infringementaction, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent Licensee shall not be unreasonably withheld, conditioned or delayed if B&N elects not offer to initiate Enforcement Proceedings)sublicense the infringed Patent Rights to such alleged infringer without Northwestern’s written consent. Any upfront fees as part of such Enforcement Proceedings brought by B&N at BNED’s request a sublicense shall be at the expense of BNED, shared equally between Licensee and the Parties shall equally share Northwestern (such upfront payments will not also be subject to payments to Northwestern under Section 5.4 in the recovery of damages or compensation addition to this equal sharing); other revenues to Licensee resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings sublicense shall be at the exclusive option treated pursuant to Sections 5.3 and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings5.4.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: License Agreement (Oncorus, Inc.), License Agreement (Oncorus, Inc.)
Infringement. 5.1. In (a) Mayne Pharma shall have the event that, during the Term of this Agreement, BNED learns of first right to enforce any patent within PATENT RIGHTS against any infringement or threatened alleged infringement of the Licensed Marks, or dilution by a third party thereof within LICENSED FIELD in the U.S. TERRITORY. Subject to Paragraph 4.5A, *** will pay all reasonable costs and expenses (including reasonable attorney fees for litigation and opinion) incurred by *** in connection with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereofsuch enforcement (Enforcement Costs). Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license Before Mayne Pharma commences an action with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringementof such patents, or dilution by a third party with respect HPPI acknowledges and agrees that Mayne Pharma shall give careful consideration to the Exclusively Licensed Marksviews of JHU and to potential effects on the public interest in making its decision whether or not to ▇▇▇. HPPI acknowledges and agrees that no settlement, BNED consent judgment or other voluntary final disposition of the suit may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide be entered into without the prior written consent to the initiation of Enforcement Proceedings by BNED (JHU, which consent shall not be unreasonably withheld. This right to ▇▇▇ for infringement shall not be used in an arbitrary or capricious manner. HPPI shall reasonably cooperate in any such litigation at *** expense, conditioned including in accordance with Paragraph 4.6. Should HPPI seek the first right to enforce any patent within PATENT RIGHTS against any infringement or delayed if B&N alleged infringement thereof within LICENSED FIELD in the TERRITORY, then it shall notify Mayne Pharma who will seek the consent of JHU (which consent HPPI acknowledges may be withheld or granted subject to conditions by JHU acting in its discretion).
(b) If HPPI elects not to initiate pay Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request Costs in respect of a particular infringement in the TERRITORY, then it shall be at the expense so notify Mayne Pharma in writing within *** of BNEDreceiving notice that an infringement exists, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expenseMayne Pharma may, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretionjudgment and at its own expense, unless such joinder is required in order take steps to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be broughtenforce any patent and control, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingssettle, and (z) BNED shall not take defend such suit in a manner consistent with the terms and provisions hereof, and recover, for its own account, any actiondamages, awards or settlements resulting therefrom, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect allow JHU to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingsdo so.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Sublicense Agreement (HedgePath Pharmaceuticals, Inc.), Sublicense Agreement (HedgePath Pharmaceuticals, Inc.)
Infringement. 5.112.1 Each party will promptly inform the other in writing of any alleged infringement of the Patent Rights by a third party, or the assertion of a declaratory judgment action alleging invalidity or noninfringement, and provide such other party with any available information about the infringement or declaratory action, as the case might be. In Following such notice, KCI may place [***] first accruing to Wake Forest following the event thatexpiration of a thirty day period after such notice into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any claim or action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, during which consent will not be unreasonably withheld.
12.2.1 During the Term term of this Agreement, BNED learns of KCI will prosecute [***] any infringement or threatened infringement infringements of the Licensed MarksPatent Rights, or dilution by a third party and, in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing furtherance of such Enforcement Proceedings. In additionright, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED KCM may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined Wake Forest as a party in any such suit, [***] to Wake Forest. As between wake Forest and KCI, KCI will be liable for [***] in such action taken and KCI will be responsible, except as provided in Section 12.2.3, for the [***] in such an action.
12.2.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, KCI will immediately pay all escrowed litigation royalties to Wake Forest.
12.2.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.2.4 If, within 6 months after having been notified of any alleged infringement of the Patent Rights, KCI will have been unsuccessful in persuading the alleged infringer to desist and will not have brought and will not be diligently prosecuting an infringement action, or if KCI notifies Wake Forest at any time prior thereto of its intention not to bring suit against any such alleged infringer, then (a) [***] and, (b) [***]. No settlement, consent judgment, or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.3.1 In the event that a Declaratory Judgment Action alleging invalidity or non-infringement of any of the Patent Rights will be brought against KCI or Wake Forest, [***].
12.3.2 As a first option for KCI, [***]. Upon settlement or final termination of such action, provided such action does not result in a final non-appealable or non-appealed decision that the subject patent(s) are invalid or unenforceable, [***]. If the subject patents are found to be invalid or unenforceable in a final non-appealable or non-appealed decision, [***] if valid patents covering such products or processes still remain within the Patent Rights.
12.3.3 As an alternative option, [***]. All remaining escrowed litigation royalties will be immediately returned to Wake Forest. Wake Forest will not, under any circumstances, be liable for any amounts in excess of the escrowed litigation royalties.
12.3.5 If KCI is not diligently prosecuting or defending any Declaratory Judgment Action, then (a) [***] and (b) [***]. No settlement, consent judgment or other voluntary fiscal disposition of the suit may be entered into without the consent of KCI, which consent will not unreasonably be withheld.
12.4.1 KCI will have a duty to defend any suit or counterclaim brought against Wake Forest or KCI for alleged infringement of any patent of any third party, to the extent such suit is based upon a claim that the infringement arises from the manufacture, use or sale by B&N KCI of products and/or processes within the Patent Rights pursuant to enforce its this Agreement. As between Wake Forest and KCI, [***].
12.4.2 Each party will promptly inform the other in writing of the commencement of any such infringement action by a third party. Following such notice, KCI may place up to a maximum of [***] into an escrow account as escrowed litigation royalties. KCI will not settle or compromise any such action in a manner that imposes any restrictions or obligations on Wake Forest without Wake Forest's written consent, which consent will not be unreasonably withheld.
12.4.3 [***] any such infringement action by any third party [***]. All remaining escrowed litigation royalties will be promptly returned to Wake Forest. [***].
12.4.4 Any recovery of damages by KCI in any such infringement action by any third party in which escrowed litigation royalties of Wake Forest were used by KCI [***].
12.4.5 If the exercise of the rights granted KCI herein infringe the rights of a third party, Wake Forest may elect to pursue a license from such third party that would permit KCI to exercise the rights granted herein without limitation or interruption and without payments by KCI, or Wake Forest may authorize KCI to pursue such a license. In the event Wake Forest authorizes KCI to secure such a license, and the terms of such a license provide for royalties or other payments by KCI to such third party, then the parties will negotiate in good faith, a royalty reduction in the Non-Exclusively Licensed ▇▇▇▇ against earned royalty rate set forth in Section 4.2 and the minimum royalty, but not the floor royalty, set forth in Section 4.3 such that the total royalties payable are commercially reasonable.
12.4.6 If the exercise of the rights granted KCI herein are found to infringe the rights of a third party if such joinder in a decision that is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedingsfinal and non-appealable or non-appealed, and BNED is joined neither Wake Forest nor KCI are able to secure a license from such Enforcement Proceedings solely third party, all remaining escrowed litigation royalties will be given to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agreeKCI, provided such settlement does not require a payment that KCI provides written notice to Wake Forest of money by BNEDKCI's election to terminate the License under this Agreement.
Appears in 2 contracts
Sources: License Agreement (Kinetic Concepts Inc /Tx/), License Agreement (Kinetic Concepts Inc /Tx/)
Infringement. 5.1. In 7.1 Licensee or Licensor shall promptly inform the event that, during the Term of this Agreement, BNED learns other in writing of any patent infringement or threatened infringement of the Licensed Marks, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use and provide available evidence of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marksinfringement.
5.2. With respect to any infringement or threatened infringement7.2 During the Agreement Term, or dilution by a third party with respect to Licensor shall have the Exclusively Licensed Marksright, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent but shall not be unreasonably withheldobligated, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N prosecute at BNED’s request shall be at its own expense all infringements of the expense of BNEDPatent Rights and, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing furtherance of such Enforcement Proceedings. In additionright, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED Licensee hereby agrees that Licensor may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined include Licensee as a party plaintiff in any Enforcement Proceedings such suit, without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order expense to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings Licensee. The total cost of any such Enforcement Proceedings infringement action commenced or defended solely by Licensor shall be borne by Licensor and B&N is joined Licensor shall keep any recovery or damages for past infringement derived therefrom.
7.3 If within six (6) months after having been notified of any alleged infringement, Licensor shall have been unsuccessful in persuading the alleged infringer to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify desist and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any have brought an infringement action, or make if Licensor shall notify Licensee at any admissionstime prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, Licensee shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Patent Rights, and Licensee may.. for such purposes, use the name of Licensor as party plaintiff; provided 'however, that such right to bring such an infringement action shall remain in effect only for so long as the license granted herein remains exclusive. No settlement, consent judgment or other voluntary final disposition of the suit may affect be entered into without the validity consent of Licensor, which consent shall not unreasonably be withheld. Licensee shall indemnify Licensor against any order for costs that may be made against Licensor in such proceedings.
7.4 Any recovery of damages from any suit shall be retained by the party who funded and prosecuted at its expense the infringement of the Patent Rights pursuant to 7.2 or 7.3 herein.
7.5 In the event that a declaratory judgment action alleging invalidity or non-infringement of any registration of the Exclusively Licensed MarksPatent Rights shall be brought against Licensee, without Licensor, at its option, shall have the prior written consent right, within thirty (30) days after commencement of B&N.such action, to intervene and take over the sole defense of the action at its own expense.
5.3. With respect to 7.6 In any infringement or threatened infringementsuit as either party may institute to enforce the Patent Rights pursuant to this Agreement, or dilution by a third the other party with respect to the Non-Exclusively Licensed ▇▇▇▇hereto shall, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option request and expense of B&Nthe party initiating such suit, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and all recoveries shall belong exclusively to B&N. BNED shall not and the like.
7.7 Licensee, during the period of this Agreement, shall have no the sole right in accordance with the terms and conditions herein to initiate sublicense any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in alleged infringer for future use of the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined Patent Rights. Any up-front fees as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing part of such Enforcement Proceedingsa sublicense shall be shared equally between Licensee and Licensor; other royalties shall be treated per Section 3.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Exclusive License Agreement (DCH Technology Inc), Exclusive License Agreement (DCH Technology Inc)
Infringement. 5.1. A. In the event that, during that Licensee shall learn of the Term infringement of any patent or right licensed under this Agreement, BNED learns Licensee shall call CMCC's attention thereto in writing. Both parties to this Agreement agree to consult the other prior to notifying an infringing party, in a jurisdiction where Licensee then has exclusive rights under this Agreement, of the infringement of any infringement of CMCC Patent Rights or threatened infringement such other intellectual property rights and shall not notify such infringing party without first obtaining consent of the Licensed Marksother party, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably reasonably withheld. Both parties shall use their best efforts in cooperation with each other to terminate such infringement without litigation. CMCC shall have the first option to undertake the enforcement of the CMCC Patent Rights, conditioned or delayed provided, however, that Licensee may join with CMCC and its counsel in prosecuting such legal action, provided, however, that if B&N elects not to initiate Enforcement Proceedings)the use of counsel chosen by CMCC would present such counsel with a conflict of interest that would disqualify such counsel from joint representation, then Licensee may obtain counsel of its choice at its sole expense.
B. Licensee may request that CMCC take legal action against the infringement of the Patent Rights licensed under this Agreement. Any such Enforcement Proceedings brought by B&N at BNED’s Such a request shall be at made in writing and shall include reasonable evidence of such infringement and damages to Licensee. If CMCC does not commence a diligent legal challenge within sixty (60) business days after such request (or immediately in the expense of BNEDevent Licensee requests that CMCC seek provisional relief and reasonably demonstrates that such relief is required), and the Parties shall equally share infringing activity has not been abated within such time, or if at any time thereafter CMCC does not persist in such diligent legal challenge until the infringement has been abated, Licensee may, if the infringement occurred in a jurisdiction where Licensee had exclusive rights under this Agreement, may commence or assume control, as the case may be, over the prosecution of legal actions relating thereto. However, in the recovery event Licensee elects to bring suit in accordance with this paragraph B, CMCC may thereafter join with Licensee and its counsel in prosecuting such legal action, provided, however that if the use of damages counsel chosen by CMCC would present such counsel with a conflict of interest that would disqualify such counsel from joint representation, then CMCC may obtain counsel of its choice at its sole expense.
C. Recoveries or compensation resulting reimbursements from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N litigation or its authorized representatives at B&N’s expense, including to join or be joined as settlement within the scope of paragraph B in a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which Licensee had exclusive rights under this Agreement at the Enforcement Proceedings are time of the infringement shall be first applied to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s requestreimburse Licensee and/ or CMCC for out-of-pocket litigation costs (with respect to Licensee, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing extent not theretofore credited against royalties in accordance with paragraph E) and then to CMCC for any royalties past due or withheld pursuant to paragraph E. Any remaining recoveries or reimbursements shall be divided between Licensee and CMCC at a rate of 20% to CMCC and 80% to Licensee.
D. In the event that a claim or suit is asserted or brought against Licensee alleging that the manufacture or sale of any Licensed Product by Licensee or its sublicensees, or the use of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control Licensed Product by any customer of any of the Enforcement Proceedingsforegoing, including any decision infringes proprietary rights of a third party, Licensee shall give written notice thereof to maintain or settle such proceedingsCMCC. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNEDLicensee may, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless modify such joinder is required Licensed Product to avoid such infringement and/or may settle on terms that it deems advisable in order its sole discretion, subject to confer jurisdiction paragraph F. Otherwise, Licensee shall have the right, but not the obligation, to defend any such claim or suit. In the event Licensee elects not to defend such suit, CMCC shall have the right, but not the obligation to do so at its own sole expense.
E. Licensee may credit up to fifty (50) percent of any litigation costs incurred by Licensee in any country pursuant to paragraph C or D and up to 50% of all amounts paid in judgment or settlement of litigation within the scope of paragraph D against royalties thereafter payable to CMCC hereunder for such country and apply the same toward one-half of its actual, reasonable out-of- pocket litigation costs. If one-half of such litigation costs in such country exceed 50 % of royalties payable to CMCC in any year in which such costs are incurred than the amount of such costs, expenses and amounts paid in judgment or settlement, in excess of such 50% of the royalties payable shall be carried over and credited against royalty payments in future years for such country (subject to the same annual limits). The credit relating to paragraph D shall apply only to the extent that litigation costs are incurred in defense or settlement of a claim that the practice of the Patent Rights involved in the jurisdiction manufacture, use or sale of Licensed Products infringes the patent rights of a third party.
F. Licensee shall not settle or compromise any suit in a manner that imposes any obligations or restrictions on CMCC or grants any rights to the CMCC Patent Rights without CMCC's written permission, which the Enforcement Proceedings are to permission shall not be brought, (y) if BNED brings unreasonably withheld. CMCC shall not settle or compromise any such Enforcement Proceedings suit in a manner that imposes any obligations or restrictions on Licensee without Licensee's written permission, which permission shall not be reasonably withheld.
G. In any action to enforce any of the CMCC Patent Rights, either party, at the request and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in expense of the jurisdiction in which the Enforcement Proceedings are to be broughtother party, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related shall cooperate to the bringing of such Enforcement Proceedings, and (z) BNED fullest extent reasonably possible. This provision shall not take be construed to require either party to undertake any actionactivities, or make any admissionsincluding legal discovery, that may affect at the validity request of any registration third party except as may be required by lawful process of a court of competent jurisdiction.
H. Notwithstanding the Exclusively Licensed Marksforegoing, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by if a third party with respect commences a legal action in any country in which Licensee has exclusive rights under this Agreement alleging that the practice of the Patent Rights infringes a third- party's patent rights, Licensee may withhold, pending final resolution of the litigation, 50% of the royalties thereafter payable to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇CMCC from sales made in that country. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in In the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings Licensee recovers damages from any such Enforcement Proceedingslitigation, and BNED is joined it shall pay to such Enforcement Proceedings solely to confer jurisdiction in CMCC the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out 50% previously withheld together with interest at an annual rate of or related to the bringing of such Enforcement Proceedings10%.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Exclusive License Agreement (Keryx Biophamaeuticals Inc), Exclusive License Agreement (Keryx Biophamaeuticals Inc)
Infringement. 5.1. In Each Party shall give prompt written notice to the event that, during the Term of this Agreement, BNED learns other of any infringement suspected or threatened infringement of the Licensed Marks, or dilution actual Infringement by a third party in of all or any portion of the U.S. Ipsen Licensed Technology, Licensee Technology, Joint Inventions or Joint Patent Rights that comes to the attention of that Party during the Royalty Term with respect to any and all countries in the Licensed Marks, BNED Territory. Licensee shall promptly notify B&N have the first right but not the obligation to initiate and pursue proceedings against such third party in connection with any such suspected or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor actual Infringement of all or police unauthorized use any portion of the Ipsen Licensed Marks by Technology, Joint Inventions or Joint Patent Rights, and Licensee shall have the sole right but not the obligation to initiate and pursue proceedings against such third parties to which it has not granted a sub-license party in connection with respect any such suspected or actual Infringement of all or any portion of Licensee Technology. The commencement, strategies, termination, and settlement of any action or proceedings relating to the Exclusively validity or suspected or actual Infringement of the Ipsen Licensed Marks.
5.2. With respect to any infringement Technology, Joint Inventions or threatened infringementJoint Patent Rights, or dilution any portion thereof, shall be decided by a third party Licensee in consultation with respect Ipsen. The commencement, strategies, termination, and settlement of any action or proceedings relating to the Exclusively validity or suspected or actual Infringement of Licensee Technology, or any portion thereof, shall be decided solely by Licensee without any requirement that Licensee consult with Ipsen. Any proceedings initiated and pursued by Licensee pursuant to this Section 10.6 shall be at the expense of Licensee. Nothing in this Agreement, however, shall be deemed to require Licensee to enforce all or any portion of the Ipsen Licensed MarksTechnology, BNED Joint Inventions, Joint Patent Rights or Licensee Technology against others; provided, however, that if Licensee does not enforce all or any portion of the Ipsen Licensed Technology, Joint Inventions or Joint Patent Rights, Ipsen may request do so at its expense and, if necessary under the relevant law of the concerned jurisdiction, in the name of Licensee as a plaintiff, unless Licensee reasonably believes that B&N bring litigationpursuit by Ipsen of any such enforcement action jeopardizes all or any portion of the Ipsen Licensed Technology, oppositionJoint Inventions or Joint Patent Rights, cancellation including the validity thereof, and sends written notice to Ipsen stating that Ipsen should not pursue any such enforcement action for this reason, in which case Ipsen shall not pursue any such enforcement action. Ipsen may not settle any proceedings or related legal proceedings (collectively, “Enforcement Proceedings”) or provide other enforcement action without the prior written consent to the initiation of Enforcement Proceedings by BNED (Licensee, which consent shall not be unreasonably withheldwithheld or delayed. At the request of the Party bringing such enforcement action or proceeding under this Section 10.6, conditioned the other Party shall cooperate reasonably with such Party, including without limitation by having such other Party agree to be named as a party if necessary to such enforcement action or delayed if B&N elects not to initiate Enforcement Proceedings). Any proceeding, and any such Enforcement Proceedings brought reasonable cooperation by B&N at BNED’s request such other Party shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option sole cost and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall such Party that requested such cooperation. The Party not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted bringing an enforcement action or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party proceeding under this Section 10.6 with respect to the Non-Exclusively validity or suspected or actual Infringement of Ipsen Licensed ▇▇▇▇Technology, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain Joint Inventions or settle any such Enforcement Proceedings Joint Patent Rights shall be entitled to separate representation in such matter by counsel of its own choice and at its own expense. Any damages, costs or other amounts recovered in connection with any action or proceeding initiated and pursued by Licensee or Ipsen pursuant to this Section 10.6, including, without limitation, any settlement thereof, in connection with the exclusive option and expense validity or suspected or actual Infringement of B&NIpsen Licensed Technology, Joint Inventions or Joint Patent Rights, shall be allocated * CONFIDENTIAL TREATMENT REQUESTED. OMITTED PORTIONS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. first to [ ]*, and all recoveries any remaining amounts shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined allocated as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingsfollows: [ ]*.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: License Agreement (Rhythm Holding Company, LLC), License Agreement (Rhythm Holding Company, LLC)
Infringement. 5.1. In A. Licensee and CMCC shall each inform the event that, during other promptly in writing of any alleged infringement by a third party of the Term Patent Rights in the Field of Use and of any available evidence thereof.
B. During the term of this Agreement, BNED learns of CMCC shall have the right, but shall not be obligated, to prosecute at its own expense any infringement or threatened infringement of the Licensed MarksPatent Rights and, in furtherance of such right, Licensee hereby agrees that CMCC may include Licensee as a party plaintiff in any such suit, without expense to Licensee and shall keep Licensee informed as to the status of such suit. The total cost of any such infringement action commenced or defended solely by CMCC shall be borne by CMCC. CMCC shall keep any recovery or damages for past infringement derived therefrom except that CMCC shall pay Licensee the equivalent amount as if royalties were calculated on Net Sales by Licensee. CMCC shall indemnify Licensee against any order for costs that may be made against Licensee in such proceedings.
C. If within six (6) months after having been notified of any alleged infringement, CMCC shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or dilution by a third party if CMCC shall notify Licensee at any time prior thereto of its intention not to bring suit against any alleged infringer then, and in those events only, Licensee shall have the U.S. with respect right, but shall not be obligated, to the Licensed Marks, BNED shall promptly notify B&N or prosecute at its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use own expense any infringement of the Licensed Marks by third parties Patent Rights, and Licensee may, for such purposes, use the name of CMCC as party plaintiff; provided, however, that such right to which it has not bring such an infringement action shall remain in effect only for so long as the license granted a sub-license with respect to hereunder remains exclusive. No settlement, consent judgment or other voluntary final disposition of the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringementsuit may be entered into without the consent of CMCC, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld. Licensee shall indemnify CMCC against any order for costs that may be made against CMCC in such proceedings.
D. In the event Licensee shall undertake the enforcement and/or defense of the Patent Rights by litigation, conditioned or delayed if B&N elects not Licensee may withhold up to initiate Enforcement Proceedings)fifty percent (50%) of the payments otherwise thereafter due to CMCC under Article IV above and apply the same toward reimbursement of up to fifty percent (50%) of Licensee's expenses, including reasonable attorney's fees, in connection therewith. Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from by Licensee for each such Enforcement Proceedings. If B&N initiates Enforcement Proceedings suit shall be applied first in satisfaction of any unreimbursed expenses and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined legal fees of Licensee relating to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify suit and hold harmless BNED next toward reimbursement of CMCC for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted payments under Article IV past due or withheld in its sole discretion, unless such joinder is required in order and applied pursuant to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3this Article VII. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.Licensee shall
Appears in 2 contracts
Sources: Exclusive License Agreement (GMP Companies Inc), Exclusive License Agreement (GMP Companies Inc)
Infringement. 5.1. In 7.1 LICENSEE shall inform UFRFI promptly in writing of any alleged infringement of the event that, during Patent Rights by a third party and of any available evidence thereof.
7.2 During the Term term of this Agreement, BNED learns UFRFI shall have the right, but shall not be obligated, to prosecute at its own expense any such infringements of Patent Rights. If UFRFI prosecutes any such infringement, LICENSEE agrees that UFRFI may include LICENSEE as a co-plaintiff in any such suit, without expense to LICENSEE. The total cost of any such infringement action commenced or defended solely by UFRFI shall be borne by UFRFI and UFRFI shall keep any recovery or damages for past infringement derived therefrom.
7.3 If within three (3) months after having been notified of any alleged infringement or threatened such shorter time proscribed by law, UFRFI shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if UFRFI shall notify LICENSEE at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, LICENSEE shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Licensed MarksPatent Rights, and LICENSEE may, for such purposes, use the name of UFRFI as party plaintiff; provided, however, that such right to bring an infringement action shall remain in effect only for so long as the license granted herein remains exclusive. No settlement, consent judgment or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use other voluntary final disposition of the Licensed Marks by third parties to which it has not granted a sub-license with respect to suit may be entered into without the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringementconsent of UFRFI, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not unreasonably be unreasonably withheld; provided, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request however, that LICENSEE shall indemnify UFRFI against any order for costs that may be at the expense of BNED, and the Parties shall equally share made against UFRFI in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.accordance with this Paragraph.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in 7.4 In the event that B&N decides that such Enforcement Proceedings should be commencedLICENSEE shall undertake the enforcement and/or defense of the Patent Rights by litigation, LICENSEE may withhold up to fifty percent (50%) of the royalties otherwise thereafter due UFRFI hereunder and apply the same toward reimbursement of its expenses, including to join or be joined as reasonable attorneys' fees, in connection therewith. Said withholding of royalties shall begin no earlier than the date LICENSEE first receives a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in for professional services or expenses associated with the jurisdiction in which enforcement and/or defense of the Enforcement Proceedings are to be broughtPatent Rights. If B&N brings Any recovery of damages by LICENSEE for any such Enforcement Proceedingssuit shall be applied first in satisfaction of any unreimbursed expenses and legal fees of LICENSEE relating to the suit, and BNED is joined next toward reimbursement of UFRFI for any royalties past due or withheld with interest and applied pursuant to this Article VII.
7.5 In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the Patent Rights shall be brought against LICENSEE, UFRFI, at its option, shall have the right, within thirty (30) days after commencement of such Enforcement Proceedings solely action, to confer jurisdiction intervene and take over the sole defense of the action at its own expense.
7.6 In any infringement suit as either party may institute to enforce the Patent Rights pursuant to this Agreement, the other party hereto shall, at the request and expense of the party initiating such suit, cooperate in the jurisdiction in which the Enforcement Proceedings are to be broughtall respects and, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingsextent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Patent License Agreement (Apollo Biopharmaceutics Inc), Patent License Agreement (Apollo Biopharmaceutics Inc)
Infringement. 5.1. In 14.1 Subject to Article 13.3 hereof, NTI and ▇▇▇▇ shall render to CMCC all reasonable assistance as may be required to preserve the event that, during the Term of this Agreement, BNED learns of any infringement or threatened infringement validity and enforceability of the Licensed Marks, or dilution by a third party CMCC Patents in the U.S. with respect to the Licensed Marks, BNED Territory. NTI and ▇▇▇▇ shall promptly notify B&N CMCC in writing (i) of any and all infringements, imitations, illegal use, misuse, or its authorized representative giving particulars thereof. Notwithstanding misappropriation, by any third party of the foregoingCMCC Patents which come to their attention, BNED is not obligated to monitor and (ii) of any claims or police unauthorized objections that ▇▇▇▇ and/or NTI’s use of the Licensed Marks by CMCC Patents hereunder may or will infringe the copyrights, patents, designs, trademarks or other proprietary rights of any other third parties to which it has not granted a sub-license with respect to party. CMCC as the Exclusively Licensed Marks.
5.2. With respect to any infringement owner or threatened infringementauthorized licensee of the CMCC Patents, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNEDresponsible for taking any action or initiating any proceedings which CMCC, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are determines to be broughtnecessary or appropriate to prevent any infringement of the CMCC Patents, (y) if BNED brings and NTI and ▇▇▇▇ shall provide CMCC with such assistance as may be reasonably requested in connection with any such Enforcement Proceedings action or proceeding.
14.2 If CMCC fails to or decides not to take any action or to initiate proceedings necessary to prevent the infringement of the CMCC Patents within sixty (60) days after written notice of such infringement, ▇▇▇▇ shall have the right to take such action or to initiate such proceedings to enforce and/or defend the CMCC Patents. In the event that ▇▇▇▇ undertakes the enforcement and/or the defense of the CMCC Patents by litigation, ▇▇▇▇ may withhold the one-half of the payments otherwise due to CMCC under Article 8 hereof and B&N is joined apply the same toward reimbursement of ▇▇▇▇’ expenses, including reasonable attorney’s fees, in connection therewith. Subject to such Enforcement Proceedings without its consent solely these set-off rights of ▇▇▇▇ to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities recover costs and expenses arising out of or related the infringement litigation, any damages recovered by ▇▇▇▇ in such litigation will be allocated among the parties in accordance with the percentage share of the Royalty Income as set forth in Exhibit C hereto.
14.3 NTI and CMCC shall render to ▇▇▇▇ all reasonable assistance as may be required to preserve the validity and enforceability of ▇▇▇▇’ rights, title and interests in and to the bringing ▇▇▇▇ Patents or other Intellectual Property Rights in its Products. NTI and CMCC agree that they shall promptly notify ▇▇▇▇ in writing (i) of such Enforcement Proceedingsany and all infringements, imitations, illegal use, misuse, or misappropriation, by any third party of the ▇▇▇▇ Patents or other Intellectual Property Rights which come to its attention, and (zii) BNED shall not take any action, or make any admissions, that may affect the validity of any registration claims or objections that any use of the Exclusively Licensed Marks▇▇▇▇ Patents or other Intellectual Property Rights, without if any, may or will infringe the prior written consent copyrights, patents, designs, trademarks or other proprietary rights of B&N.
5.3any other third party. With respect to ▇▇▇▇ as the owner or authorized licensee of the ▇▇▇▇ Patents or other Intellectual Property Rights, shall be responsible for taking any infringement action or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed initiating any proceedings which ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own namesole discretion, and BNED shall provide determines to be necessary information and assistance or appropriate to B&N or its authorized representatives at B&N’s expense in prevent any infringement the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if Patents and/or other Intellectual Property Rights, and NTI and CMCC shall provide ▇▇▇▇ with such joinder is required assistance as may be reasonably requested by ▇▇▇▇ in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings connection with any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of action or related to the bringing of such Enforcement Proceedingsproceeding.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: License and Cooperation Agreement, License and Cooperation Agreement (Neurobiological Technologies Inc /Ca/)
Infringement. 5.1. In 7.1 LICENSEE shall inform UTC promptly in writing of any alleged infringement of the event that, during Intellectual Property Rights by a third party and of any available evidence thereof.
7.2 During the Term term of this Agreement, BNED learns of any infringement or threatened infringement of UTC shall have the Licensed Marksright, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent but shall not be unreasonably withheldobligated, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any prosecute at its own expense any such Enforcement Proceedings brought by B&N at BNED’s request shall be at infringements of the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement ProceedingsIntellectual Property Rights. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In UTC prosecutes any such Enforcement Proceedingsinfringement, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to UTC agrees that LICENSEE may join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined UTC as a party plaintiff in any Enforcement Proceedings such suit, without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order expense to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings UTC. The total cost of any such Enforcement Proceedings infringement action commenced or defended solely by UTC shall be borne by UTC and B&N is joined UTC shall keep any recovery or damages for past infringement derived therefrom. Once an IND has been filed and/or sales commence, Geron shall have the right, but not the obligation, to control litigation and recover costs and damages, though royalties will be paid to UTC on lost sales due to such Enforcement Proceedings without its consent solely to confer jurisdiction in infringements after first recovering the jurisdiction in which necessary and reasonable expenses associated with the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of litigation. If LICENSEE prosecutes any such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event LICENSEE agrees that B&N decides that such Enforcement Proceedings should be commenced, including to UTC may join or be joined LICENSEE as a party plaintiff in any action taken by B&N such suit, without expense to enforce its rights in LICENSEE.
7.3 If UTC has the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order right to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedingsassume litigation responsibility, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out within six (6) months after having been notified of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution such shorter time prescribed by law, if UTC shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if UTC shall notify LICENSEE at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, LICENSEE shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Licensed Marks Intellectual Property Rights, and LICENSEE may, for such purposes, use the name of UTC as party plaintiff; provided, however, that such right to bring an infringement action shall remain in effect only for so long as the license granted herein remains exclusive. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of UTC, which consent shall not unreasonably be withheld. LICENSEE shall indemnify UTC against any expenses, including attorney's fees, incurred by third partiesUTC in such proceedings commenced by LICENSEE. * Certain portions of this Exhibit have been omitted for which confidential treatment has been requested and filed separately with the Securities and Exchange Commission.
7.4 In the event that LICENSEE and UTC jointly shall undertake the enforcement and/or defense of the Intellectual Property Rights by litigation, nor by reason then all costs and judgments shall be shared in a formula to be developed through mutual consent.
7.5 In the event that a declaratory judgment action alleging invalidity or noninfringement of any settlement of the Intellectual Property Rights shall be brought against LICENSEE, UTC has the opportunity, with LICENSEE consent, within thirty (30) days after commencement of such action, to which B&N intervene and take over the sole defense of the action at its own expense.
7.6 In any infringement suit as either party may agreeinstitute to enforce the Intellectual Property Rights pursuant to this Agreement, provided the other party hereto shall, at the request and expense of the party initiating such settlement does not require a payment of money by BNEDsuit, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like.
Appears in 2 contracts
Sources: Intellectual Property License Agreement (Geron Corporation), Intellectual Property License Agreement (Geron Corporation)
Infringement. 5.1. In the event that, during the Term of this Agreement, BNED that either party learns of any infringement or threatened infringement of the Licensed MarksMarks or the Licensed Copyright, or any unfair competition, passing-off or dilution by a third party in the U.S. with respect to the Licensed MarksMarks or the Licensed Copyright (each such event, BNED an "Infringement"), such party shall promptly notify B&N the other party or its authorized representative giving particulars thereof, and Licensee shall provide necessary information and reasonable assistance, at Licensor's expense, to Licensor or its authorized representatives in the event that Licensor decides that proceedings should be commenced. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use Licensor shall have exclusive control of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related other legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇an alleged Infringement. The decision whether to bring, maintain or settle any such Enforcement Proceedings proceedings shall be at the exclusive option and expense of B&NLicensor, and all recoveries shall belong exclusively to B&N. BNED Licensor. Licensee shall not and shall have no right take any action to enforce, protect or defend the Licensed Marks or the Licensed Copyright without the prior written consent of Licensor's General Counsel. Licensee will not initiate any such Enforcement Proceedings litigation, opposition, cancellation or related legal proceedings in its own namename but, and BNED shall provide necessary information and assistance at Licensor's request, agrees to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N Licensor to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in Marks or the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED Licensed Copyright; provided that Licensor shall reimburse Licensee for all losses, costs, liabilities reasonable out-of-pocket costs and expenses arising out of incurred by Licensee, its Affiliates and authorized representatives (and their respective directors, officers, stockholder, employees and agents) in connection with their participation in such action. Nothing in this Agreement shall require, or related be deemed to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability require Licensor to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of enforce the Licensed Marks by third parties, nor by reason or the Licensed Copyright against others. Licensor shall keep all monies derived from litigation or legal proceeding or from settlement of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNEDInfringement.
Appears in 2 contracts
Sources: Brand License Agreement (Aol Time Warner Inc), Brand License Agreement (Aol Time Warner Inc)
Infringement. 5.17.1 LICENSEE shall inform M.I.T. promptly in writing of any alleged infringement of the INTELLECTUAL PROPERTY RIGHTS by a third party of which it becomes aware and of any available evidence thereof. In M.I.T. shall inform LICENSEE promptly in writing of any alleged infringement of the event that, during INTELLECTUAL PROPERTY RIGHTS by a third party of which it becomes aware and of any available evidence thereof. Within ten (10) business days of such notice the Term parties shall confer to determine how best to proceed.
7.2 During the term of this Agreement, BNED learns of any infringement or threatened infringement of M.I.T. shall have the Licensed Marksright, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent but shall not be unreasonably withheldobligated, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N prosecute at BNED’s request shall be at its own expense all infringements of the expense of BNEDINTELLECTUAL PROPERTY RIGHTS and, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing furtherance of such Enforcement Proceedings. In additionright, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED LICENSEE hereby agrees that M.I.T. may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined include LICENSEE as a party plaintiff in any Enforcement Proceedings such suit, without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order expense to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings LICENSEE. The total cost of any such Enforcement Proceedings infringement action commenced or defended solely by M.I.T. shall be borne by M.I.T. and B&N is joined M.I.T. shall keep any recovery or damages for past infringement derived therefrom.
7.3 If within six (6) months after having been notified of any alleged infringement, M.I.T. shall have been unsuccessful in persuading the alleged infringer to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify desist and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any have brought and shall not be diligently prosecuting an infringement action, or make if M.I.T. shall notify LICENSEE at any admissionstime prior thereto of its intention not to bring suit against any alleged infringer for the EXCLUSIVE FIELDS OF USE, then, and in those events only, LICENSEE shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the INTELLECTUAL PROPERTY RIGHTS for the EXCLUSIVE FIELDS OF USE, and LICENSEE may, for such purposes, use the name of M.I.T. as party plaintiff; provided, however, that such right to bring such an infringement action shall remain in effect only for so long as the license granted herein remains exclusive. No settlement, consent judgment or other voluntary final disposition of the suit may affect be entered into without the validity consent of M.I.T., which consent shall not unreasonably be withheld. LICENSEE shall indemnify M.I.T. against any order for costs that may be made against M.I.T. in such proceedings.
7.4 In the event that LICENSEE shall undertake the enforcement and/or defense of the INTELLECTUAL PROPERTY RIGHTS by litigation, LICENSEE may withhold up to fifty percent (50%) of the payments otherwise thereafter due M.I.T. under Article 4 hereunder and apply the same toward reimbursement of up to half of LICENSEE’s expenses, including reasonable attorneys’ fees, in connection therewith. Any recovery of damages by LICENSEE for each such suit shall be applied first in satisfaction of any registration unreimbursed expenses and legal fees of LICENSEE relating to such suit, and next toward reimbursement of M.I.T. for any payments under Article 4 past due or withheld and applied pursuant to this Article 7. The balance remaining from any such recovery shall be divided so that the percentage of the Exclusively Licensed Marksrecovery due M.I.T. is calculated by creating a fraction, without the prior written consent numerator of B&N.which is the amount of royalties withheld, and denominator of which is the cost of litigation paid by LICENSEE, but in no event shall such sum be less than Ten Percent (10%) of the net recovery.
5.3. With respect 7.5 In the event that a declaratory judgment action alleging invalidity or non-infringement of any of the INTELLECTUAL PROPERTY RIGHTS shall be brought against LICENSEE, M.I.T., at its option, shall have the right, within thirty (30) days after commencement of such action, to intervene and take over the sole defense of the action at its own expense.
7.6 In any infringement or threatened infringementsuit as either party may institute to enforce the PATENT RIGHTS pursuant to this Agreement, or dilution by a third the other party with respect to the Non-Exclusively Licensed ▇▇▇▇hereto shall, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option request and expense of B&Nthe party initiating such suit, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and all recoveries shall belong exclusively to B&N. BNED shall not and the like.
7.7 LICENSEE, during the exclusive period of this Agreement, shall have no the sole right in accordance with the terms and conditions herein to initiate sublicense any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in alleged infringer for the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined EXCLUSIVE FIELDS OF USE for future use of the INTELLECTUAL PROPERTY RIGHTS. Any upfront fees as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing part of such Enforcement Proceedingsa sublicense shall be shared equally between LICENSEE and M.I.T.; other royalties shall be treated per Article 4.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Patent License Agreement (Medifocus Inc.), Patent License Agreement (Medifocus Inc.)
Infringement. 5.1. In the event that, during the Term of this Agreement, BNED learns 8.1 LICENSEE shall inform LICENSOR promptly in writing of any infringement or threatened alleged infringement of the Licensed Marks, or dilution LICENSED TECHNOLOGY by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars and of any available evidence thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement8.2 LICENSOR shall have the right, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent but shall not be unreasonably withheldobligated, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N prosecute at BNED’s request shall be at its own expense all infringements of the expense of BNEDLICENSED TECHNOLOGY and, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing furtherance of such Enforcement Proceedings. In additionright, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED LICENSEE hereby agrees that LICENSOR may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined include LICENSEE as a party plaintiff in any Enforcement Proceedings such suit, without its prior written consentexpense to LICENSEE. The total cost of any such infringement action commenced or defended solely by LICENSOR shall be borne by LICENSOR. Any recovery of damages by LICENSOR for such suit shall be applied first in satisfaction of any unreimbursed expenses and legal fees of LICENSOR relating to such suit, which may be granted and next toward reimbursement of LICENSOR for any payments under Article 4 past due or withheld in its sole discretion, unless such joinder is required in order and applied pursuant to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings this Article 8. The balance remaining from any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to recovery shall be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related divided with Seventy-Five Percent (75%) going to the bringing LICENSOR and Twenty-Five Percent (25%) going to LICENSEE.
8.3 If within six (6) months after having been notified of such Enforcement Proceedingsan alleged infringement, LICENSOR shall have been unsuccessful in persuading the alleged infringer to desist and (z) BNED shall not take any have brought and shall not be diligently prosecuting an infringement action, or make if LICENSOR shall notify LICENSEE at any admissionstime prior thereto of its intention not to bring suit against any alleged infringer in the TERRITORY for the FIELD OF USE, then, and in those events only, LICENSEE shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the LICENSED TECHNOLOGY in the TERRITORY for the FIELD OF USE, and LICENSEE may, for such purposes, use the name of LICENSOR as party plaintiff; provided, however, that such right to bring such an infringement action shall remain in effect only during the EXCLUSIVE PERIOD. No settlement, consent judgment or other voluntary final disposition of the suit may affect be entered into without the validity consent of LICENSOR, which consent shall not unreasonably be withheld. LICENSEE shall indemnify LICENSOR against any order for costs that may be made against LICENSOR in such proceedings.
8.4 In the event that LICENSEE shall undertake litigation for the enforcement of the LICENSED TECHNOLOGY, or the defense of the LICENSED TECHNOLOGY under Paragraph 8.5, LICENSEE may withhold up to Fifty Percent (50%) of the Running Royalty payments otherwise thereafter due LICENSOR under Article 4 hereunder and apply the same toward reimbursement of up to half of LICENSEE’S expenses, including reasonable attorneys’ fees, in connection therewith. Any recovery of damages by LICENSEE for each such suit shall be applied first in satisfaction of any registration unreimbursed expenses and legal fees of LICENSEE relating to such suit, and next toward reimbursement of LICENSOR for any payments under Article 4 past due or withheld and applied pursuant to this Article 8. The balance remaining from any such recovery shall be divided with Twenty-five percent (25%) going to LICENSOR and Seventy-five percent (75%) going to LICENSEE.
8.5 In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the Exclusively Licensed MarksLICENSED TECHNOLOGY shall be brought against LICENSOR or LICENSEE, without LICENSOR, at its option, shall have the prior written consent right, within thirty (30) days after commencement of B&N.such action, to take over the sole defense of the action at its own expense. If LICENSOR shall not exercise this right, LICENSEE may take over the sole defense at LICENSEE’S sole expense, subject to Paragraph 8.4.
5.3. With respect to 8.6 In any infringement or threatened infringementsuit as either party may institute to enforce the LICENSED TECHNOLOGY pursuant to this Agreement, or dilution by a third the other party with respect to the Non-Exclusively Licensed ▇▇▇▇hereto shall, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option request and expense of B&Nthe party initiating such suit, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and all recoveries shall belong exclusively to B&N. BNED shall not and the like.
8.7 LICENSEE, during the EXCLUSIVE PERIOD, shall have no the sole right in accordance with the terms and conditions herein to initiate sublicense any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense alleged infringer in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined TERRITORY for the FIELD OF USE for future use of the LICENSED TECHNOLOGY. Any upfront fees as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing part of such Enforcement Proceedingsa sublicense shall be shared equally between LICENSEE and LICENSOR; other revenues shall be treated per Article 4.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Patent License Agreement, Patent License Agreement (Nu Skin Enterprises Inc)
Infringement. 5.15.4.1 If a Party believes that an infringement by a Third Party with respect to any Institutions’ Patent Right is occurring or may potentially occur, the knowledgeable Party will provide the other Party or Parties, as applicable, with (a) written notice of such infringement or potential infringement and (b) evidence of such infringement or potential infringement (the “Infringement Notice”). In During the event thatperiod in which, during and in the Term of jurisdiction where, Licensee has exclusive rights under this Agreement, BNED learns no Party will notify such a Third Party (including the infringer) of infringement or put such Third Party on notice of the existence of Institutions’ Patent Rights without first obtaining the written consent of the other Party or Parties, as applicable. If Licensee puts such infringer on notice of the existence of any infringement or threatened infringement of the Licensed Marks, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, Institutions’ Patent Rights without the prior written consent of B&N.
5.3. With respect to any infringement Penn or threatened infringementInstitutions, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇as applicable, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no then Licensee’s right to initiate any a suit under Section 5.4.2 below will terminate immediately without the obligation of Institutions to provide notice to Licensee. Penn and Licensee or Institutions and Licensee, as applicable, will use their diligent efforts to cooperate with each other to terminate such Enforcement Proceedings infringement without litigation.
5.4.2 During the period in its own namewhich, and BNED in the jurisdiction where, Licensee has exclusive rights under this Agreement, Licensee may institute suit for patent infringement against the infringer after providing Penn, or Institutions, as applicable, (a) a written estimate of the expenses that would be reasonably incurred in connection with such action, including an estimate from an outside law firm regarding the legal costs associated with such suit and (b) financial records reasonably sufficient to reasonably demonstrate that Licensee has the financial wherewithal to pay such expenses as they fall due through the conclusion of such suit by means of judgment or other final non-appealable decision. Institutions may voluntarily join such suit at Licensee’s reasonable expense (provided that, for clarity, CHOP may only voluntarily join suits relating to Joint Patent Rights), but may not thereafter commence suit against the infringer for the acts of infringement that are the subject of Licensee’s suit or any judgment rendered in such suit. Licensee may not join Institutions in a suit initiated by Licensee without Institutions’ prior written consent, such consent not to be unreasonably withheld. If in a suit initiated by Licensee, either Institution is involuntarily joined, then Licensee will pay any documented costs incurred by such Institution arising out of such suit, including any legal fees of counsel that such Institution selects and retains to represent it in the suit. Licensee shall be free to enter into a settlement, consent judgment or other voluntary disposition, provided that any settlement, consent judgment or other voluntary disposition that (i) limits the scope, validity or enforcement of Institutions’ Patent Rights or (ii) admits fault or wrongdoing on the part of Licensee or an Institution must be approved in advance by such applicable Institution in writing (such approval not to be unreasonably withheld). Licensee’s request for such approval shall include complete copies of final settlement documents, a detailed summary of such settlement, and any other information material to such settlement. Such applicable Institution shall provide necessary information Licensee notice of its approval or denial within [****] of any request for such approval by Licensee, provided that (x) in the event such applicable Institution wishes to deny such approval, such notice shall include a detailed written description of such applicable Institution’s reasonable objections to the proposed settlement, consent judgment, or other voluntary disposition and assistance (y) such applicable Institution shall be deemed to B&N have approved of such proposed settlement, consent judgment, or its authorized representatives other voluntary disposition in the event it fails to provide such notice within such [****] period in accordance herewith.
5.4.3 If and only if, within [****] following the date the Infringement Notice was provided, infringing activity of potential commercial significance has not been abated and if Licensee has not brought suit against the infringer, then Penn or the Institutions, as applicable, may institute suit for patent infringement against the infringer at B&NPenn’s expense or Institutions’ expense. If Penn or the Institutions institutes such suit, then Licensee may not join such suit without the prior written consent of Penn or the Institutions, as applicable and may not thereafter commence suit against the infringer for the acts of infringement that are the subject of Penn’s or the Institutions’ suit or any judgment rendered in such suit.
5.4.4 Notwithstanding Sections 5.4.2 and 5.4.3, in the event that B&N decides any Institutions’ Patent Rights are infringed by a Third Party (a) prior to the First Commercial Sale of a Product in the United States or (b) if any of the infringed Institutions’ Patent Rights are also licensed by either Institution to a Third Party prior to any enforcement action being taken by any Party regarding such infringement, the Parties shall discuss, and will mutually agree, in writing, as to how to handle such infringement by such Third Party.
5.4.5 Any recovery or settlement received in connection with any suit will first be shared by Penn and Licensee or Institutions and Licensee, as applicable, equally to cover any litigation costs incurred and next shall be paid to Penn, CHOP or Licensee to cover any litigation costs incurred by any of the Parties in excess of the litigation costs of any of the others. Any remaining recoveries shall be allocated as follows: For any portion of the recovery or settlement, other than for amounts attributable and paid as enhanced damages for willful infringement:
(a) for any suit that such Enforcement Proceedings should be commenced, including to join or be joined as is initiated by Licensee and in which neither Institution was a party in the litigation, Penn shall receive [****] of the recovery and the Licensee shall receive the remainder; and
(b) for any action taken suit that is initiated by B&N the Licensee, Penn or Institutions, and that the other Party or Parties joins voluntarily (but only to enforce the extent such voluntary joining is allowed under this Agreement or expressly by the other Party or Parties in a separate agreement) or involuntarily, the non-initiating Party or Parties shall receive the percentage corresponding to its rights share of the total litigation costs incurred by each Party, but in no event shall the non-initiating Party or Parties joining voluntarily receive less than [****] of such recovery, while the initiating Party shall receive the remainder. For any portion of the recovery or settlement paid as enhanced damages for willful infringement:
(c) for any suit that is initiated by Licensee or Penn or Institutions and the other Party or Parties joins voluntarily (but only to the extent such voluntary joining is allowed under this Agreement or expressly by the other Party or Parties in a separate agreement) or involuntarily, Penn shall receive [****] and Licensee shall receive the remainder; and
(d) for any suit that is initiated by Licensee and in which Penn nor Institutions were a party in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder litigation, Penn shall receive [****] and Licensee shall receive the remainder. For any portion of the recovery or settlement received in connection with any suit that is required in order to confer jurisdiction in the jurisdiction initiated by Penn or Institutions and in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction Licensee was not a party in the jurisdiction litigation, any recovery in which the Enforcement Proceedings are excess of litigation costs will belong to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement ProceedingsPenn.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings 5.4.6 Each Party will reasonably cooperate and assist with respect to, any alleged infringement or dilution the other in litigation proceedings instituted hereunder but at the expense of the Licensed Marks Party or Parties who initiated the suit (unless such suit is being jointly prosecuted by third partiesthe Parties). For clarity, nor by reason of any settlement to which B&N may agree, provided such settlement requirement does not require a payment Party to join a suit unless otherwise specifically required under this Agreement. If a Party is subjected to third party discovery related to the Institutions’ Patent Rights or Products licensed to Licensee hereunder in connection with a suit initiated by the other Party or Parties as applicable, the initiating Party or Parties as applicable will pay the non-initiating Party’s or Parties as applicable documented out of money by BNEDpocket expenses with respect to same.
Appears in 2 contracts
Sources: License Agreement (Cabaletta Bio, Inc.), License Agreement (Cabaletta Bio, Inc.)
Infringement. 5.1. In the event thatLicensor agrees to indemnify and hold Licensee and its directors, during the Term of this Agreementofficers, BNED learns of employees and agents, harmless against any infringement or threatened infringement of the Licensed Marksand all claims, or dilution by a third party in the U.S. with respect to the Licensed Marksdemands, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoingactions, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringementlosses, or dilution by a third party with respect to the Exclusively Licensed Marksliabilities, BNED may request that B&N bring litigationjudgments, oppositionsettlements, cancellation or related legal proceedings awards and costs (including reasonable attorneys' fees and expenses) (collectively, “Enforcement Proceedings”"Liabilities") or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to any claim against Licensee by a third party that Licensee's use or possession of the bringing Application Software (or the license granted to Licensee hereunder with respect thereto), infringes or violates any United States patent, copyright or other proprietary right of any third party; provided that Licensee gives Licensor prompt notice of any such claim of which it has actual knowledge and cooperates fully with Licensor in the defense of such Enforcement Proceedingsclaim. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N Licensor shall have the exclusive control right to defend and settle at its sole discretion and expense all suits or proceedings arising out of the Enforcement Proceedings, including any decision to maintain or settle such proceedingsforegoing. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N Licensee shall not have any obligation the right to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take settle any action, claim or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, threatened action without the prior written consent of B&N.
5.3Licensor (at Licensor's sole and absolute discretion). With respect to any infringement or threatened In case use of the Application Software is forbidden by a court of competent jurisdiction because of proprietary infringement, Licensor shall promptly, at its option, (i) procure for Licensee the rights to continue using the Application Software; (ii) replace the infringing Application Software with non-infringing Application Software of equal performance and quality which are materially the functional equivalent of the infringing Application Software; (iii) modify the infringing Application Software so it becomes non-infringing while materially maintaining the functionality thereof; or dilution by a third party (iv) if none of the foregoing are commercially practicable, remove the System and terminate the Marketing Agreement and this License Agreement Licensor will then be released from any further obligation whatsoever to Licensee with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control infringing part of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇Application Software. The decision whether to bring, maintain or settle any such Enforcement Proceedings Nothing in this Section shall be at deemed to make Licensor liable for any patent or copyright infringement suits that arise in connection with (a) designs, modifications, use, integration or data furnished by Licensee if infringement would have been avoided by not using or combining the exclusive option and expense Application Software with such other programs or data or (b) if infringement would have been avoided by the use of B&N, and all recoveries shall belong exclusively an updated version made available to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement ProceedingsLicensee.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Software License Agreement (Preferred Voice Inc), Software License Agreement (Preferred Voice Inc)
Infringement. 5.1. In (a) UNIVERSITY and LICENSEE each shall immediately give notice to the event that, during the Term of this Agreement, BNED learns other of any potential infringement or threatened infringement of the Licensed Marks, or dilution by a third party of any Patent Rights of which they become aware or of any certification of which they become aware filed under the United States "Drug Price Competition and Patent Term Restoration Act of 1984" claiming that Patent Rights covering the Licensed Product are invalid or unenforceable or that infringement will not arise from the manufacture, use or sale of Licensed Product by a third party.
(b) LICENSEE as exclusive licensee will have the right to settle with the infringer or to bring suit or other proceeding at its expense against the infringer in its own name or in the U.S. name of UNIVERSITY where necessary, after consultation with respect UNIVERSITY. UNIVERSITY shall be kept advised at all times of such suit or proceedings brought by LICENSEE. UNIVERSITY may, in its discretion, join LICENSEE as party to the Licensed Markssuit or other proceeding, BNED provided that LICENSEE shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use retain control of the Licensed Marks by third parties prosecution of such suit or proceedings in such event. UNIVERSITY agrees to which it has not granted cooperate with LICENSEE in its efforts to protect Patent Rights, including joining as a sub-license with respect to the Exclusively Licensed Marksparty where necessary.
5.2. With respect (c) If LICENSEE does not settle with the infringer or bring suit or other proceeding against the infringer, UNIVERSITY may in its discretion, bring suit or other proceeding at its expense against the infringer, provided however, that UNIVERSITY shall first consult with LICENSEE as to any infringement or threatened infringement, or dilution whether such act(s) by a third party with respect reasonably constitute infringement and whether it is commercially advisable to the Exclusively Licensed Marksbring such suit or proceeding, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings as reasonably determined by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings)LICENSEE. Any such Enforcement Proceedings brought by B&N at BNED’s request LICENSEE shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.kept
Appears in 2 contracts
Sources: License Agreement (Pain Therapeutics Inc), License Agreement (Pain Therapeutics Inc)
Infringement. 5.1. 14.1 In the event thatthat either Party to this License Agreement learns of the infringement of any of University's PATENT RIGHTS, that Party will inform the other Party in writing and will provide the other Party with evidence of the infringement.
14.2 The Parties will cooperate to terminate the infringement without litigation. Licensee agrees that during the Term of period within which and in a jurisdiction where Licensee LANL Document Control No. ▇▇-▇▇-▇▇▇▇▇ has exclusive rights under this Agreement, BNED learns of any infringement or threatened infringement of the Licensed Marks, or dilution by Licensee will not notify a third party about the infringement without first obtaining written consent of the University, which may be withheld at the sole discretion of the University.
14.3 If the efforts of the Parties are not successful in abating the U.S. infringement within ninety (90) days after the infringer has been formally notified of University PATENT RIGHTS1 the University has the right to:
a. commence suit on its own account;
b. commence suit jointly with respect the Licensee; or
c. refuse to participate in a suit. The University shall give written notice to the Licensed MarksLicensee, BNED shall promptly notify B&N or of its authorized representative giving particulars thereof. Notwithstanding election, within ten (10) business days after the foregoing, BNED is not obligated to monitor or police unauthorized use expiration of the Licensed Marks by third parties to which it has not granted a sub-license with respect to ninety (90) day period. If the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N University elects not to initiate Enforcement Proceedings). commence suit on its own account or not to commence suit jointly with the Licensee, then Licensee shall have the right to commence suit on its own account, and, if required by law, University will join the suit as nominal party plaintiff, if the infringement occurred during the term of this License Agreement and in a country where the Licensee had exclusive rights under this License Agreement.
14.4 Any such Enforcement Proceedings brought by B&N at BNED’s request shall legal action under this Article will be at the expense of BNEDthe Party initiating the legal action. Licensee will bear all expenses from any action brought by Licensee under this action, including attorney fees and costs of both Parties and the Parties shall equally share in defense of any counter-claims brought by the recovery of damages or compensation resulting from such Enforcement Proceedingsinfringer. If B&N initiates Enforcement Proceedings legal action is brought by Licensee, the University will be entitled to twenty-five percent (25%) of any damage recovery based on lost profits of Licensee or a reasonable royalty or both. Legal action brought jointly by the University and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information Licensee and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required fully participated in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall both will be at the exclusive option and joint expense of BNED, the Parties and (iv) all recoveries shall belong exclusively to BNED, subject will be shared jointly by them in proportion to the following: (x) B&N shall not have any obligation to share of expenses paid by each.
14.5 Each Party will cooperate with the other in proceedings instituted hereunder, provided expenses are borne by the Party bringing suit. Litigation will be joined as a party plaintiff controlled by the Party bringing suit, except that the University will control the litigation if brought jointly. The University may be represented by its choice of counsel in any Enforcement Proceedings suit brought by the Licensee.
14.6 Neither Party will settle or compromise any suit without its prior the other Party's written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the NonLANL Document Control No. ▇▇-Exclusively Licensed ▇▇-▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: License Agreement (Centrex Inc), License Agreement (Centrex Inc)
Infringement. 5.16.1 LICENSOR represents that, to the best of its knowledge, as of the EFFECTIVE DATE, the entire right, title, and interest in the patent applications or patents comprising the LICENSED PATENTS have been assigned to it (or VCU) free and clear of all liens, claims and encumbrances of any inventor or any non-governmental third party and that it (or VCU) has all requisite power and authority to grant the license contained in this AGREEMENT. LICENSOR also represents that it has received no notification (i) that the LICENSED PATENTS are invalid or (ii) that the exercise by LICENSEE of the rights granted hereunder will infringe on any patent or other proprietary right of any third party. LICENSEE acknowledges and agrees that all rights licensed by the LICENSOR hereunder are licensed “as is” and without any representation, indemnification or warranty with respect to possible infringement of third party rights. In the event that, during the Term of this Agreement, BNED learns of any infringement or threatened infringement of the Licensed Marks, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third action against either party with respect to any LICENSED PATENTS, LICENSEE will defend LICENSOR and VCU at LICENSEE’s expense, with the Exclusively Licensed Marksunderstanding that breaching such obligation may result in a default judgment against LICENSEE, BNED its AFFILIATES, SUBLICENSEEs, and/or LICENSOR (however, LICENSEE’S failure to defend shall not prevent VCU and LICENSOR from defending themselves). LICENSEE shall indemnify, defend and hold VCU and LICENSOR harmless from any such judgment, and without limitation shall pay any damages awarded in any such judgment against VCU and LICENSOR. LICENSOR will cooperate as requested by LICENSEE, and will be compensated by LICENSEE for its reasonable out-of-pocket expenses incurred in such cooperation, which LICENSOR will only be required to expend if LICENSEE has approved the same for reimbursement. No settlement, consent judgment, or other voluntary final disposition of any suit that would affect the validity, scope or enforceability of the LICENSED PATENTS, by estoppel, admission or otherwise, or the LICENSOR’S rights in or to same, may request that B&N bring litigationbe entered into without the consent of LICENSOR, oppositionsuch consent not to be unreasonably withheld.
6.2 LICENSEE and LICENSOR shall promptly inform each other in writing of any alleged infringement of the LICENSED PATENTS by a third party.
6.3 During the term of this AGREEMENT, cancellation or related legal proceedings (collectivelyLICENSOR will have the right, “Enforcement Proceedings”) or provide prior written consent but shall not be obligated, to prosecute at its own expense all infringements of the LICENSED PATENTS and, in furtherance of such right, LICENSOR may include LICENSEE, upon agreement by LICENSEE, as a party plaintiff in any such suit, at LICENSEE’S expense. Each party shall bear its own costs of prosecuting any such infringement action, shall be entitled to prove and recover any damages, and distribution shall be governed by Section 6.5. Upon mutual agreement of the parties, each may assign to the initiation other its right to ▇▇▇ for past, present, or future infringement of Enforcement Proceedings the LICENSED PATENTS, and to agree to a method to allocate damages recovered by BNED the assignee of such rights.
6.4 LICENSOR or LICENSEE shall have three (3) months after having been notified of any alleged infringement to investigate whether infringement can be established. If LICENSOR determines that infringement exits, then it shall have three (3) months to negotiate in good faith with the alleged infringer to resolve the dispute. At the end of such period, if the dispute has not been resolved, LICENSOR shall have forty five (45) days to commence prosecuting an infringement action (the filing period). If LICENSOR determines that infringement can be established and (a) at any time decides not to pursue an action against the alleged infringer, or (b) fails to commence prosecuting an action before the end of the filing period, then LICENSOR shall notify LICENSEE of its intention not to bring suit against any alleged infringer. In those events only, LICENSEE shall have the right but shall not be obligated, to prosecute at its own expense any infringement of the LICENSED PATENTS, and LICENSOR hereby agrees at its discretion and upon terms to be mutually agreed by the parties, to either be named as a plaintiff in any such proceedings or to assign its rights to ▇▇▇ for infringement. LICENSEE shall pay all of LICENSOR’S costs and reasonable attorney fees incurred in such action. No settlement, consent judgment, or other voluntary final disposition of the suit shall be entered into without the consent of LICENSOR, which consent shall not be unreasonably withheld. LICENSEE hereby indemnifies LICENSOR against any order for costs or attorney fees that may be made against LICENSOR in such proceedings instituted by LICENSEE.
6.5 In the event that LICENSOR shall undertake the enforcement and/or defense of the LICENSED PATENTS by litigation, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought any monetary recovery by B&N at BNED’s request LICENSOR shall be divided equally between LICENSOR and LICENSEE, after recovering of attorneys and court costs. In the event that LICENSEE undertakes the enforcement and/or defense of the LICENSED PATENTS by litigation, any monetary recovery by LICENSEE shall be shared equally with LICENSOR, after recovering of attorneys and court costs.
6.6 In any infringement suit that either party may institute to enforce the LICENSED PATENTS pursuant to this AGREEMENT, the other party hereto shall, at the expense request of BNEDthe party initiating such suit and upon reasonable notice, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information samples, models, specimens and the Parties shall equally share in like.
6.7 LICENSEE, during the recovery exclusive period of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expensethis AGREEMENT, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNEDsole right, subject to the following: (x) B&N approval by LICENSOR, which shall not have be unreasonably withheld, in accordance with the terms and conditions herein to SUBLICENSE to any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N alleged infringer for all losses, costs, liabilities and expenses arising out future use of or related LICENSED PATENTS. Prior to the bringing distribution of such Enforcement Proceedingssublicensing fees received from an alleged infringer as specified in Article III, LICENSOR shall be compensated for any and (z) BNED shall not take any actionall expenses incurred by it, or make any admissionsif any, in that may affect regard prior to the validity of any registration commencement of the Exclusively Licensed Marks, without SUBLICENSE with the prior written consent of B&N.infringer.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in 6.8 In the event that B&N decides that any legal action alleging invalidity or noninfringement of any of the LICENSED PATENTS shall be brought against LICENSEE, or LICENSOR, LICENSOR, at its option, shall have the right within thirty (30) days after the commencement of such Enforcement Proceedings should be commencedaction, including to join or be joined as a party in any intervene and take over the sole defense of the action taken by B&N to enforce at its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be broughtown expense. If B&N brings any such Enforcement ProceedingsLICENSOR chooses not to intervene, LICENSEE shall have the option to intervene and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in take over the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingssole defense at its own expense.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Exclusive License Agreement, Exclusive License Agreement (Oxygen Biotherapeutics, Inc.)
Infringement. 5.1. In 7.1 MediCept and Phenome shall each inform the event that, during other promptly in writing of any alleged infringement by a third party of the Term Patent Rights in the Field of Use and of any available evidence thereof.
7.2 During the term of this Agreement, BNED learns MediCept shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Patent Rights by a third party. Phenome hereby agrees that MediCept may include Phenome as a party plaintiff in any such suit, without expense to Phenome. MediCept shall have the obligation at its expense to defend any claim of a third party that any Licensed Product, or MediCept's activities pursuant to this Agreement, infringe the third party's intellectual property rights. The total cost of any infringement action commenced or threatened defended solely by MediCept shall be borne by MediCept, subject to MediCept's right to withhold a portion of the royalties during such action as set forth in Section 7.4. MediCept shall keep any recovery or damages for past infringement derived therefrom, subject to its obligation to reimburse Phenome for any payments withheld and applied pursuant to Section 7.4. Phenome agrees to reasonably cooperate in any such suit.
7.3 If within ninety (90) days after having been notified of any alleged infringement, MediCept shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if MediCept shall notify Phenome at any time prior thereto of its intention not to bring suit against any alleged infringer then, in those events, (i) MediCept shall have the right to pay Phenome royalties at [**] percent ([**]%) of the royalty rate otherwise due in any country where significant infringing sales are made (i.e., [**] percent ([**]%) or more of total sales of Licensed Products in the Field of Use by parties other than MediCept or Phenome); and (ii) Phenome may elect to prosecute at its own expense the alleged infringement of the Licensed MarksPatent Rights. If it elects to prosecute such infringement, Phenome may use the name of MediCept as party plaintiff. No settlement, consent judgment or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use other voluntary final disposition of the Licensed Marks by third parties to which it has not granted a sub-license with respect to suit may be entered into without the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringementconsent of MediCept, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld. Phenome shall indemnify MediCept against any order for costs that may be made against MediCept in such proceedings.
7.4 In the event MediCept shall undertake solely the enforcement and/or defense of the Patent Rights by litigation, conditioned or delayed if B&N elects not MediCept may withhold up to initiate Enforcement Proceedings)[**] percent ([**]%) of the payments otherwise thereafter due to Phenome under Article IV above, and apply the same toward defraying up to [**] percent ([**]%) of MediCept's expenses, including reasonable attorney's fees, in connection with such litigation. Any recovery of damages by MediCept for each such Enforcement Proceedings brought by B&N at BNED’s request suit shall be applied first in satisfaction of any unreimbursed expenses and legal fees of MediCept relating to such suit and next toward reimbursement of Phenome for any payments under Article IV past due or withheld and applied pursuant to this Section 7.4. The balance remaining from any such recovery shall be retained by MediCept.
7.5 In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the Patent Rights shall be brought against MediCept, Phenome, at its option, shall have the right, within thirty (30) days after commencement of such action, to intervene and participate in the defense of the action at its own expense.
7.6 In any infringement suit which either party may institute to enforce the Patent Rights pursuant to this Agreement, the other party hereto shall, at the request and the expense of BNEDthe party initiating such suit, cooperate in all reasonable respects and, to the extent reasonably possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expenselike.
7.7 MediCept shall, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at during the exclusive option and expense period of BNEDthis Agreement, and (iv) all recoveries shall belong exclusively to BNED, have the sole right subject to the following: (x) B&N shall not have terms and conditions hereof to sublicense any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N alleged infringer for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration future use of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3Patent Rights. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any Any royalties from such Enforcement Proceedings sublicensee shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings treated as set forth in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement ProceedingsArticle IV.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Exclusive License Agreement (Critical Therapeutics Inc), Exclusive License Agreement (Critical Therapeutics Inc)
Infringement. 5.1. In the event that, during the Term of this Agreement, BNED learns 6.1 LICENSEE and LICENSOR shall promptly inform each other in writing of any infringement or threatened alleged infringement of the Licensed Marks, or dilution LICENSED PATENTs by a third party.
6.2 During the term of this agreement, LICENSOR will have the right, but shall not be obligated, to prosecute at its own expense all infringements of the LICENSED PATENTS and, in furtherance of such right, LICENSOR may include LICENSEE, upon agreement by LICENSEE, as a party plaintiff in any such suit, at LICENSEE’S expense. Each party shall bear its own costs of prosecuting any such infringement action, and shall be entitled to prove and recover its damages, Upon mutual agreement of the parties, each may assign to the other its right to ▇▇▇ for past, present, or future infringement of the LICENSED TECHNOLOGY, and to agree to a method to allocate damages recovered by the assignee of such rights.
6.3 LICENSOR or LICENSEE shall have three (3) months after having been notified of any alleged infringement to investigate whether infringement can be established. If LICENSOR determines that infringement exits, then it shall have [********] to negotiate in good faith with the alleged infringer to resolve the dispute. If at the end of such period the dispute is has nor been resolved, LICENSOR shall have [********] to commence prosecuting an infringement action (the filing period). If LICENSOR determines that infringement can be established and (a) at any time decides not to pursue an action against the alleged infringer, or (b) fails to commence prosecuting an action before the end of the filing period, then LICENSOR shall notify LICENSEE of its intention not to bring suit against any alleged infringer in the U.S. with respect TERRITORY. In those events only LICENSEE shall have the right but shall not be obligated, to the Licensed Marks, BNED shall promptly notify B&N or prosecute at its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use own expense any infringement of the Licensed Marks LICENSED TECHNOLOGY, and LICENSOR hereby agrees at its discretion and upon terms to be mutually agreed by third parties the parties, to which it has not granted either be named as a sub-license with respect plaintiff in any such proceedings or to the Exclusively Licensed Marks.
5.2assign its rights to ▇▇▇ for infringement. With respect to any infringement or threatened infringementLICENSEE shall pay all of LICENSOR’S costs and reasonable attorney fees incurred in such action. No settlement, consent judgment, or dilution by a third party with respect to other voluntary final disposition of the Exclusively Licensed Markssuit shall be entered into without the consent of LICENSOR, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld. LICENSEE hereby indemnifies LICENSOR against any order for costs or attorney fees that may be made against LICENSOR in such proceedings instituted by LICENSEE.
6.4 In the event that LICENSOR shall undertake the enforcement and/or defense of the LICENSED TECHNOLOGY by litigation, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought any monetary recovery by B&N at BNED’s request LICENSOR, shall be divide equally between LICENSOR and LICENSEE after all costs have been paid. In the event that LICENSEE undertakes the enforcement and/or defense of the LICENSED PATENTS by litigation, any monetary recovery by LICENSEE shall be shared with LICENSOR after all costs are paid.
6.5 In any infringement suit that either party may institute to enforce the LICENSED TECHNOLOGY pursuant to this Agreement, the other party hereto shall, at the expense request of BNEDthe party initiating such suit and upon reasonable notice, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information samples, models, specimens and the Parties shall equally share in like.
6.6 LICENSEE, during the recovery exclusive period of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expensethis Agreement, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNEDsole right, subject to the following: (x) B&N approval by LICENSOR, which shall not have be unreasonably withheld, in accordance, with the terms and conditions herein to sublicense any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction alleged infringer in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N TERRITORY for all losses, costs, liabilities and expenses arising out future use of or related LICENSED TECHNOLOGY. Prior to the bringing distribution of sublicensing fees received from an alleged infringer as specified in Section III, LICENSOR shall be compensated for any and all expenses incurred by it, if any, in that regard prior to the commencement of the sublicense with the infringer.
6.7 In the event of any legal action alleging invalidity or noninfringement of any of the LICENSED TECHNOLOGY shall be brought against LICENSEE, or LICENSOR, LICENSOR, at its option, shall have the right within [********] after the commencement of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect to intervene and take over the validity of any registration sole defense of the Exclusively Licensed Marksaction at its own expense. If LICENSOR chooses not to intervene, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N LICENSEE shall have exclusive control of any Enforcement Proceedings relating the option to intervene and take over the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be sole defense at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingsexpense.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: License Agreement (Targacept Inc), License Agreement (Targacept Inc)
Infringement. 5.1. In (a) Each Party shall promptly notify in writing the event that, other Party during the Term term of this Agreement, BNED learns Agreement of any (1) known infringement or threatened suspected infringement of any of the Patent Rights; or (2) unauthorized use or misappropriation of the Licensed Marks, or dilution Technology by a third party in of which it becomes aware, and shall provide the U.S. other Party with respect to the Licensed Marksall available evidence supporting said infringement, BNED shall promptly notify B&N suspected infringement or its authorized representative giving particulars thereofunauthorized use or misappropriation. Notwithstanding Within ninety (90) days after Licensor becomes, or is made aware of any of the foregoing, BNED Licensor shall decide whether or not to initiate an infringement or other appropriate action and shall notify Licensee of its decision in writing. The failure of Licensor to inform Licensee of Licensor's decision within such 90-day period shall be deemed a decision not to initiate an infringement or other appropriate action.
(b) In the event that Licensor notifies Licensee of its intent to initiate an infringement or other appropriate action within the 90-day period provided in Section 5.2(a), provided such infringement is not obligated to monitor continuing, Licensor shall initiate such an infringement or police unauthorized use other appropriate action within 30 days of the Licensed Marks by third parties end of such 90-day period. Licensor shall be entitled to which it has not granted join Licensee as a sub-license with respect party to such suit, but Licensee shall be under no obligation to participate except to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by extent that such participation is required as the result of being a third named party with respect to the Exclusively suit or being involved in the commercialization of any Patent Rights and/or Licensed MarksTechnology at issue. If Licensee chooses to participate, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide Licensee shall have the right to be represented by its own counsel at its own expense. Licensor shall not settle any such suite involving rights of Licensee nor make an admission of liability on behalf of Licensee without obtaining the prior written consent to the initiation of Enforcement Proceedings by BNED (Licensee, which consent shall not be unreasonably withheld. In the event Licensor initiates proceedings pursuant to this Section 5.2(c), conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request Licensor shall be at the expense entitled to 100% of BNED, any and the Parties shall equally share all amounts recovered in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedingssuit, whether at BNED’s request through judgment, settlement or otherwise, B&N including without limitation, any punitive damages that may be awarded, up to the amount of Licensor's costs of suit, and Licensor and Licensee shall each be entitled to 50% of all amounts recovered in such suit, whether through judgment, settlement or otherwise, including without limitation, any punitive damages that may be awarded, in excess of Licensor's costs of suit.
(c) In the vent that Licensor decides not to initiate, or is deemed to have not decided to initiate an infringement or other appropriate action within the 90-day period provided in Section 5.2(a), or does not initiate such an infringement or other appropriate action within 30 days of such 90-day period as provided in Section 5.2(b), Licensee shall have exclusive control the right, at its expense, to initiate an infringement or other appropriate action, and shall be entitled to join Licensor has a party to such suit, but Licensor shall be under no obligation to participate except to the extent that such participation is required as a result of its being a named party to the Enforcement Proceedingssuit or being the owner of any Patent Rights and/or Licensed Technology at issue. Notwithstanding the foregoing, including any decision in the event that Licensor is engaged at the end of said 90-day period in negotiations for the settlement of said patent infringement which has been the subject of notice from Licensee to maintain or settle Licensor and has advised Licensee in writing of such proceedingsnegotiations, then the above mentioned right and option of Licensee to bring suit shall be exercised only with the written consent of Licensor which will not be unreasonably withheld. If B&N does not elect Licensor chooses to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings participate in any suit initiated by BNEDLicensee, then (i) BNED may initiate such proceedings, (ii) Licensor shall have exclusive control of the Enforcement Proceedings, (iii) right to be represented in any decision to maintain or such suit by its own counsel at its own expense. Licensee shall not settle any such Enforcement Proceedings shall be at the exclusive option and expense suit involving rights of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings Licensor nor make an admission of liability on behalf of Licensor without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without obtaining the prior written consent of B&N.
5.3Licensor, which consent shall not be unreasonably withheld. With respect In the event Licensee initiates proceedings pursuant to this Section 5.2(c), Licensee shall be entitled to 100% of any infringement and all amounts recovered in such suit, whether through judgment, settlement or threatened infringementotherwise, or dilution by a third party with respect including without limitation, any punitive damages that may be awarded, up to the Non-Exclusively Licensed ▇▇▇▇amount of Licensee's costs of suit, B&N and Licensor and Licensee shall have exclusive control each be entitled to 50% of all amounts recovered in such suit, whether through judgment, settlement or otherwise, including without limitation, any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bringpunitive damages that may be awarded, maintain or settle any such Enforcement Proceedings in excess of Licensee's costs of suit.
(d) Nothing herein contained shall be at construed to require either party to expend money in litigation or in the exclusive option enforcing of Patent Rights and/or Licensed Technology rights unless it so elects and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party proceeds with litigation in the name of the other party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction cause in which such other party is not voluntarily a party, as evidenced by written notice, such party shall and agrees to hold the Enforcement Proceedings are to be brought. If B&N brings other party harmless from any such Enforcement Proceedingsand all liabilities arising thereunder, including, but not limited to, attorney's fees, court costs, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses damages arising out of or related to counterclaims, cross-claims and the bringing of such Enforcement Proceedingslike.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: License Agreement (Prestige Brands International, LLC), License Agreement (Prestige Personal Care, Inc.)
Infringement. 5.1. In 8.1 LICENSOR and LICENSEE shall promptly give notice to the event that, during the Term of this Agreement, BNED learns other in writing of any infringement or threatened alleged infringement of the Licensed Marks, or dilution Patents and of any other legal action undertaken by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third either party with respect to the Exclusively defense or enforcement of Licensed MarksPatents. The parties shall thereupon confer as to what steps are to be taken to stop or prevent such infringement.
8.2 LICENSEE shall have the first right to defend or enforce Licensed Patents against any infringer at LICENSEE's cost and expense including by bringing any legal action for infringement or defending any counterclaim of invalidity or action of a third party for declaratory judgment of non-infringement, BNED which LICENSEE, in its sole discretion, decides is reasonable and necessary for it to undertake. LICENSEE shall bring or defend or may request settle any such actions solely at its own discretion and expense and through counsel of its selection. LICENSEE will be entitled to retain any settlement or damage award received except as provided for in Article 8.4; provided, however, that B&N bring litigationeach LICENSOR shall be entitled in each instance to participate through counsel of its own selection and its own expense and share in any damage award or settlement as mutually agreed upon in writing by the parties prior to such participation. LICENSEE shall not join LICENSOR as a party-plaintiff in any suit which LICENSEE may institute unless necessary for the maintenance of said suit, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide and then only with the prior knowledge and written consent to the initiation of Enforcement Proceedings by BNED (LICENSOR, which consent shall not be unreasonably withheld. In such event that LICENSOR is an unwilling participant in any suit which LICENSEE may institute, conditioned LICENSOR shall not be chargeable for any costs or delayed if B&N elects not to initiate Enforcement Proceedings)expenses and those costs and expenses shall be borne by LICENSEE. Any such Enforcement Proceedings LICENSOR shall execute all documents necessary for the prosecution of any infringement suit brought by B&N at BNED’s request shall be at the expense of BNEDLICENSEE and provide other such support as LICENSEE may require including having its employees testify when requested and make available relevant records, papers, information, samples, specimens and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear like, all however at the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to travel and the Non-Exclusively Licensed ▇▇▇▇like, B&N of LICENSEE.
8.3 LICENSOR shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N defend or its authorized representatives at B&N’s expense enforce the Licensed Patents against infringement in the event that B&N decides LICENSEE declines to exercise its rights to defend or enforce Licensed Patents under Article 8.2 and shall have sole discretion to file and prosecute, defend or [+] DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR CONFIDENTIALITY PURPOSES. settle such infringement and declaratory judgment action at its own expense through counsel of its own selection and will be entitled to retain any settlement or damage award received; provided, however, that LICENSEE shall be entitled in each instance to participate through counsel of its own selection and at its own expense. LICENSEE shall have no responsibility or financial obligation with respect to any such Enforcement Proceedings should be commencedinfringement action except to provide reasonable assistance to LICENSOR as requested and LICENSOR shall reimburse LICENSEE for LICENSEE's out-of-pocket expenses in connection with any such assistance. LICENSEE shall execute all documents necessary for the prosecution of any infringement suit brought by LICENSOR and provide other such support as LICENSOR may require, including having its employees testify when requested and make available relevant records, papers, information, samples, specimens and the like, all however at the expense, with respect to join or travel and the like, of LICENSOR.
8.4 LICENSOR shall be joined as a party entitled to the percentage of any recovery obtained in any action taken infringement suit brought by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related LICENSEE equal to the bringing amount to which LICENSOR would be entitled under the sublicensee royalty provision of this Agreement had said recovery been paid to LICENSEE as sublicense royalties by the defendant in said infringement suit. LICENSEE may deduct its reasonable direct costs and attorneys' fees paid to third parties incurred in prosecuting such suit; to the extent such costs and fees are not otherwise recovered, prior to calculating the share owing to LICENSOR pursuant to this provision.
8.5 Should LICENSEE commence a suit under the provisions of Paragraphs 8.2 and thereafter elect to abandon the same, it shall give timely notice to LICENSOR, which may, if it so desires, continue prosecution of such Enforcement Proceedingssuit under Article 8.3.
5.4. B&N 8.6 During the period of this Agreement, if LICENSOR's actions under Article 8.3 require a sublicense to an infringer, LICENSEE shall incur no liability grant such a sublicense to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings said infringer in accordance with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason terms and conditions herein and the terms and conditions of any settlement or other judgment effected by LICENSOR. LICENSEE shall receive such royalties under any such sublicense and LICENSOR shall be entitled to which B&N may agree, provided such settlement does not require a payment of money by BNEDroyalties therefrom as specified in Paragraph 4.
Appears in 2 contracts
Sources: Exclusive License Agreement (Biomira CORP), Agreement and Plan of Reorganization (Biomira Inc)
Infringement. 5.1. In 7.1 LICENSEE shall inform AUBURN promptly in writing of any alleged infringement of the event that, during PATENT RIGHTS by a third party of which LICENSEE becomes aware and of any available evidence thereof.
7.2 During the Term term of this Agreement, BNED learns of any infringement or threatened infringement of AUBURN shall have the Licensed Marksright, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent but shall not be unreasonably withheldobligated, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N prosecute at BNED’s request shall be at its own expense all infringements of the expense of BNEDPATENT RIGHTS and, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing furtherance of such Enforcement Proceedings. In additionright, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED LICENSEE hereby agrees that AUBURN may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined include LICENSEE as a party plaintiff in any Enforcement Proceedings such suit, without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order expense to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings LICENSEE. The total cost of any such Enforcement Proceedings infringement action commenced or defended solely by AUBURN shall be borne by AUBURN and B&N is joined AUBURN shall keep any recovery or damages for past infringement derived therefrom.
7.3 If within six (6) months after having been notified of any alleged infringement, AUBURN shall have been unsuccessful in persuading the alleged infringer to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify desist and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any have brought and shall not be diligently prosecuting an infringement action, or make if AUBURN shall notify LICENSEE at any admissionstime prior thereto of its intention not to bring suit against any alleged infringer for the FIELD OF USE, then, and in those events only, LICENSEE shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the PATENT RIGHTS for the FIELD OF USE, and LICENSEE may, for such purposes, use the name of AUBURN as party plaintiff. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of AUBURN, which consent shall not unreasonably be withheld. LICENSEE shall indemnify AUBURN against any order for costs that may affect be made against AUBURN in such proceedings.
7.4 In the validity event that LICENSEE shall undertake the enforcement and/or defense of the PATENT RIGHTS by litigation, LICENSEE may withhold up to fifty percent (50%) of the payments otherwise thereafter due AUBURN under Article 4 hereunder and apply the same toward reimbursement of up to half of LICENSEE's expenses, including reasonable attorneys' fees, in connection therewith. Any recovery of damages by LICENSEE for each such suit shall be applied first in satisfaction of any registration unreimbursed expenses and legal fees of LICENSEE pertaining to such suit, and next toward reimbursement of AUBURN for any payments under Article 4 past due or withheld and applied pursuant to this Article 7, with both such reimbursements to be first applied from any compensatory damage award. The balance remaining from any such recovery of damages shall be divided between LICENSEE and AUBURN as follows: (i) any remaining compensatory damage award shall be treated as NET SALES, with royalty payments due as defined under Article 4.1(b); and (ii) any punitive damage award shall be treated as non-royalty consideration and shared under the terms of Article 4.1(d) as if a sublicense had been executed on the day the suit was first filed.
7.5 In the event that a declaratory judgment action alleging invalidity of any of the Exclusively Licensed MarksPATENT RIGHTS shall be brought against LICENSEE, without AUBURN, at its option, shall have the prior written consent right, within thirty (30) days after commencement of B&N.such action, to intervene and take over the sole defense of the action at its own expense.
5.3. With respect to 7.6 In any infringement or threatened infringementsuit as either party may institute to enforce the PATENT RIGHTS pursuant to this Agreement, or dilution by a third the other party with respect to the Non-Exclusively Licensed ▇▇▇▇hereto shall, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option request and expense of B&Nthe party initiating such suit, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and all recoveries shall belong exclusively to B&N. BNED shall not and the like.
7.7 LICENSEE shall have no the sole right in accordance with the terms and conditions herein to initiate sublicense any alleged infringer for the FIELD OF USE for future use of the PATENT RIGHTS. Any payments received under such Enforcement Proceedings in its own name, and BNED a sublicense shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in be shared under the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be broughtterms of Article 4. If B&N brings any a suit was filed against the alleged infringer before such Enforcement Proceedingssublicense was executed, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in then for purposes of determining revenue sharing under Article 4.1(d), the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution execution date of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNEDsublicense shall be the date the suit was first filed.
Appears in 2 contracts
Sources: License Agreement, License Agreement
Infringement. 5.19.1 ALLIANCE and HMRI shall each promptly, but in any event no later than ten (10) business days after receipt of notice of such action, notify the other in writing of any patent nullity actions, any declaratory judgment actions or any alleged or threatened infringement of patents or patent applications or misappropriation of intellectual property comprising the Patents or if either party, or any of their respective Affiliates, shall be individually named as a defendant in a legal proceeding by a Third Party alleging infringement of a patent or other intellectual property right as a result of the manufacture, production, use, development, manufacturing, marketing, selling or distribution of Products, or of any other information or notification regarding the Patents.
9.2 HMRI shall have the first right to respond to, defend or prosecute any actions, challenges, infringements, misappropriations or proceeding by a Third Party alleging infringement described in Section 9.1. In the event thatHMRI elects to do so, during the Term of this AgreementALLIANCE will cooperate with HMRI and its legal counsel, BNED learns of any infringement or threatened infringement of the Licensed Marks, or dilution by a third party join in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED such suits as may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNEDHMRI, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives be available at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are HMRI's reasonable request to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent an expert witness or otherwise to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction assist in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents HMRI will cooperate with ALLIANCE and its legal counsel and keep ALLIANCE and its counsel reasonable informed at all times as to the initiation status of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain HMRI's response or defense.
9.3 HMRI will not settle any such Enforcement Proceedings shall be at suit or claim involving the exclusive option and expense Patents in a manner that would compromise any rights of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings ALLIANCE without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without obtaining the prior written consent of B&N.ALLIANCE.
5.3. With respect 9.4 In the event that HMRI elects to respond to, defend or prosecute any infringement actions, challenges, infringements, misappropriations or threatened infringement, or dilution proceeding by a third party Third Party alleging infringement described in Section 9.1, then: (i) legal fees and other costs and expenses of HMRI associated with such response or defense shall be paid by HMRI; (ii) legal fees and other costs and expenses associated with such response or defense incurred by ALLIANCE at HMRI's request, shall be paid by ALLIANCE; (iii) costs of acquiring Third Party patents or licenses and any settlement, court award, judgment or other damages will be **__________________; and (iv) amounts recovered from Third Parties in connection with such response or defense shall first be applied, **__________________________________ ________________________________________________________________________________ _______________________________________________________________________________. HMRI shall advance all costs required to be paid by ALLIANCE pursuant to clauses (ii) and (iii) of this subsection 9.4 and shall recover such advanced costs through credits against up to ** of the royalties otherwise payable by HMRI to ALLIANCE hereunder, until the amount so advanced by HMRI is fully recovered. ALLIANCE shall have no obligation to repay HMRI any amounts previously paid by HMRI to ALLIANCE hereunder to cover such costs. **______ ____________________________________________________________________________ ____________________________________________________________________________
9.5 In the event that HMRI elects not to respond to, defend or prosecute any actions, challenges, infringements, misappropriations or proceeding by a Third Party alleging infringement described in Section 9.1 within sixty (60) days of becoming aware of or being notified of such actions, challenges, infringements, misappropriations or proceedings or abandons such response, then, in such event, ALLIANCE shall have the option to do so at ALLIANCE's sole cost, provided that HMRI shall cooperate with and provide assistance to ALLIANCE at HMRI's expense. All amounts so recovered from any Third Party shall be retained by ALLIANCE, subject to reimbursement of both parties for expenses and ALLIANCE shall have no further obligations to HMRI with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to response or defense thereof; provided further that the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED royalty rate payable by HMRI shall not and shall have no right be adjusted downward due to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in an adverse judgment.
9.6 In the event that B&N decides ALLIANCE and HMRI determine that such Enforcement Proceedings should be commenced, including it is necessary or desirable for HMRI to join acquire any Third Party patent or be joined as a party license in any action taken connection with the development or manufacture of Products covered by B&N to enforce its rights the Patents in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement ProceedingsTerritory, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.**_______________________________________________________________ ____________________________________________________________________________ ____________________________________________________________________________
Appears in 2 contracts
Sources: License Agreement (Alliance Pharmaceutical Corp), License Agreement (Alliance Pharmaceutical Corp)
Infringement. 5.112.1 If either Party discovers the infringement of any of Licensor’s Patent Rights licensed under this Agreement, that Party shall give written notice of such claim to the other Party. Licensee shall then use Commercially Reasonable Efforts to terminate such infringement. In the event thatLicensee fails to ▇▇▇▇▇ the infringing activity within [†] after such written notice or to bring legal action against the third party, during Licensor may bring suit for patent infringement. Licensor agrees to join any such legal action, as necessary to pursue the Term of this Agreement, BNED learns of any infringement or threatened infringement enforcement of the Licensed MarksPatent Rights. No settlement, consent judgment or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use other voluntary final disposition of the Licensed Marks by third parties to which it has not granted a sub-license with respect to suit may be entered into without the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringementconsent of Licensor, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably or untimely withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). .
12.2 Any such Enforcement Proceedings brought by B&N at BNED’s request legal action shall be at the expense of BNEDthe Party by whom suit is filed, hereinafter referred to as the “Litigating Party”. After reimbursement of reasonable attorneys’ fees and the Parties legal expenses incurred by Licensee and Licensor in such action or proceeding, Licensee shall equally share in the recovery of be entitled to any damages or compensation resulting from such Enforcement Proceedingssettlements attributable to lost sales (as shall be allocated † DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT FILED SEPARATELY WITH THE COMMISSION by the court or reasonable allocation by mutual agreement of Licensee and Licensor) and shall be subject to Section 4.1 hereof. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting Any other damages or compensation costs recovered by the Litigating Party in connection with a legal action filed by it hereunder, shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined divided as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then follows: (i) BNED may initiate first to reimburse reasonable attorneys’ fees and legal expenses incurred by Licensee and Licensor in such proceedingsaction or proceeding, as provided above, and then (ii) shall have exclusive control (a) [†] percent ([†]%) of the Enforcement Proceedingsremainder shall go to the Litigating Party and (b) [†] percent ([†]%) of the remainder shall go to the other Party.
12.3 Licensee and Licensor shall cooperate with each other in litigation proceedings instituted hereunder, (iii) any decision to maintain or settle any provided that such Enforcement Proceedings cooperation shall be at the exclusive option and expense of BNEDthe Litigating Party, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings litigation shall be at controlled by the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement ProceedingsLitigating Party.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Exclusive License Agreement (NanoString Technologies Inc), Exclusive License Agreement (NanoString Technologies Inc)
Infringement. 5.1. In A. Licensee and CMCC shall each inform the event thatother promptly in writing and shall provide such other party with available evidence of any actual, during alleged or threatened infringement by a third party of the Patent Rights in the Field of Use within the scope of this Agreement and of any available evidence thereof.
B. During the Term of this Agreement, BNED learns of CMCC shall have the first right, but shall not be obligated, to prosecute at its own expense any infringement or threatened infringement of the Licensed MarksPatent Rights and, or dilution in furtherance of such right, Licensee hereby agrees that CMCC may include Licensee as a party plaintiff in any such suit, without expense to Licensee. Licensee shall have the right, at its own expense, to be represented in any such action by a third party counsel of Licensee’s own choice; provided, however, that under no circumstances shall the foregoing affect the right of CMCC to control the suit as described in the U.S. with respect to first sentence of this Section. The total cost of any such infringement action commenced or defended solely by CMCC shall be borne by CMCC. Any recovery of damages, monetary awards or other amounts recovered, whether by judgment or settlement (collectively the Licensed Marks“Recovery Amounts”), BNED by CMCC for each such suit, proceeding or other legal action taken under this paragraph shall promptly notify B&N be applied as specified in paragraph E of this Article VII. No settlement, consent judgment or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use other voluntary final disposition of the Licensed Marks by third parties to which it has not granted a sub-license with respect to suit involving the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringementPatent Rights may be entered into without the consent of Licensee, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned delayed or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense conditioned.
C. If within three (3) months after having been notified of BNEDany alleged infringement, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N CMCC shall have exclusive control of been unsuccessful in persuading the Enforcement Proceedings, including any decision alleged infringer to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option desist and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings brought and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any be diligently prosecuting an infringement action, or make if CMCC shall notify Licensee of its intention not to bring suit against any admissionsalleged infringer then, Licensee shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Patent Rights, provided, however, that such right to bring such an infringement action shall remain in effect only for so long as the license granted hereunder remains exclusive. No settlement, consent judgment or other voluntary final disposition of the suit may affect be entered into without the validity consent of CMCC, which consent shall not be unreasonably withheld, delayed or conditioned. Licensee shall indemnify CMCC against any order for costs that may be made against CMCC in such proceedings.
A. In the event Licensee shall undertake the enforcement and/or defense of the Patent Rights by litigation pursuant to paragraph C of this Article, Licensee may withhold up to fifty percent (50%) of the payments otherwise thereafter due to CMCC under Article IV above and apply the same toward reimbursement of up to fifty percent (50%) of Licensee’s expenses, including reasonable attorney’s fees, in connection therewith.
B. Any recovery of Recovery Amounts under paragraphs B or C of this Article shall be applied first in satisfaction of any registration un-reimbursed expenses and legal fees of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings CMCC and Licensee incurred in prosecuting such enforcement action relating to the Non-Exclusively Licensed ▇▇▇▇such suit and next toward payment to CMCC for any payments under Article IV past due. The decision whether to bring, maintain or settle balance remaining from any such Enforcement Proceedings Recovery Amounts shall be at the exclusive option for distribution purposes, treated as if it were sublicensing revenue and expense of B&N, divided accordingly between Licensee and all recoveries shall belong exclusively CMCC with 75% to B&N. BNED shall not Licensee and shall have no right 25% to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement ProceedingsCMCC.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Exclusive License Agreement (Invivo Therapeutics Holdings Corp.), Exclusive License Agreement (Invivo Therapeutics Holdings Corp.)
Infringement. 5.1. In the event thatthat either party becomes aware of any actual or suspected infringement of any Licensed Patent by a third party as a result of the manufacture, during the Term sale, distribution, offer for sale or use of any Product in any business channel and territory covered by Article II, paragraph 1 of this Agreement, BNED learns of any infringement or threatened infringement of the Licensed Marks, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED it shall promptly notify B&N the other party in writing. AVON shall have the sole initial right, in its sole discretion, to bring THE SYMBOL [***] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION, CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION. and prosecute suit against such third party, and OMP shall cooperate, at AVON’s sole expense, in any such suit. Except to the extent provided for herein, all expenses of such suit shall be borne by, and any recovery obtained or awarded shall belong to, AVON. After AVON has recovered all of its authorized representative giving particulars thereofattorneys’ fees, court costs and damages for infringing sales made by such third party (calculated using the royalty rate set forth in Article III herein), AVON shall pay to OMP out of such remaining, if any, recovery or award, all of OMP’s damages as a result of the infringement by such third party. Notwithstanding the foregoing, BNED is AVON shall not obligated be required to monitor pay to OMP any amount above such remaining, if any, recovery or police unauthorized use award. In the event that AVON elects not to bring suit against such third party within three (3) months after learning of the actual or suspected infringement, and diligently prosecute such suit thereafter, OMP may, at OMP’s sole expense, and with AVON’s reasonable approval, bring suit against such third party and join AVON as a co-plaintiff. AVON agrees to cooperate with OMP in the prosecution of such suit at no cost or expense to AVON. OMP shall bear the full cost and expense of such suit, including enforcing and defending the Licensed Patents, and shall be entitled to retain recovery from such suit, provided that, after OMP has recovered all of its attorney’s fees and court costs, OMP shall first pay to AVON all the royalties due for sales of the infringing products at the royalty rate set forth in Article III herein. OMP shall not settle such suit in any way that shall affect the rights of AVON or the scope, validity or any other aspect of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed MarksPatents. THE SYMBOL [***] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION, CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Patent License Agreement (Obagi Medical Products, Inc.), Patent License Agreement (Obagi Medical Products, Inc.)
Infringement. 5.18.1 ALIMERA shall promptly notify EMORY, and EMORY shall promptly notify ALIMERA, of any suspected infringement of any Licensed Patents in the Licensed Field of Use. In During the event that, during the Term term of this Agreement, BNED learns of any infringement or threatened EMORY and ALIMERA shall have the right to institute an action for infringement of the Licensed Marks, or dilution by Patents against a third party in accordance with the U.S. following: [*] shall have the first right, but not the obligation, to enforce any Licensed Patents [*] * Certain Information has been omitted and filed separately with the Commission Confidential treatment has been requested with respect to the omitted portions. [*], in the Licensed MarksField of Use against such infringement, BNED including without limitation by initiation of proceedings, settlement or compromise, and shall bear the entire cost of such action, including defending any counterclaims brought against [*] and paying any judgments rendered against [*]. If the [*] are implicated in any such enforcement action, ALIMERA and EMORY shall use good faith and commercially reasonable efforts to promptly notify B&N agree in writing the rights between the parties under any such enforcement action. If the parties are unable to promptly agree regarding the rights between the parties under any such enforcement action, then such dispute shall be settled in accordance with the arbitration provisions under Article 14. To the extent [*] takes any such action, [*] shall control such action, and [*] may, upon prior written notice to [*], enter into settlements, stipulated judgments or its authorized representative giving particulars thereofother arrangements with respect to such infringement; provided that if such proposed settlement, stipulated judgment or other arrangement adversely affects [*] interests and/or adversely affects [*] a field of use other than the Licensed Field of Use, [*] shall not enter into such settlement, stipulated judgment or other arrangement without [*] prior written consent, such consent not to be unreasonably withheld or delayed. Notwithstanding The parties acknowledge that it may be reasonable for [*] to [*]. [*] shall cooperate with [*] in such effort, at [*] reasonable expense, including being joined as a party to such action, if necessary. Any recovery or settlement received as the foregoingresult of such action (whether for punitive or exemplary damages, BNED is not obligated or any other recovery or settlement received, including compensatory damages or damages based on a loss of revenues (hereinafter referred to monitor or police unauthorized use as “Recovery”)), shall first be used to reimburse the documented out-of-pocket costs and expenses incurred by ALIMERA and EMORY in pursuing such action, and to the extent any portion of the balance of the Recovery represents [*] damages directly related to the Licensed Marks by third parties Field of Use, for example, [*], such portion shall be deemed to which it be [*], and ALIMERA shall pay to EMORY an amount representing [*]. Any remaining amounts of such Recovery that represents, for example, [*] damages (such as [*] or [*] damages) shall be paid [*] to ALIMERA and [*] to EMORY. If [*] shall fail, within [*] after receiving notice from [*] of a potential infringement in the Licensed Field of Use, or providing [*] with notice of such infringement, to either (i) terminate such infringement or (ii) institute an action to prevent * Certain Information has not granted a sub-license been omitted and filed separately with the Commission Confidential treatment has been requested with respect to the Exclusively Licensed Marksomitted portions.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: License and Option Agreement (Alimera Sciences Inc), License and Option Agreement (Alimera Sciences Inc)
Infringement. 5.19.1 If any third party claims patent infringement against Licensee, as result of Licensee’s use of the Patent Rights, then Licensee shall promptly notify University thereof in writing, setting forth the facts of such claim in reasonable detail. As between the parties to this Agreement, Licensee shall have the first and primary right and responsibility at its own expense to defend and control the defense of any such claim against Licensee, by counsel of its own choice. Licensee shall be free to enter into a settlement, consent judgment, or other voluntary disposition of any such claim, provided that any settlement, consent judgment or other voluntary disposition of any such claim which (i) materially limits the scope, validity, or enforceability of patents included in the Patent Rights or (ii) admits fault or wrongdoing on the part of University must be approved by University, such approval not being unreasonably withheld. Licensee’s request for such approval shall include complete copies of final settlement documents, a detailed summary of such settlement, and any other information material to such settlement. University shall provide Licensee notice of its approval or denial within fifteen (15) business days of any request for such approval by Licensee, provided that (i) in the event University wishes to deny such approval, such notice shall include a detailed written description of University’ reasonable objections to the proposed settlement, consent judgment, or other voluntary disposition and (ii) University shall be deemed to have approved of such proposed settlement, consent judgment, or other voluntary disposition in the event it fails to provide such notice within such fifteen (15) day period in accordance herewith. Any amounts paid to any third party as damages or other compensation with respect to infringement of a third parties rights shall be treated as third party royalties that Licensee shall be entitled to deduct from royalties due University in accordance with Section 3.7. Subject to the policies of the Board of Governors of the University of North Carolina and the laws of the State of North Carolina, University agrees to cooperate with Licensee in any reasonable manner deemed by Licensee to be necessary in defending any such action. Licensee shall reimburse University for any reasonable, documented out of pocket expenses incurred in providing such assistance.
9.2 In the event that, during the Term of this Agreement, BNED learns of that any infringement or threatened infringement of the Licensed Marks, or dilution Patent Rights licensed to Licensee are infringed by a third party in party, Licensee shall have the U.S. exclusive first and primary right, but not the obligation, to institute, prosecute and control any action or proceeding with respect to such infringement, by counsel of its choice, including any declaratory judgment action arising from such infringement. Licensee shall be free to enter into a settlement, consent judgment, or other voluntary disposition with respect to any such action, provided that any settlement, consent judgment or other voluntary disposition thereof which (i) materially limits the Licensed Marksscope, BNED validity, or enforceability of patents included in the Patent Rights or (ii) admits fault or wrongdoing on the part of University must be approved by University, such approval not to be unreasonably withheld. Licensee’s request for such approval shall promptly include complete copies of final settlement documents, a detailed summary of such settlement, and any other information material to such settlement. University shall provide Licensee notice of its approval or denial within fifteen (15) business days of any request for such approval by Licensee, provided that (i) in the event University wishes to deny such approval, such notice shall include a detailed written description of University’ reasonable objections to the proposed settlement, consent judgment, or other voluntary disposition and (ii) University shall be deemed to have approved of such proposed settlement, consent judgment, or other voluntary disposition in the event it fails to provide such notice within such fifteen (15) day period in accordance herewith. If Licensee recovers monetary damages in the form of lost profits from a third party infringer as a remedy for the infringement of Patent Rights licensed hereunder, then Licensee shall first apply such recovery to the costs and expenses incurred in obtaining or negotiating for such recovery (including attorneys’ fees), and pay to University the royalties on the remaining portion of such lost profits at the rate specified in Section 3.6(i). If Licensee recovers monetary damages in the form of a reasonable royalty as a remedy for the infringement of Patent Rights, then, after applying such royalty to the recovery of the costs and expenses incurred in obtaining or negotiating for such royalty (including attorneys’ fees), the remaining amount of any such royalty shall be treated as Sublicensing Royalty Revenue in accordance with Section 3.6.2.
9.3 If Licensee elects not to enforce any patent within the Patent Rights, then Licensee shall notify B&N University in writing within six (6) months of receiving notice that an infringement exists. University may, at its own expense and control, following the earlier of (i) such notice from Licensee or (ii) the expiration of such six (6) month period without Licensee electing to take any action with respect to such alleged or actual infringement, take steps to defend or enforce any patent within the Patent Rights and recover, for its authorized representative giving particulars thereof. own account, any damages, awards or settlements resulting therefrom.
9.4 Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNEDand in University’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required University shall be entitled to participate through counsel of its own choosing in order to confer jurisdiction any legal action involving the Invention and Patent Rights. Nothing in the jurisdiction foregoing Sections shall be construed in any way which would limit the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration authority of the Exclusively Licensed Marks, without the prior written consent Attorney General of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement ProceedingsNorth Carolina.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Exclusive License Agreement (908 Devices Inc.), Exclusive License Agreement (908 Devices Inc.)
Infringement. 5.111.1 LICENSEE shall notify ARM immediately upon learning of any claim which may be made or threatened that the exercise by LICENSEE of the rights hereby licensed constitutes an infringement of the patent, copyright, maskwork right, or trade secret (together “Rights”) of a third party and will not take any action in relation to such claim which may be prejudicial to the interests of ARM without the written consent of ARM.
11.2 ARM agrees that it will, at its expense, timely defend any suit instituted against LICENSEE and shall indemnify LICENSEE against any award of damages and costs made against LICENSEE in any such suit insofar as the same is based on a claim that the exercise by LICENSEE of its licensed rights under Clause 2.1, infringes any Right of a third party, provided that LICENSEE gives ARM timely notice in writing of the institution of such suit and permits ARM through ARM’s lawyers of choice to defend the same and LICENSEE provides all available information, assistance and authority to so defend. ARM shall have control of the defence of any such suit, including appeals, and of all negotiations for settlement, including the right to effect the settlement or compromise thereof.
11.3 In the event thatthat rights licensed to LICENSEE under Clause 2.1 are, during the Term of this Agreement, BNED learns in any suit for infringement of any infringement Right of a third party, held to constitute an infringement, ARM shall, at its option and expense, procure for LICENSEE the right to continue exercising its rights under Clause 2.1, or, to the extent commercially practicable, replace or threatened infringement modify the ARM Transfer Materials, as appropriate, provided that such replacement or modification of the Licensed MarksARM Transfer Materials maintain compatibility, or dilution so that the exercise by a third party in the U.S. LICENSEE of its rights under Clause 2.1, does not constitute an infringement.
11.4 ARM shall have no liability under this Clause 11 with respect to any suit or claim to the Licensed Marksextent that infringement is due solely to; ARM shall have no liability under this Clause for any infringement arising from;
(i) the combination of the ARM Transfer Materials with other products not supplied by ARM if such infringement arises exclusively from such combination;
(ii) the modification of the ARM Transfer Materials unless the modification was made or approved by ARM if such infringement arises exclusively from modification;
(iii) any manufacturing process applied to the ARM Transfer Materials by LICENSEE or LICENSEE’s agent; or
(iv) compliance by ARM with the LICENSEE requirement specification where such compliance necessarily lead to such infringement.
11.5 LICENSEE agrees that it will, BNED at its expense, timely defend any suit instituted against ARM and shall promptly notify B&N indemnify ARM against any award of damages and costs made against ARM in any such suit insofar as the same is based on a claim that; (i) the combination of the ARM Transfer Materials with other products not supplied by ARM if such infringement arises exclusively from such combination; (ii) the modification of the ARM Transfer Materials unless the modification was made or its authorized representative giving particulars approved by ARM if such infringement arises exclusively from modification; (iii) any manufacturing process applied to the ARM Transfer Materials by LICENSEE; or (iv) compliance by ARM with the LICENSEE requirement specification where such compliance necessarily lead to infringement, infringes any Right of a third party, provided that ARM gives LICENSEE timely notice in writing of the institution of such suit and permits LICENSEE through LICENSEE’s lawyers of choice to defend the same and ARM provides, at ARM’s expense, all available information, assistance and authority to so defend. LICENSEE shall have control of the defence of any such suit, including appeals, and of all negotiations for settlement, including the right to effect the settlement or compromise thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent LICENSEE shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at liable under the expense of BNED, and the Parties shall equally share indemnification provided in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder this Clause 11.5 unless it is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff held in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in suit that the jurisdiction in which infringement has been caused by the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out wilful action of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement ProceedingsLICENSEE.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Technology License Agreement (Magnachip Semiconductor LLC), Technology License Agreement (MagnaChip Semiconductor LTD (United Kingdom))
Infringement. 5.1. (a) TMC and Biogen shall each promptly inform the other in writing of any infringement of the Biogen Patent Rights of which such party has notice and provide the other with any available evidence of infringement.
(b) In the event thatTMC, during the Term of this Agreementalone or with an Affiliate or Sublicensee, BNED learns of wishes to take action in a suit to enforce any infringement or threatened infringement of the Licensed MarksBiogen Patent Rights against infringement, or dilution by TMC may take action and, at its option and expense, join Biogen as a third party plaintiff. In determining whether to bring an action to enforce any Biogen Patent Rights, TMC shall act in the U.S. with respect a commercially reasonable manner, giving due consideration to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding threat represented by the foregoing, BNED is not obligated to monitor or police unauthorized use of infringement and the Licensed Marks by third parties to which it has not granted a sub-license with respect potential risk to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement ProceedingsBiogen Patent Rights involved. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out within six (6) months after having been notified by Biogen of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution providing notice to Biogen of an alleged infringement, TMC has been unsuccessful in persuading the alleged infringer to desist and has not brought, and/or is not diligently prosecuting an infringement action, or if TMC notifies Biogen at any time prior thereto of its intention not to bring suit against any alleged infringer, Biogen may take action and, at its option, join TMC as a plaintiff in any suit.
(c) The party which institutes any suit to protect or enforce a Biogen Patent Right shall have sole control of that suit and shall bear the reasonable expenses of the Licensed Marks other party, not including legal fees incurred by the other party, in providing any assistance and cooperation as is requested pursuant to this Section. The party initiating or carrying on such legal proceedings shall keep the other party informed of the progress of such proceedings and such other party shall be entitled to counsel in such proceedings but at its own expense.
(d) Any award paid by third parties (whether by way of settlement or otherwise) as the result of any proceedings initiated by TMC under this Section 7 shall first be applied to reimbursement of the unreimbursed legal fees and expenses incurred by either party and then the remainder shall be divided between the parties as follows:
(i) If the amount is based on lost profits, (x) TMC shall receive an amount equal to the damages the court determines it has suffered as a result of the infringement, less the amount of any royalties (and/or payments on Sublicense Royalty Income) that would have been due to Biogen on sales of Product lost by TMC and/or its Affiliates, Distributors and Sublicensees as a result of the infringement had they made such sales; and (y) Biogen shall receive an amount equal to the royalties (and/or payments on Sublicense Royalty Income) that it would have received if such sales had been made by TMC and/or its Affiliates, Distributors and Sublicensees; and
(ii) As to awards other than those based on lost profits, 3/4 to TMC and 1/4 to Biogen.
(e) Any award paid by third parties (whether by way of settlement or otherwise) as the result of any proceedings initiated by Biogen under this Section 7 shall first be applied to reimbursement of the unreimbursed legal fees and expenses incurred by either party and then shall be divided between the parties, nor by reason of any settlement 1/4 to which B&N may agree, provided such settlement does not require a payment of money by BNEDTMC and 3/4 to Biogen.
Appears in 2 contracts
Sources: License Agreement (Medicines Co/ Ma), License Agreement (Medicines Co/ Ma)
Infringement. 5.1. In 12.1 Each Party will promptly inform the event that, during the Term of this Agreement, BNED learns other Party in writing of any alleged infringement or threatened infringement of the Licensed Marks, or dilution by a third party in of any of the U.S. with respect to WFUHS Patent Rights within the Licensed MarksField, BNED shall promptly notify B&N and provide such other Party with any available evidence of infringement. Neither Party will settle or compromise any claim or action described in this Article 12 in a manner that imposes any restrictions, limitations, responsibilities or obligations on the other Party without the other Party’s express written consent.
12.2 During the Duration, Tengion will have the right to prosecute at its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use own expense any infringements of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringementImprovement Patents and, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing furtherance of such Enforcement Proceedings. In additionprosecution, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED Tengion may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined join WFUHS as a party plaintiff in any Enforcement Proceedings such suit, without expense to WFUHS. Similarly, during the Duration, Tengion will have the right to defend at its prior written consent, which may be granted own expense any infringement action or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of declaratory judgment action alleging invalidity or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity noninfringement of any registration of the Exclusively Licensed MarksImprovement Patents, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringementand, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇in furtherance thereof, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to Tengion may join or be joined WFUHS as a party in any such suit, without expense to WFUHS. The total cost of any such action taken commenced or defended solely by B&N Tengion will be borne by Tengion. Any recovery of damages by Tengion as a result of such action shall be applied first in satisfaction of any reasonable unreimbursed expenses and attorneys’ fees of Tengion relating to enforce its rights the action, and second in satisfaction of reasonable unreimbursed legal expenses and attorneys’ fees of WFUHS, if any, relating to the Non-Exclusively Licensed ▇▇▇▇ against action and incurred as a third result of being joined as a party by Tengion. The balance remaining from any such recovery shall be allocated between Tengion and WFUHS in accordance with Article 3 hereof as if such joinder is required balance represented Net Sales of a Licensed Product utilizing the patents in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingsquestion.
5.4. B&N shall incur no liability to BNED under any legal theory by reason 12.3 If, within one hundred eighty (180) days after having been notified of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement of any Improvement Patent, Tengion has been unsuccessful in persuading the alleged infringer to desist, and has not brought, or dilution otherwise is not diligently prosecuting, an infringement action, or if Tengion notifies WFUHS at any time prior thereto of its intention not to bring suit against any alleged infringer that has not been licensed by Tengion under any Improvement Patent(s), then, and in those events only, WFUHS will have the right, but not the obligation, to prosecute at its own expense such infringement of such Improvement Patent(s), and WFUHS may, for such purposes, use the name of Tengion as a party plaintiff (without expense to Tengion). Settlement, consent judgment or other voluntary final disposition of the Licensed Marks suit may be entered into by third parties, nor by reason WFUHS without the consent of any settlement to which B&N may agree, Tengion; provided such settlement does not require a impose any obligation for the payment of money or the taking of any action on Tengion. The total cost of any such infringement action commenced or defended solely by BNEDWFUHS will be borne by WFUHS, and WFUHS will keep any recovery or damages, for past infringement or otherwise, derived therefrom. * Confidential Treatment Requested 27
12.4 In the event that a declaratory judgment action alleging invalidity or noninfringement of any Improvement Patent(s) is brought against Tengion, and Tengion declines to defend the same or otherwise is not diligently defending such action, then, and in those events only, WFUHS, at its option, will have the right to intervene and take over the sole defense of the action at its own expense (and without expense to Tengion), and whereupon WFUHS will keep any recovery and damages derived therefrom or from any counterclaims asserted therein. Further, WFUHS will then have the sole right in such event to delete from the license granted to Tengion under this Agreement for the territory covered thereby the U.S. or foreign Improvement Patent(s) as to which the declaratory action alleging invalidity or noninfringement was filed. WFUHS shall then be free to license or otherwise exploit its rights to such Improvement Patent(s) to any other party on any other terms.
12.5 In any infringement suit brought or declaratory judgment action or infringement action defended by either Party to protect any Improvement Rights pursuant to this Agreement, the other Party will, at the request and expense of the Party controlling such suit and at such Party’s expense, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like.
12.6 Tengion shall, during the Duration, have the sole right, subject to the terms and conditions of this Agreement, to sublicense any alleged infringer for future use of the Improvement Patents to the extent licensed by this Agreement. Any upfront fees paid to Tengion as part of such a sublicense shall be shared between Tengion and WFUHS as provided in Article 3.2 hereof.
Appears in 2 contracts
Sources: License Agreement (Tengion Inc), License Agreement (Tengion Inc)
Infringement. 5.1. In 9.1 Each party shall promptly report in writing to the event that, other party during the Term of this Agreement, BNED learns of any infringement or threatened suspected infringement of the Licensed Marksany Patent, or dilution unauthorized use or misappropriation of the Technology or Know-how by a third party 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.
9.2 Company shall have the right to initiate an infringement suit or other appropriate action against any third party who at any time has infringed or is suspected of infringing any of the Patents or of using without proper authorization all or any portion of the Technology or Know-how. Company shall give MSU sufficient advance written notice of its intent to initiate such action and the reasons therefor, and shall provide MSU with an opportunity to make suggestions and comments regarding such action. Company shall keep MSU promptly informed of the status of any such action. Company shall pay all expenses of such action. MSU shall offer reasonable assistance to Company in connection therewith at no charge to Company except for reimbursement of reasonable out-of-pocket expenses. Recoveries, reimbursements, damages, profits or awards from such action shall first be applied to reimburse Company and MSU for litigation costs. Any remaining recoveries, reimbursements, damages, profits or awards of whatever nature shall be treated as Adjusted Gross Sales under this Agreement.
9.3 In the U.S. with respect event that MSU is a legally indispensable party to an infringement suit or other action as described in Paragraph 9.2, MSU may join the Licensed Marks, BNED action as a co-plaintiff. Company shall promptly notify B&N reimburse MSU for any costs it incurs as a party to any action brought by Company or its authorized representative giving particulars thereof. Notwithstanding sublicensee, irrespective of whether MSU shall become a co-plaintiff.
9.4 In the foregoing, BNED is event that Company does not obligated to monitor or police unauthorized use within six (6) months (a) secure cessation of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by (b) initiate suit against the infringer, MSU shall thereafter have the right but not the obligation to convert Company's exclusive license hereunder to a third party non-exclusive license and/or to take action against the infringer at MSU's own expense. Company shall offer reasonable assistance to MSU in connection with respect such action at no charge to MSU except for the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation reimbursement of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings)reasonable out-of-pocket expenses. Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense damages, profits or awards of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting whatever nature recovered from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation action shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement ProceedingsMSU.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: License Agreement (Hepalife Technologies Inc), License Agreement (Hepalife Technologies Inc)
Infringement. 5.18.1 ALIMERA shall promptly notify EMORY, and EMORY shall promptly notify ALIMERA, of any suspected infringement of any Licensed Patents in the Licensed Field of Use. In During the event that, during the Term term of this Agreement, BNED learns of any infringement or threatened EMORY and ALIMERA shall have the right to institute an action for infringement of the Licensed Marks, or dilution by Patents against a third party in accordance with the U.S. following: [*] shall have the first right, but not the obligation, to enforce any Licensed Patents in the Licensed Field of Use against such infringement, including without limitation by initiation of proceedings, settlement or compromise, and shall bear the entire cost of such action, including defending any counterclaims brought against [*] and paying any judgments rendered against [*]. To the extent [*] takes any such action, [*] shall control such action, and [*] may, upon prior written notice to [*], enter into settlements, stipulated judgments or other arrangements with respect to such infringement; provided that if such proposed settlement, stipulated judgment or other arrangement adversely affects [*] interests and/or adversely affects a field of use other than the Licensed Field of Use, [*] shall not enter into such settlement, stipulated judgment or other arrangement without [*] prior written consent, such consent not to be unreasonably withheld or delayed. The parties acknowledge that it may be reasonable for [*] to [*] * Certain information has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the Licensed Marksomitted portions. [*]. [*] shall cooperate with [*] in such effort, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s [*] reasonable expense, including to join or be being joined as a party to such action, if necessary. Any recovery or settlement received as the result of such joinder is required action (whether for punitive or exemplary damages, or any other recovery or settlement received, including compensatory damages or damages based on a loss of revenues (hereinafter referred to as “Recovery”)), shall first be used to reimburse the documented out-of-pocket costs and expenses incurred by ALIMERA and EMORY in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any pursuing such Enforcement Proceedings that are not at BNED’s requestaction, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in extent any portion of the jurisdiction in which balance of the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or Recovery represents [*] damages directly related to the bringing Licensed Field of Use, for example, [*], such portion shall be deemed to be [*], and ALIMERA shall pay to EMORY an amount representing [*]. Any remaining amounts of such Enforcement Proceedings. In additionRecovery that represents, if B&N elects for example, [*] damages (such as [*] or [*] damages) shall be paid [*] to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedingsALIMERA and [*] EMORY. If B&N does not elect to initiate Enforcement Proceedings [*] shall fail, within [*] after receiving BNED’s written request but consents notice from [*] of a potential infringement in the Licensed Field of Use, or providing [*] with notice of such infringement, to the initiation of Enforcement Proceedings by BNED, then either (i) BNED may initiate terminate such proceedings, infringement or (ii) shall have exclusive control of the Enforcement Proceedings, institute an action to prevent continuation thereof and thereafter to prosecute such action diligently or (iii) any decision obtain [*] consent not to maintain institute an action to prevent continuation thereof, or settle any if [*] notifies [*] that it does not plan to terminate the infringement or institute such Enforcement Proceedings action, then [*] shall be have the right to do so at the exclusive option and expense of BNEDits own expense. [*] shall cooperate with [*] in such effort, and (iv) all recoveries shall belong exclusively to BNEDat [*] reasonable expense, subject to the following: (x) B&N shall not have any obligation to be including being joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely action if necessary. [*].
8.2 Should either EMORY or ALIMERA commence a suit under the provisions of this Article 8 and thereafter elect to confer jurisdiction in abandon such suit, the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related abandoning party shall give timely notice to the bringing other party who may, if it so desires, continue prosecution of such Enforcement Proceedingssuit, provided that the sharing of expenses and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any recovery in such Enforcement Proceedings suit shall be at the exclusive option as agreed upon between EMORY and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement ProceedingsALIMERA.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: License Agreement (Alimera Sciences Inc), License Agreement (Alimera Sciences Inc)
Infringement. 5.1. 14.1 In the event that, during that the Term Licensee learns of the substantial infringement of any PATENT RIGHTS under this License Agreement, BNED learns the Licensee will notify the University in writing and will provide the University with reasonable evidence of any infringement or threatened infringement of the Licensed Marks, or dilution by such infringement. The Licensee will not notify a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to infringement of any PATENT RIGHTS without first obtaining consent of the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringementUniversity, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall will not be unreasonably withheld. The Parties will use their best efforts in cooperation with each other to terminate such infringement without litigation.
14.2 If the Licensee desires that PATENT RIGHTS be enforced against infringers, conditioned the Licensee may request permission from the University to file suit against the infringement of PATENT RIGHTS or delayed may request that the University take legal action against the infringement of PATENT RIGHTS. Such request must be made in writing and must include reasonable evidence of such infringement and damages to the Licensee. If the infringing activity has not been abated within ninety (90) days following the receipt of such request, the University will have the right to elect to
a. commence suit on its own account;
b. commence suit jointly with the Licensee; or
c. refuse to participate in such suit. The University will give notice of its election in writing to the Licensee by the end of the 10th day after receiving such request from the Licensee. The Licensee may thereafter bring suit for patent infringement if B&N and only if the University elects not to initiate Enforcement Proceedings)commence suit and if the infringement occurred during the period and in a jurisdiction where the Licensee had exclusive rights under this License Agreement. In the event, however, the Licensee elects to bring suit in accordance with this Paragraph, the University may thereafter join such suit at its own expense. Both parties agree to be bound by the outcome of a suit for patent infringement through the pendency of such a suit under this Paragraph.
14.3 Any such Enforcement Proceedings brought by B&N at BNED’s request shall legal action under this Article will be at the expense of BNEDthe Party initiating the legal action. The Licensee will bear all expenses of any action brought by the Licensee under this Article, including attorney fees and costs of both Parties in the defense of any declaratory judgment actions or counter-claims brought by the infringer. If legal action is brought by the Licensee, the University is entitled to twenty-five percent (25%) of any damage recovery based on lost profits of the Licensee or a reasonable royalty. Legal action brought jointly by the University and the Parties shall equally share Licensee and fully participated in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall both will be at the exclusive option and joint expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, Parties and all recoveries shall belong exclusively will be shared jointly by them in proportion to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings the share of expenses paid by each.
14.4 Each Party will cooperate with the other in proceedings instituted hereunder, provided expenses arc borne by the Party bringing suit. Litigation will be controlled by the Party bringing suit, except that the University will control the litigation if brought jointly. The University may be represented by its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party choice of counsel in any action taken suit brought by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement ProceedingsLicensee.
5.4. B&N shall incur no liability to BNED under 14.5 Neither Party will settle or compromise any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of suit without the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNEDother Party's written consent.
Appears in 2 contracts
Sources: Exclusive Patent License Agreement (Caldera Pharmaceuticals Inc), Exclusive Patent License Agreement (Caldera Pharmaceuticals Inc)
Infringement. 5.1. In (a) Each party shall promptly report in writing to the event that, other party during the Term term of this Agreement, BNED learns Agreement any known infringement or suspected infringement of any infringement Product, Cepheid Intellectual Property or threatened infringement of the Licensed Marks, or dilution Cepheid Products by a third party of which it becomes aware, and shall provide the other party with all available evidence supporting said infringement or suspected infringement.
(b) Except as provided in paragraph (d), the U.S. Corporation shall have the right to initiate an infringement or other appropriate suit against any third party who at any time has infringed, or is suspected of infringing, any Product, Cepheid Intellectual Property or Cepheid Products. The Corporation shall give Cepheid sufficient advance notice of its intent to file said suit and the reasons therefor, and shall provide Cepheid with respect an opportunity to make suggestions and comments regarding such suit. The Corporation shall keep Cepheid properly informed, and shall from time to time consult with Cepheid, regarding the status of any such suit.
(c) The Corporation shall have the sole and exclusive right to select counsel for any suit referred to in paragraph (b) and shall pay all expenses of the suit, including without limitation attorney's fees and court costs. If necessary, Cepheid shall join as a party to the Licensed Marks, BNED suit but shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated be under no obligation to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect participate except to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by extent that such participation is required as the result of being a third named party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings suit. Cepheid shall offer reasonable assistance to the Corporation in connection therewith at no charge to the Corporation except for reimbursement of reasonable out-of-pocket expenses (collectively, “Enforcement Proceedings”not including salaries of Cepheid personnel) or provide incurred in rendering such assistance. Cepheid shall have the right to participate and be represented in any such suit by its own counsel at its own expense. The Corporation shall not settle any such suit involving rights of IDI without obtaining the prior written consent to the initiation of Enforcement Proceedings by BNED (Cepheid, which consent shall not be unreasonably withheld, conditioned or delayed if B&N unreasonably.
(d) In the event that the Corporation elects not to initiate Enforcement Proceedingsan infringement or other appropriate suit pursuant to paragraph (b). Any , the Corporation shall promptly advise Cepheid of its intent not to initiate such Enforcement Proceedings brought by B&N at BNED’s request suit, and Cepheid shall be have the right, at the expense of BNEDCepheid, of initiating an infringement or other appropriate suit against any third party who at any time has infringed, or is suspected of infringing, any Product, Cepheid Intellectual Property or Cepheid Products. In exercising its rights pursuant to this paragraph (d), Cepheid shall have the sole and exclusive right to select counsel and shall pay all expenses of the suit, including without limitation, attorney's fees and court costs, and the Parties shall equally share in the recovery of damages be entitled to receive and retain any damages, royalties, settlement fees or compensation resulting from such Enforcement Proceedingsother consideration. If B&N initiates Enforcement Proceedings and BNED declines to bear necessary, the expense, any resulting damages or compensation Corporation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if to the suit but shall be under no obligation to participate except to the extent that such joinder participation is required in order to confer jurisdiction in as a result of being a named party of the jurisdiction in which the Enforcement Proceedings are to be broughtsuit. If B&N brings any such Enforcement Proceedings that are not at BNED’s At Cepheid's request, and BNED does the Corporation shall offer reasonable assistance to Cepheid at no charge to Cepheid except for reimbursement of reasonable out-of-pocket expenses (not consent including salaries of the Corporation personnel) incurred in rendering such assistance. The Corporation shall have the right to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction be represented in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution suit by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or counsel at its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingsown expense.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: License and Supply Agreement (Cepheid), License and Supply Agreement (Cepheid)
Infringement. 5.1In the event of any infringement of the ------------ Intellectual Property Collateral by other persons, or in the event of any other conduct by other persons to the detriment of the Intellectual Property Collateral, which has constituted or in the future could reasonably be expected to constitute a Material Adverse Effect on the business and operations of any of the Debtors, the Debtors shall promptly notify the Agent Bank in writing of such infringement or other conduct and the full nature, extent, evidence and circumstances of such infringement or other conduct known to any of the Debtors. The Debtors shall take all reasonable steps to protect their interests and rights in such Intellectual Property Collateral and shall provide the Agent Bank written notice of all material occurrences and developments with respect to such Intellectual Property Collateral. If reasonably requested by the Agent Bank, the Debtors shall send to the person committing such infringement or engaging in such other conduct, no later than thirty (30) calendar days after such request, a letter, in form and substance reasonably satisfactory to the Agent Bank, by personal delivery or by U.S. first-class registered or certified mail (return receipt requested) demanding that such person cease and desist forthwith from committing such infringement or engaging in such other conduct. In the event that (a) within forty-five (45) calendar days thereafter, good faith negotiations between the Debtors and such other person have not commenced regarding the cessation of such infringement or other conduct or (b) negotiations have commenced within such period, but thereafter cease to be carried on in good faith; the Debtors shall, at the request of Agent Bank, promptly bring and diligently and vigorously maintain an action to stop such infringement and other conduct (to the extent that, during and so long as, such diligent and vigorous maintenance of an action is reasonable in light of the Term materiality of such infringement or other conduct and in light of the materiality of the item(s) of Intellectual Property Collateral which are subject to such infringement or other action). The Debtors shall diligently and vigorously maintain such action until a decision is obtained from which no review or appeal can or has been taken or until such action is resolved otherwise in a manner reasonably satisfactory to the Agent Bank. If any Debtor requests Agent Bank to approve an action as reasonable and Agent Bank does not object thereto within ten (10) days after receipt of such request, specifying the reasons for such objection, the same shall be deemed approved. If reasonably requested by the Agent Bank, subject to other provisions of this Agreement, BNED learns the Debtors shall assume and continue, at their own cost and expense, through counsel reasonably acceptable to the Agent Bank, full and complete responsibility for the prosecution of any infringement of (or threatened infringement other conduct materially and adversely affecting) the Intellectual Property Collateral and otherwise defend and take all reasonable steps to assure the grant, validity and enforceability of the Licensed Marks, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement ProceedingsIntellectual Property Collateral, whether at BNED’s request by judicial or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingsnonjudicial means.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Trademark Security Agreement (Hammond Residential LLC), Trademark Security Agreement (Hammond Residential LLC)
Infringement. 5.1(a) Each Licensee will promptly inform Licensor in writing of any potential or actual infringement, of which it has knowledge, of the Licensor Technology or Selected Non-Ethanol Technology (as applicable to a Licensee), by one or more third parties and will provide Licensor with readily-available information relating to such infringement. In the event that, during the Term of this Agreement, BNED learns Licensor becomes aware of any infringement potential or threatened actual infringement of the Licensed Marks, Licensor Technology or dilution by Selected Non-Ethanol Technology (as applicable to a third party Licensee) in the U.S. with respect Territory, Licensor will promptly inform the applicable Licensees thereof in writing. After any such aforementioned notice, the applicable parties will promptly confer to attempt to determine, within 45 days after such notice (the Conference Period), a mutually agreed course of action.
(b) In the event all the applicable parties mutually agree to pursue a course of action other than legal proceedings, such parties will share equally in the costs of such action, and any recovery will be distributed to the Licensed Marksparties first to recover their costs and then divided among the parties as follows: [***]% to Licensor and [***]% (in the aggregate) to the applicable Licensee(s).
(c) In the event all the applicable parties mutually agree to pursue legal proceedings, BNED shall promptly such parties will share equally in the costs of such proceedings, and any recovery will be distributed to the parties first to recover their costs and then divided among the parties as follows: [***]% to Licensor and [***]% (in the aggregate) to the applicable Licensee(s).
(d) If the parties are unable to mutually agree upon a course of action, then:
(i) Licensor will have the right and option, but not the obligation, to bring and prosecute an infringement action, with counsel of its own choosing, to enforce its rights therein. If Licensor determines not to pursue such action, Licensor will so notify B&N the applicable Licensee(s) within 45 days after the expiration or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use termination of the Licensed Marks by third parties Conference Period, Licensor will notify the applicable Licensee(s) of its decision whether to bring and prosecute an infringement action. In the event Licensor fails to so notify, Licensor will be deemed to have elected not to exercise its option under this Section 7.3(d)(i). Licensor will keep the applicable Licensee(s) informed as to any such action which it has not granted a sub-license undertakes. The costs and expenses incurred pursuant to this Section 7.3(d)(i) (including fees of attorneys and other professionals) will be borne by Licensor. The applicable Licensee(s) will cooperate with respect Licensor in the prosecution of such action to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringementextent reasonably necessary, or dilution by a third party with respect to the Exclusively Licensed Marksincluding, BNED may request that B&N bring litigationwithout limitation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be being joined as a party if under F.R.C.P. 19 or other equivalent rule or law. Any award obtained in such joinder is required in order an infringement action (whether by way of settlement or otherwise) will be paid first to confer jurisdiction in Licensor and the jurisdiction in which applicable Licensee(s) to the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s requestextent of the expenses incurred by them, and BNED does not consent then will be paid to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be broughtLicensor or its licensors, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, as applicable.
(ii) shall In the event Licensor elects not to exercise its option under Section 7.3(d)(i), then the applicable Licensee(s) will have exclusive control the right and option, but not the obligation, to bring and prosecute an infringement action with counsel of its/their own choosing. The applicable Licensee(s) will keep Licensor informed as to the Enforcement Proceedings, (iii) any decision to maintain or settle prosecution of any such Enforcement Proceedings shall action or of its determination not to pursue such action. The costs and expenses of any action instituted pursuant to this Section 7.3(d)(ii) (including fees of attorneys and other professionals) will be at borne by the exclusive option and expense applicable Licensee(s). Licensor will cooperate with the applicable Licensee(s) in the prosecution of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject such action to the following: (x) B&N shall not have any obligation to be extent reasonably necessary, including, without limitation, being joined as a party plaintiff under F.R.C.P. 19 or other equivalent rule or law. Any award obtained in any Enforcement Proceedings without its prior written consent, which may such an infringement action (whether by way of settlement or otherwise) will be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related paid first to the bringing applicable Licensee(s) and Licensor to the extent of such Enforcement Proceedingsthe expenses incurred by them, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect then will be paid to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined applicable Licensee(s) as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingsagreed between them.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Joint Development and Technology Transfer Agreement (Diversa Corp), Joint Development and Technology Transfer Agreement (Diversa Corp)
Infringement. 5.1LICENSEE shall notify LICENSOR promptly of any actual or threatened infringements, imitations, or unauthorized use of the Marks by third parties of which LICENSEE becomes aware. LICENSOR shall have the sole right, at its expense, to bring any action on account of any such infringements, imitations or unauthorized use, and LICENSEE shall cooperate with LICENSOR, at LICENSOR’S expense, as LICENSOR may reasonably request, in connection with any such action brought by LICENSOR. LICENSOR shall retain any and all damages, settlement and/or compensation paid in connection with any such action brought by LICENSOR. In no event shall LICENSOR be responsible to LICENSEE for any damages that may result from said infringement(s), subject to Section 10. 1 hereof (Indemnification). Notwithstanding anything to the contrary contained herein, in the event LICENSOR fails or refuses to commence an action on account of any infringements, imitations or unauthorized use of the Marks, LICENSEE shall have the right to do so after advance written notice of its intent to LICENSOR. In such event, LICENSEE shall pay all costs and expenses incurred by it in connection with such action, and shall retain any and all damages, settlement and/or compensation paid in connection with any such action brought by LICENSEE. Notwithstanding the preceding, in no event will LICENSEE enter into any settlement without the express prior written approval of LICENSOR, which approval it may grant or withhold in its sole discretion. No costs or expenses incurred by LICENSEE in any such action shall be deducted from or offset against the Royalties otherwise do LICENSOR. In the event thatLICENSEE requests that LICENSOR cooperate in any such action, during the Term of this Agreement, BNED learns of any infringement or threatened infringement of the Licensed Marks, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be LICENSOR will do so at the expense of BNED, sole cost and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s requestcounsel of LICENSOR’S own choosing, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement ProceedingsLICENSEE. In addition, if B&N elects no event shall LICENSOR be responsible to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including LICENSEE for any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, damages that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.result from said infringement(s),
Appears in 2 contracts
Sources: Trademark License Agreement (Fashion House Holdings Inc), Trademark License Agreement (Fashion House Holdings Inc)
Infringement. 5.1. In (a) Each Party shall report in writing to the event that, other Party during the Term term of this Agreement, BNED learns Agreement any known or suspected infringement of any Patent Rights owned by a Party, or unauthorized use or misappropriation of any Know-How owned by a Party, and will provide the other Party with all available evidence supporting such infringement or threatened unauthorized use or misappropriation.
(b) PHARMAENGINE shall have the right to initiate an infringement of or other appropriate suit anywhere in the Licensed MarksTerritory against any third party who at any time has infringed, or dilution by a third party is suspected of infringing, any of HERMES Patent Rights or jointly made Patent Right in this Article 9 during the U.S. with respect term of this Agreement applicable to the Licensed MarksProducts in the Territory, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor has used without proper authorization all or police unauthorized use any portion of the Licensed Marks by third parties to which it has not granted a subKnow-license with respect How of HERMES applicable to the Exclusively Licensed MarksProducts in the Territory. HERMES shall cooperate fully with and provide all necessary assistance to PHARMAENGINE in the proceeding of such claim, at the expense of PHARMAENGINE. HERMES may initiate such claim at its sole discretion only if PHARMAENGINE fails to initiate such claim within [**] days after receipt of a written request from HERMES which stating the infringer (or suspected infringer) and the relevant fact.
5.2. With respect (c) HERMES shall have the right to any initiate an infringement or threatened infringementother appropriate suit anywhere in the Retained Territory against any third party who at any time has infringed, or dilution by a third party with respect is suspected of infringing, any of PHARMAENGINE Patent Rights or jointly made Patent Right in this Article 9 during the term of this Agreement applicable to the Exclusively Licensed MarksProducts in the Retained Territory, BNED or has used without proper authorization all or any portion of the Know-How of PHARMAENGINE applicable to the Licensed Products in the Retained Territory. PHARMAENGINE shall cooperate fully with and provide all necessary assistance to HERMES in the proceeding of such claim, at the expense of HERMES. PHARMAENGINE may initiate such claim at its sole discretion only if HERMES fails to initiate such claim within [**] days after receipt of a written request that B&N bring litigation, opposition, cancellation from PHARMAENGINE which stating the infringer (or related legal proceedings suspected infringer) and the relevant fact.
(collectively, “Enforcement Proceedings”d) Neither Party shall settle any claims or provide suits involving Patent Rights of the other Party without obtaining the prior written consent to of the initiation of Enforcement Proceedings by BNED (other Party, which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). held.
(e) Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting realized from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any pursuing an infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ claim against a third party if such joinder is required in order shall be distributed and allocated (i) first to confer jurisdiction in reimburse [**] percents ([**]%) of the jurisdiction in which [**] costs incurred to pursue the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedingsinfringement action, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in (ii) the jurisdiction in which remainder shall be distributed and allocated between the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related Parties [**] to the bringing of such Enforcement Proceedingsdamages caused to each Party by the infringement.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: License Agreement (Merrimack Pharmaceuticals Inc), License Agreement (Merrimack Pharmaceuticals Inc)
Infringement. 5.1. In AMICUS shall have the event that, during first right to enforce any patent within PATENT RIGHTS in the Term of this Agreement, BNED learns of FIELD against any infringement or threatened alleged infringement of the Licensed Marksthereof, or dilution by a third party in the U.S. with respect and shall at all times keep UMBC informed as to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars status thereof. Notwithstanding AMICUS may, in its sole judgment and at its own expense, institute suit against any such infringer or alleged infringer and control, settle, and defend such suit in a manner consistent with the foregoingterms and provisions hereof and recover, BNED is not obligated for its account subject to monitor Paragraph 4.4, any damages, awards or police unauthorized use of the Licensed Marks by third parties settlements resulting therefrom. This right to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any ▇▇▇ for infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned used in an arbitrary or delayed if B&N elects not to initiate Enforcement Proceedings)capricious manner. Any such Enforcement Proceedings brought by B&N at BNED’s request UMBC shall be at the expense of BNED, and the Parties shall equally share reasonably cooperate in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expenselitigation, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be being joined as a party plaintiff if AMICUS' attorneys, in their sole discretion, determine that UMBC is necessary to any [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. AMICUS THERAPEUTICS, INC. Exclusive License Agreement such litigation, at AMICUS' expense using AMICUS' counsel of choice. UMBC shall have the right to retain counsel of its own selection, at UMBC's expense, in any Enforcement Proceedings without its prior written consentlitigation instituted by AMICUS pursuant to this Paragraph 4.3, which may provided that AMICUS' counsel shall be granted or withheld lead counsel. If AMICUS elects not to enforce any patent within the PATENT RIGHTS, then it shall so notify UMBC in writing within ninety (90) days of receiving notice that an infringement exists, and UMBC may, in its sole discretionjudgment and at its own expense, unless such joinder is required in order take steps to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be broughtenforce any patent and control, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingssettle, and (z) BNED defend such suit in a manner consistent with the terms and provisions hereof, and recover, for its own account, any damages, awards or settlements resulting therefrom. UMBC shall not take reasonably consider any action, or make comments from AMICUS regarding any admissions, settlement that may affect the validity of impair AMICUS' rights under this Agreement in any registration of the Exclusively Licensed Marks, without the way prior written consent of B&N.
5.3to UMBC entering into such settlement. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N AMICUS shall have exclusive control the right to participate in such litigation and, if it elects to do so, will retain counsel of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bringits own selection and at its expense, maintain or settle any such Enforcement Proceedings provided that UMBC's counsel shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingslead counsel.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: License Agreement (Amicus Therapeutics Inc), License Agreement (Amicus Therapeutics Inc)
Infringement. 5.1. In the event that, during the Term of this Agreement, BNED learns of any infringement or threatened infringement of the Licensed Marks, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED (a) The Vendor agrees that it shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED harmless, at its own expense, all suits and claims against the Owner for infringement or violation of any patent, trademark, copyright, trade secret or other intellectual property rights of any third party enforceable in the United States or in any other territory where Vendor has approved the deployment or use of Products under this Contract (collectively, "Intellectual Property Rights"), covering, or alleged to cover, the Products or any component thereof. The Vendor agrees that it shall pay all lossessums, costsincluding without limitation, liabilities reasonable attorneys' fees and expenses other costs incurred at Vendor's written request or authorization, which, in defense of, by final judgment or decree, or in settlement of any suit or claim to which the Vendor agrees, may be assessed against, or incurred by, the Owner on account of such infringement or violation, provided that the Owner shall cooperate in all reasonable respects with the Vendor and its attorneys in the investigation, trial and defense of such lawsuit or action and any appeal arising out therefrom; provided, however, that the Owner may, at its own cost, participate in the investigation, trial and defense of 37 52 such lawsuit or related action and any appeal arising therefrom. The parties shall cooperate with each other in any notifications to insurers. If a claim for Losses (a "Claim") is to be made by a party entitled to indemnification hereunder against the Vendor, the party claiming such indemnification shall give written notice (a "Claim Notice") to the bringing Vendor as soon as practicable after the party entitled to indemnification becomes aware of such Enforcement Proceedingsany fact, condition or event which may give rise to Losses for which indemnification may be sought under this Agreement, provided, however, no delay on the part of the Owner in notifying the Vendor shall relieve the Vendor from any obligation hereunder unless (and then solely to the extent) the Vendor is thereby materially prejudiced. In additionIf any lawsuit or enforcement action is filed against any party entitled to the benefit of indemnity hereunder, written notice thereof shall be given to the Vendor as promptly as practicable (and in any event within twenty (20) calendar days after the service of the citation or summons). The Vendor shall be entitled, if B&N it so elects to: (i) defend such lawsuit or action; (ii) employ and engage attorneys of its own choice to bring Enforcement Proceedingshandle and defend the same, whether at BNED’s request or otherwisethe Vendor's cost, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain risk and expense; and (iii) compromise or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s Claim, which compromise or settlement shall be made only with the written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control consent of the Enforcement Proceedings, Owner (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may not be granted or withheld in its sole discretionunreasonably withheld), unless such joinder is required in order to confer jurisdiction in compromise or settlement includes an unconditional release of any claims against the jurisdiction Owner in which event such written consent of the Enforcement Proceedings are Owner shall not be required. If the Vendor fails to be broughtassume the defense of such Claim within twenty (20) calendar days after receipt of the Claim Notice, the Owner against which such Claim has been asserted will (yupon delivering notice to such effect to the Vendor) if BNED brings have the right to undertake, at the Vendor's cost and expense, the defense, compromise or settlement of such Claim on behalf of and for the account and risk of the Vendor. In the event the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such Enforcement Proceedings defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and B&N is joined in accordance with this Agreement and for any final judgment (subject to such Enforcement Proceedings without its consent solely to confer jurisdiction in any right of appeal), and the jurisdiction in which the Enforcement Proceedings are to be brought, BNED Vendor agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities the Owner from and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take against any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory Losses by reason of B&N’s failure such settlement or refusal judgment.
(b) The Vendor's obligation under this subsection shall not extend to prosecute alleged infringements or otherwise commence Enforcement Proceedings violations that arise because the Products provided by the Vendor are used in combination with respect to, any alleged infringement or dilution of the Licensed Marks other products furnished by third partiesparties and where any such combination was not installed, nor recommended or approved by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNEDthe Vendor.
Appears in 2 contracts
Sources: Memorandum of Agreement (Leap Wireless International Inc), Memorandum of Agreement (Leap Wireless International Inc)
Infringement. 5.1. 14.1 In the event that, during the Term that either party shall learn of this Agreement, BNED learns an infringement of any PATENT or TRADEMARK (including any act of unfair competition), that party shall call the other party's attention thereto in writing and shall provide such other party with reasonable evidence of such infringement. Both parties shall use their best efforts in cooperation with each other to terminate such infringement or threatened without litigation. If the efforts of the parties are not successful in abating the infringement within sixty (60) days after the infringer has been formally notified of the infringement, LICENSEE shall have the right to:
14.1.1 Commence suit on LICENSEE's own account for infringement of the Licensed Marksits exclusive rights, or dilution by a third party subject to LICENSOR's right to fully participate in the U.S. such suit, at its own cost, in order to protect its rights;
14.1.2 Join with respect LICENSOR in such suit if LICENSOR brings suit pursuant to the Licensed Marks, BNED Section 14.2 below or;
14.1.3 Refuse to bring such suit; and LICENSEE shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated give notice in writing to monitor or police unauthorized use LICENSOR within thirty (30) days after said sixty (60) day period of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed MarksSection 14.1.
5.2. With respect to any 14.2 LICENSOR may bring suit for PATENT or TRADEMARK infringement or threatened infringementon its own account, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N LICENSEE elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request commence or join in any suit.
14.3 Such legal action as is decided upon shall be at the expense of BNEDthe party bringing suit, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation all recoveries recovered thereby shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction party, provided, however, that legal action brought jointly by LICENSOR and LICENSEE and fully participated in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings both shall be at the exclusive option and joint expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&Nparties, and all recoveries up to the amount of such expense, shall belong exclusively be shared jointly by them in proportion to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own namethe share of expense paid by each party, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should recoveries include damages or royalties in excess of expenses, the amount in excess of expenses shall be commencedshared by the parties on a proportional basis as to their actual losses (for LICENSEE, including lost gross profit; for LICENSOR, lost royalties). *CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR REDACTED PORTIONS 11
14.4 Each party agrees to join or be joined cooperate, in all reasonable respects as a requested by the other party in any action taken litigation proceedings instituted hereunder and, upon request of the party bringing suit, the other party shall make available to the party bringing suit all relevant records, papers, information, samples, specimens, and the like which may be relevant and in its possession. The party bringing suit and incurring the majority of the associated costs shall have the right to control such litigation.
14.5 In the event the making, using or selling of PRODUCTS is determined by B&N a court of competent jurisdiction to enforce its rights infringe one or more claims of a patent(s) owned by a third party, no royalty payments shall be due LICENSOR from the date such lawsuit is filed with respect to NET SALES in the Nonterritory where such third party's patent rights are applicable. All royalty payments shall be placed in an interest-Exclusively Licensed ▇▇▇▇ against bearing escrow account from the date that the lawsuit is filed and maintained therein until final judgment. Provided, however, that if such infringement results in a license to LICENSEE which enables LICENSEE to continue making, using, or selling such PRODUCT in such part of the territory, then the royalty payments due to LICENSOR with respect to NET SALES in such territory following the date such lawsuit is filed or such settlement is reached shall be reduced by the damages and/or royalty payments paid or to be paid to such third party and the royalty payments to LICENSOR shall commence only after the full recovery by LICENSEE of its reasonable costs and expenses in defending such suit. In no event shall LICENSOR's earned royalty be reduced to less than [*] due to earned royalty payments made to third parties by LICENSEE. Should LICENSEE, be required to make additional payments to a third party if such joinder is required under this Section 14.5, the minimum royalty requirements provided for in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingssection 3.3 shall not longer apply.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: License Agreement (Steri Oss Inc), License Agreement (Steri Oss Inc)
Infringement. 5.18.1. METASYN shall inform GENERAL promptly in writing of any alleged infringement of PATENT RIGHTS by a third party of which it shall have knowledge and provide any available evidence of infringement.
8.2. GENERAL shall have the right, but shall not be obligated, to prosecute at its own expense any such infringements of PATENT RIGHTS and, in furtherance of such rights, METASYN hereby agrees that GENERAL may join METASYN as a party plaintiff in any such suit, without expense to METASYN. The total cost of any such infringement action commenced or defended solely by GENERAL shall be borne by GENERAL. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of METASYN which consent shall not unreasonably be withheld. Any recovery or damages for past infringement derived from such action shall first be used to reimburse GENERAL for all expenses and legal fees connected with such action. GENERAL shall then keep any recovery or damages equal to the amount of royalties not received by GENERAL. Any recovery or damages then remaining shall be used to compensate METASYN for its lost profits or a reasonable royalty on the sales of the infringer, whichever measure of damages the court shall have applied. In the event thatthe damages remaining after the deductions of expenses and legal fees are not sufficient to cover the allocations to both GENERAL and METASYN set forth in the preceding two sentences, during the Term of this Agreement, BNED learns remaining damages will be allocated between GENERAL and METASYN on a pro rata basis. In the event recovery or damages still remain after the above-mentioned allocations the remainder shall be divided as follows: [ ]* to GENERAL and the remaining [ ]* to METASYN.
8.3. If within six months after having been notified of any alleged infringement GENERAL shall have been unsuccessful in causing the alleged infringer to desist and shall *Confidential information omitted and filed with the Commission. not have brought or threatened shall not be diligently prosecuting an infringement action, or if GENERAL shall notify METASYN at any time prior thereto of its intention not to bring suit against any alleged infringer, then, in those events only, METASYN may, for such purposes, use the name of GENERAL as party plaintiff, and GENERAL shall cooperate with METASYN in such action at METASYN's expense. No settlement, consent judgment or other voluntary final disposition of the Licensed Markssuit which invalidates or restricts the claims of such PATENT RIGHTS may be entered into without the consent of GENERAL, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld. METASYN shall indemnify GENERAL against any order for payment that may be made against GENERAL in such proceedings.
8.4. In the event that any action is brought against METASYN for infringement of any patent or for wrongful use of any proprietary information of any third party arising out of METASYN's exercise of any PATENT RIGHTS licensed under this Agreement, conditioned or delayed if B&N elects not GENERAL agrees to initiate Enforcement Proceedings)cooperate with METASYN, at METASYN's expense, in connection with METASYN's defense of such action.
8.5. In the event that METASYN shall undertake the enforcement and/or defense of the PATENT RIGHTS by litigation, METASYN may withhold up to [ ]* of the royalties and sublicense revenues otherwise due GENERAL hereunder (after any reduction pursuant to Paragraph 5.4) after notification of infringement and apply the same toward reimbursement of its expenses, including reasonable attorneys' fees, in connection therewith. In order for such royalties to be continued to be withheld, METASYN must continuously and diligently pursue such enforcement and/or defense. GENERAL may retain counsel at its expense to represent it in such suit. Any recovery of damages by METASYN for any such Enforcement Proceedings brought by B&N at BNED’s request suit shall be at applied first in satisfaction of any unreimbursed expenses and legal fees of METASYN and then the expense expenses and legal fees of BNEDGENERAL, if any, relating to the suit. Next the remaining damages shall be applied toward compensation for METASYN's lost profits or a reasonable royalty on the sales of the infringer, whichever measure of damages the court shall have applied, and the Parties shall equally share reimbursement to GENERAL of royalties withheld by METASYN pursuant to this Paragraph 7.5 and royalties not received by GENERAL from sales by the infringer. In the event damages remaining after the deduction of any unreimbursed expenses and legal fees of METASYN or GENERAL relating to the suit are not sufficient to cover the allocations to METASYN and GENERAL set forth in the recovery preceding sentence, the damages remaining after reimbursement of expenses and legal fees shall be allocated to METASYN and GENERAL on a pro rata basis. Any damages or compensation resulting from such Enforcement Proceedingsrecovery remaining after the allocations to METASYN and GENERAL of lost profits or unrecovered royalties as previously set forth shall be divided as follows: [ ]* to METASYN and [ ]* to GENERAL.
8.6. If B&N initiates Enforcement Proceedings and BNED declines to bear In the expenseevent that a declaratory judgment action alleging invalidity or non-infringement of any of the PATENT RIGHTS shall be brought against METASYN, any resulting damages or compensation GENERAL as its option, shall belong solely to B&N. In any such Enforcement Proceedingshave the right, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing within thirty (30) days after commencement of such Enforcement Proceedingsaction to intervene and take over the sole defense of the action at its own expense.
8.7. In additionthe event one party undertakes the enforcement and/or defense of any PATENT RIGHTS hereunder, if B&N elects the other party shall use reasonable efforts to bring Enforcement Proceedings, whether at BNED’s request fully cooperate with and shall supply all assistance reasonably requested by the party initiating or otherwise, B&N shall have exclusive control of carrying *Confidential information omitted and filed with the Enforcement Proceedings, including any decision to maintain or settle Commission. out such proceedings. If B&N does not elect The party that institutes any proceeding to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) enforce or defend PATENT RIGHTS shall have exclusive sole control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not proceeding and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in bear the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a reasonable expenses incurred by said other party in any action taken by B&N providing such assistance and cooperation as is requested pursuant to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingsthis Section.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: License Agreement (Epix Medical Inc), License Agreement (Epix Medical Inc)
Infringement. 5.1. In the event that, during the Term of this Agreement, BNED learns of any infringement or threatened infringement of the Licensed Marks, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N MPOWER agrees to defend, indemnify and hold Customer harmless BNED for against any and all lossesclaims that any MPOWER Product infringes a U.S. Letter Patent, costscopyright, liabilities and expenses arising out trade secret or the proprietary rights of or related to the bringing of such Enforcement Proceedings. In additionothers, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N provided that MPOWER shall have exclusive received timely written notice of any such claim and that MPOWER shall have sole control of the Enforcement Proceedingsdefense of such claim and all negotiations for the settlement or compromise of such claim. As of the date first written above, including MPOWER warrants that it is not aware of any decision to maintain infringement, and has not been notified by any third party that it may be infringing, any U. S. Letter Patent, copyright, trade secret or settle such proceedingsthe proprietary rights of others. If B&N does not elect use of an MPOWER Product by Customer is enjoined, or becomes, or, in MPOWER's sole opinion, is likely to initiate Enforcement Proceedings after receiving BNED’s written request but consents become, the subject of a claim of infringement, MPOWER will, at its option and expense, either:
1. procure for Customer the right to continue using the MPOWER Product in question; or
2. replace or modify the same so that it is functionally equivalent [i.e. the MPOWER Product will achieve the same or similar business logic result] (or contains more functionality) and is non-infringing. Notwithstanding the foregoing, if MPOWER determines that neither of the alternatives set forth above is reasonably available, MPOWER will refund to Customer any un-amortized portion of the infringing MPOWER Product's license fee which has then been paid by Customer. Amortization shall be based upon a seven (7)-year life of the infringing MPOWER Product, beginning on the date the infringing MPOWER Product was licensed by Customer from MPOWER. Should such refund occur, Customer agrees to return the infringing MPOWER Product to MPOWER. Should any refund described above occur, the license for the infringing MPOWER Product shall be terminated and MPOWER, its affiliates, subsidiaries, assigns and successor corporations shall be released from any and all liability arising from any and all claims, losses, liabilities, damages, costs or deficiencies which are then-existing or which may arise in the future with regard to such infringing MPOWER Product(s) for which MPOWER has refunded fees pursuant to this Section X. Notwithstanding anything contained herein to the initiation of Enforcement Proceedings by BNEDcontrary, then (i) BNED may initiate such proceedings, (ii) MPOWER shall have exclusive control no liability for any loss, cost, claim or expense caused by:
1. alteration of any MPOWER Product provided hereunder by any party other than MPOWER;
2. any loss, expense or liability resulting from any infringement which is a consequence of MPOWER's compliance with designs or code submitted to MPOWER by Customer;
3. the use of any MPOWER Product in combination with products not licensed to customer by MPOWER;
4. continuation of the Enforcement Proceedingsallegedly infringing activity by Customer after Customer is notified in writing thereof and after the conclusion of a reasonable grace period afforded Customer in the notice to migrate from the infringing activity to an alternate solution; or
5. Customer's use of an MPOWER Product other than in compliance with the terms and conditions of this Agreement. Notwithstanding the foregoing, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N MPOWER shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees obligated to defend, indemnify or hold Customer harmless from and hold harmless B&N for all lossesagainst any claim, costssuit proceeding or allegation asserted by a parent, liabilities subsidiary or affiliate of Customer. The foregoing remedy set forth in this Section X represents the exclusive remedy of Customer and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect MPOWER's sole liability with regard to any infringement or threatened infringement, or dilution by a third party with respect to claim that an MPOWER Product infringes the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control rights of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingsothers.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Master Agreement (Xcarenet Inc), Master Agreement (Xcarenet Inc)
Infringement. 5.1. In the event that, during the Term of this Agreement, BNED learns A. PPG shall promptly inform Endo of any suspected infringement of any of the PPG Patents or Joint Technology Patents or the infringement or threatened infringement misappropriation of the Licensed Marks, TIMERx Production Technology or dilution Joint Technology by a third party party, to the extent such infringement or misappropriation involves the manufacture, use or sale of a Designated Product or a substitutable or directly competitive product in the U.S. Territory ("Covered Infringement"). Endo shall promptly inform PPG of any suspected infringement of any of the PPG Patents or Joint Technology Patents or infringement or misappropriation of the TIMERx Production Technology or Joint Technology of which Endo is aware, whether or not the same involves a Covered Infringement.
B. If the suspected infringement or misappropriation does not involve a Covered Infringement, PPG may take, or refrain from taking, any action it chooses, with or without notice to Endo, and Endo shall have no right to take any action with respect to such suspected infringement or misappropriation, nor to any recoveries with respect thereto. If the Licensed Markssuspected infringement or misappropriation involves a Covered Infringement, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoingPPG shall, BNED is not obligated to monitor or police unauthorized use within 120 days of the Licensed Marks by first notice referred to in Section 11.1, inform Endo whether or not PPG intends to institute suit against such third parties to which it has not granted a sub-license party with respect to a Covered Infringement. Endo will not take any steps toward instituting suit against any third party involving a Covered Infringement until PPG has informed Endo of its intention pursuant to the Exclusively Licensed Marksprevious sentence.
5.2. With respect C. If PPG notifies Endo that it intends to any infringement or threatened infringement, or dilution by institute suit against a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNEDa Covered Infringement, and the Parties Endo does not agree to join in such suit as provided in Section 11.4, PPG may bring such suit on its own and shall equally share in such event bear all costs of, and shall exercise all control over, such suit. PPG may, at its expense, bring such action in the recovery name of damages Endo and/or cause Endo to be joined in the suit as a plaintiff. Recoveries, if any, whether by judgment, award, decree or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expensesettlement, any resulting damages or compensation shall belong solely to B&N. In any PPG.
D. If PPG notifies Endo that it desires to institute suit against such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to a Covered Infringement, and Endo notifies PPG within 30 days after receipt of such notice that Endo desires to institute suit jointly, the Non-Exclusively Licensed ▇▇▇▇, B&N suit shall have exclusive control be brought jointly in the names of any Enforcement Proceedings relating both parties and all costs thereof shall be borne equally to the Non-Exclusively Licensed ▇▇▇▇extent applicable to the Covered Infringement. The decision Recoveries, if any, whether by judgment, award, decree or settlement, shall (to bringthe extent attributable to the Covered Infringement), maintain after the reimbursement of each of PPG and Endo for its share of the joint costs in such action, be shared equally between PPG and Endo.
E. If PPG notifies Endo that it does not intend to institute suit against such third party with respect to a Covered Infringement, Endo may institute suit on its own. Endo shall bear all costs of, and shall exercise all control over, such suit. Recoveries, if any, whether by judgment, award, decree or settle settlement, shall belong solely to Endo; provided however that, after reimbursement of Endo for its costs in such action, any portion of such Enforcement Proceedings net recoveries which constitutes the equivalent of, or damages or payments in lieu of, a royalty measured by the defendant's sales, shall be at shared equally between PPG and Endo.
F. Should either PPG or Endo commence a suit under the exclusive option provisions of this Section 11 and expense of B&Nthereafter elect to abandon the same, and all recoveries it shall belong exclusively give timely notice to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own namethe other party, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commencedwho may, including to join or if it so desires, be joined as a party in any action taken by B&N to enforce its rights plaintiff in the Non-Exclusively Licensed ▇▇▇▇ against a third party suit (or continue as such if such joinder it is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, already one) and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing continue prosecution of such Enforcement Proceedingssuit, provided, however, that the sharing of expenses and any recovery of such suit shall be as may be determined for that situation by Committee Action.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Strategic Alliance Agreement (Penwest Pharmaceuticals Co), Strategic Alliance Agreement (Penwest Pharmaceuticals Co)
Infringement. 5.1. In A. Licensee and CMCC shall each inform the event that, during other promptly in writing of any alleged infringement by a third party of the Patent Rights in the Field of Use within the scope of this Agreement and of any available evidence thereof.
B. During the Term of this Agreement, BNED learns CMCC shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of any Patent Right and, in furtherance of such right, Licensee hereby agrees that CMCC may include Licensee as a party plaintiff in any such suit, without expense to Licensee. Prior to instituting any such suit, CMCC shall give reasonable prior written notice thereof to Licensee, and the parties shall discuss in good faith and use reasonable efforts to agree upon an appropriate litigation strategy. The total cost of any such infringement action commenced or threatened infringement defended solely by CMCC shall be borne by CMCC. Licensee shall have the right to participate in any such action, at its own expense, with counsel of its own choosing. Any recovery of damages by CMCC for such suit shall be applied first in satisfaction of any fees and expenses of CMCC and Licensee hereunder and the balance remaining from any such recovery shall be *. No settlement, consent judgment or voluntary final disposition of the Licensed Marks, or dilution by a third party in suit may be entered into without the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (Licensee, which consent shall not be unreasonably withheldwithheld or delayed.
C. If within sixty (60) days after having discovered or been notified of any alleged infringement in sufficient detail to reasonably investigate and substantiate the allegation, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N CMCC shall have exclusive control of been unsuccessful in persuading the Enforcement Proceedings, including any decision alleged infringer to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option desist and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings brought and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any be diligently prosecuting an infringement action, or make if CMCC shall notify Licensee of its intention not to bring suit * Confidential Treatment Requested 28 against any admissionsalleged infringer, then, Licensee shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Patent Rights, provided, however, that may affect such right to bring such an infringement action shall remain in effect only for so long as the validity of any registration license granted hereunder remains exclusive. No settlement, consent judgment or other voluntary final disposition of the Exclusively Licensed Marks, suit may be entered into without the prior written consent of B&N.CMCC, which consent shall not be unreasonably withheld or delayed. Licensee shall indemnify CMCC against any order for costs that may be made against CMCC in such proceedings.
5.3D. In the event Licensee shall undertake the enforcement and/or defense of the Patent Rights by litigation pursuant to Paragraph C of this Article VII, Licensee may withhold up to * of the payments otherwise thereafter due to CMCC under Article IV above and apply the same toward reimbursement of up to * of Licensee’s expenses, including reasonable attorney’s fees, in connection therewith. With respect to any infringement or threatened infringement, or dilution Any recovery of damages by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N Licensee for each such suit shall have exclusive control be applied first in satisfaction of any Enforcement Proceedings unreimbursed expenses and legal fees of CMCC and Licensee relating to the Non-Exclusively Licensed ▇▇▇▇such suit and next toward reimbursement of CMCC for any payments under Article IV past due or withheld and applied pursuant to this Article VII. The decision whether to bring, maintain or settle balance remaining from any such Enforcement Proceedings recovery shall be at the exclusive option divided equally between Licensee and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in CMCC.
E. In the event that B&N decides that a declaratory judgment action alleging invalidity or noninfringement of any of the Patent Rights shall be brought against Licensee or CMCC, the other party at its option, shall have the right, within thirty (30) days after commencement of such Enforcement Proceedings should be commencedaction, including to join or be joined as a intervene and participate in the defense of the action at its own expense with counsel of its own choosing.
F. In any infringement suit which either party in any action taken by B&N may institute to enforce the Patent Rights pursuant to this Agreement, the other party hereto shall cooperate in all reasonable respects and, to the extent reasonably possible, have its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedingsemployees testify when requested and make available relevant records, papers, information, samples, specimens, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which like.
G. Licensee shall, during the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related period that the license to the bringing Patent Rights is exclusive pursuant to this Agreement, have the sole right subject to the terms and conditions hereof to sublicense any alleged infringer for future use of the Patent Rights to the extent licensed by this Agreement. Any upfront fees paid to Licensee as part of such Enforcement Proceedings.
5.4a sublicense shall be shared between Licensee and CMCC as provided in Paragraph G(a) of Article IV. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.* Confidential Treatment Requested 29
Appears in 2 contracts
Sources: Exclusive License Agreement (Tengion Inc), Exclusive License Agreement (Tengion Inc)
Infringement. 5.1. In (a) LICENSOR agrees to enforce its patents within the event thatPATENT RIGHTS from infringement and ▇▇▇ infringers when in its sole judgement such action may be reasonably necessary, during proper and justified.
(b) Notwithstanding the Term provisions of this AgreementArticle 9(a) above, BNED learns provided LICENSEE shall have supplied LICENSOR with evidence comprising a prima facie case of any infringement or threatened infringement of the Licensed Marks, or dilution PATENT RIGHTS by a third party hereto SELLING significant quantities of products in competition with LICENSEE’s, an AFFILIATE’s, or SUBLICENSEE’s SALE of LICENSED PRODUCTS hereunder, LICENSEE shall be entitled to notify LICENSOR in writing requesting LICENSOR to take steps to enforce the U.S. PATENT RIGHTS and LICENSOR shall within three (3) months of the receipt of such written request either:
(i) cause said infringement to terminate (including termination for whatever cause); or
(ii) initiate legal proceedings against the infringer; or
(iii) grant LICENSEE the right, at LICENSEE’s sole expense, to bring suit against the infringer for infringement of the PATENT RIGHTS.
(c) In no event shall LICENSEE be entitled to invoke Article 9(b) above with respect to more than one alleged infringer in any one country listed with the Licensed MarksPATENT RIGHTS at any given time even though there be more than one such infringer in such country and the provisions of Article 9(b) hereof shall not come into effect or continue in effect as to such country while LICENSOR is carrying on any such legal proceeding therein.
(d) In the event either party hereto shall initiate or carry on legal proceedings to enforce the PATENT RIGHTS against an alleged infringer, BNED as provided herein, the other party hereto shall promptly notify B&N fully co-operate with the party initiating or carrying on such proceedings.
(e) In the event LICENSOR shall institute suit or other legal proceedings to enforce the PATENT RIGHTS, it shall have sole control of such suit.
(f) In the event LICENSEE shall institute suite or other legal proceedings under Article 9(b) above to enforce the PATENT RIGHTS, LICENSOR shall be entitled to be represented by counsel of its authorized representative giving particulars thereof. Notwithstanding the foregoingchoosing, BNED is not obligated at its sole expense, and LICENSEE shall be entitled to monitor retain for it as damages, an amount corresponding to its actual out-of-pocket legal expenses paid to third parties for conducting such suit or police unauthorized use other legal proceedings and shall pay to LICENSOR TWENTY-FIVE PERCENT (25%) of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2balance of such recovery. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent LICENSEE shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain discontinue or settle any such Enforcement Proceedings shall be at proceedings brought by it without obtaining the exclusive option concurrence of LICENSOR and expense of BNED, and (iv) all recoveries shall belong exclusively giving LICENSOR a timely opportunity to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless continue such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings proceedings in its own name, under its sole control, and BNED shall provide necessary information and assistance to B&N or at its authorized representatives at B&N’s expense in sole expense. In the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement LICENSOR does not require a payment concur in such settlement, it must continue such proceeding in its own name, under its sole control and expense within three (3) months of money being given notice by BNEDLICENSEE of its desire to settle or LICENSEE shall be entitled to settle without LICENSOR’s concurrence.
Appears in 2 contracts
Sources: Sublicense Agreement, Sublicense Agreement (Sangamo Biosciences Inc)
Infringement. 5.1. In 7.1 Each PARTY shall inform the event that, during other PARTY promptly in writing of any alleged infringement of PATENT RIGHTS by a third party and any available evidence thereof.
7.2 During the Term term of this Agreement, BNED learns LICENSEE shall have the first right, but shall not be obligated to prosecute at its own expense, all infringements or misappropriations of any infringement TECHNOLOGY. LICENSEE may, for such purposes, include CURF as party plaintiff, if necessary, without expense to CURF. No settlement, consent judgment or threatened infringement other voluntary final disposition of the Licensed Markssuit may be entered into without the consent of CURF, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not unreasonably be unreasonably withheld, conditioned . The total cost of any such infringement or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought misappropriation action commenced or defended solely by B&N at BNED’s request LICENSEE shall be at the expense of BNEDborne by LICENSEE, and the Parties LICENSEE shall equally share in the keep any recovery of or damages for past infringement or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, misappropriation derived therefrom subject to the following: payment of a percentage on any recoveries net of costs and expenses as an “other payment” in accordance with Section 4.1(e). LICENSEE shall indemnify CURF against any order for costs that may be made against CURF in such proceedings.
7.3 If within three (x3) B&N months after having been notified of any alleged infringement, LICENSEE is unsuccessful in persuading the alleged infringer to desist and has not brought or is not diligently pursuing an infringement action or if LICENSEE notifies CURF at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, CURF shall have the right, but shall not have any obligation be obligated, to be joined prosecute at its own expense all infringements or misappropriations of TECHNOLOGY and CURF may, for such purposes, include LICENSEE as a party plaintiff in any Enforcement Proceedings such suit, without its prior written consentexpense to LICENSEE. The total cost of such infringement action commenced or defended solely by CURF shall be borne by CURF and CURF shall keep any recovery or damages for past infringement derived therefrom.
7.4 In the event that LICENSEE shall undertake the enforcement and/or defense of the TECHNOLOGY by litigation, which LICENSEE may withhold up to fifty percent (50%) of the payments otherwise due CURF under Article 4 hereunder and apply the same toward payment of up to half of LICENSEE’s expenses, including reasonable attorney’s fees, in connection therewith. LICENSEE shall modify the Royalty Report form to reflect any withholdings. Any recovery of damages by LICENSEE for each such suit shall be granted applied first in satisfaction of any unreimbursed expenses and legal fees of LICENSEE relating to such suit, and next toward reimbursement of CURF for any payments under Article 4 past due or withheld in its sole discretion, unless such joinder is required in order and applied pursuant to confer jurisdiction in this Section 7.4. LICENSEE shall keep the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings balance remaining from any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related recovery subject to the bringing payment of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.a percentage as an “other payment” in accordance with Section 4.1(e).
5.3. With respect to 7.5 In any infringement or threatened infringementmisappropriation suit that either PARTY may institute to enforce the PATENT RIGHTS pursuant to this Agreement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇other PARTY hereto shall, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option request and expense of B&Nthe PARTY initiating such suit, cooperate in all respects and, to the extent possible, have its employees testify when requested and all recoveries shall belong exclusively to B&N. BNED shall not make available relevant records, papers, information, samples, specimens and the like.
7.6 LICENSEE, during the exclusive period of this Agreement, shall have no the sole right in accordance with the terms and conditions herein to initiate sublicense any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in alleged infringer for the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined FIELD OF USE for future use of the PATENT RIGHTS. Any upfront fees as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing pm1 of such Enforcement Proceedingsa sublicense shall be treated pursuant to Article 4.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: License Agreement, License Agreement (Organovo Holdings, Inc.)
Infringement. 5.17.1. LICENSEE shall inform UFRFI promptly in writing of any alleged infringement of the Patent Rights by a third party and of any available evidence thereof.
7.2. During the term of this Agreement, LICENSEE and/or sublicensees shall have the primary responsibility to prosecute any alleged infringement of Patent Rights. UFRFI shall have the right, but not the obligation, to share up to [ * ]% of the costs, or [ * ]% if LICENSEE and/or sublicensees choose not to prosecute. Either party may claim the other as co-plaintiff. The total cost of any such infringement action shall be shared appropriately with respect to expenses incurred. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of UFRFI, which consent shall not unreasonably be withheld; provided, however, that LICENSEE shall indemnify UFRFI against any order for costs that may be made against UFRFI in such proceedings, in accordance with this Paragraph.
7.3. In the event that, during that LICENSEE shall undertake the Term of this Agreement, BNED learns of any infringement or threatened infringement enforcement and/or defense of the Licensed MarksPatent Rights by litigation, or dilution by a third party in the U.S. with respect LICENSEE may withhold up to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use [ * ] percent ([ * ]%) of the Licensed Marks by third parties to which it has not granted a sub-license with respect to royalties otherwise thereafter due UFRFI hereunder and apply the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation same toward reimbursement of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expenseexpenses, including to join or be joined as reasonable attorneys' fees, in connection therewith. Said withholding of royalties shall begin no earlier than the date LICENSEE first receives a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against for professional services or expenses associated with the enforcement and/or defense of the Patent Rights. Any recovery of damages by LICENSEE for any such suit shall be applied first in satisfaction of any unreimbursed expenses and legal fees of LICENSEE relating to the suit, and next toward reimbursement of UFRFI for any royalties past due or withheld with interest and applied pursuant to this Article VII. Any additional monies recovered from the settlement of any such suit shall be shared on a pro rata basis between LICENSEE and/or sublicensees and UFRFI according to the respective percentages of costs borne by each in such suit.
7.4. In any infringement suit as either party may institute to * Confidential treatment has been requested for marked portion enforce the Patent Rights pursuant to this Agreement, the other party hereto shall, at the request and expense of the party initiating such suit, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like.
7.5. In the event that LICENSEE or any of its sublicensees are sued (or such suit is threatened in writing) for infringement of a third party if party's patent because of the use of a Licensed Product or Licensed Process, LICENSEE shall promptly notify UFRFI and LICENSEE and/or its sublicensees shall have the sole right, in its discretion, to control the defense of such joinder is required in order suit at its own expense. UFRFI shall have the right to confer jurisdiction be represented by its own counsel at its own expense. If LICENSEE and/or its sublicensees do not elect within sixty (60) days of receiving notice to control the defense of such suit, UFRFI may undertake such control at its own expense and LICENSEE and/or its sublicensees shall have the right to be represented by its own counsel at its own expense. The parties shall cooperate fully in the jurisdiction in which defense of such suit. The party financing the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedingssuit shall consult with and consider the interests of the other, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in may not settle any part of the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute suit or otherwise commence Enforcement Proceedings with respect to, any alleged infringement consent to an adverse judgment in such suit that diminishes the rights or dilution interests of the Licensed Marks by third partiesnon-financing party, nor by reason including any interpretation of any settlement to which B&N may agreePatent Rights, provided such settlement does not require a payment without the express written consent of money by BNEDthe non-financing party.
Appears in 2 contracts
Sources: Patent License Agreement (Apollo Biopharmaceutics Inc), Patent License Agreement (Apollo Biopharmaceutics Inc)
Infringement. 5.1. In the event that, during the Term of this Agreement, BNED 7.1 If a party learns of any substantial, credible evidence that a Third Party is making, using, or selling a product in the Field of Use in the Territory that infringes a Licensed Patent or would infringe a Licensed Patent Application if such application were to issue, such party shall promptly notify the other party in writing of the possible infringement or threatened and in such notice describe in detail the information suggesting infringement of the Licensed MarksPatent or Licensed Patent Application. The Licensee, or dilution by a under its own control and at its own expense, shall have the first right but not the obligation to prosecute any third party in infringement of the U.S. Licensed Patents or Licensed Patent Applications (an “Infringement Action”) with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect any infringement related to the Exclusively Licensed Marks.
5.2Field of Use, to the extent permitted by law. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing Field of such Enforcement Proceedings. In additionUse, if B&N elects the University shall have the first right to bring Enforcement Proceedingsan Infringement Action. Prior to commencing any action to enforce a Licensed Patent or Licensed Patent Application, whether at BNED’s request or otherwisethe parties shall enter into good faith negotiations on the desirability of bringing suit, B&N the parties to the action, the selection of counsel, and such other matters as the parties may agree to discuss; provided that the party bringing the Infringement Action shall have exclusive control ultimate discretion over such matters. If a party is unsuccessful in persuading the alleged infringer to desist or fails to have initiated an Infringement Action within a reasonable time after such party first becomes aware of the Enforcement Proceedingsbasis for such action, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) other party shall have exclusive control of the Enforcement Proceedingsright, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless to prosecute such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be broughtinfringement under its sole control and at its sole expense, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related on notice to the bringing of such Enforcement Proceedingsother party. In any Infringement Action, and the parties agree to cooperate reasonably (zwithout a duty to join suit) BNED shall not take any actionwith each other, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option enforcing party’s request and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commencedexpense, including by using reasonable efforts to join or be joined as a party in any action taken by B&N permit access to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedingsrelevant personnel, records, papers, information, samples and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingsspecimens during regular business hours.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Exclusive Patent License Agreement (REGENXBIO Inc.), Exclusive Patent License Agreement (REGENXBIO Inc.)
Infringement. 5.1. In 6.1 Each party will notify the event that, during the Term of this Agreement, BNED learns other in writing of any infringement unauthorised use, misappropriation or threatened infringement of any rights in the Licensed MarksTechnology of which the party becomes aware.
6.2 The Licensee has the first right (but is not obliged) to take legal action at its own cost against any unauthorised use, misappropriation or dilution by a third party infringement of any rights (including any contractual restrictions) concerning or included in the U.S. Licensed Technology in the Field. The Licensee must discuss any proposed legal action with respect the Licensor prior to the Licensed Markslegal action being commenced, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use and take reasonable due account of the Licensed Marks by third parties legitimate interests of the Licensor in the action it takes. The Licensor hereby agrees to which it has not granted a subco-license with respect operate to the Exclusively Licensed Marksextent reasonably required by the Licensee in the enforcement of such rights and the Licensee shall reimburse to the Licensor all reasonable external fees, costs and expenses of the Licensor in connection with such co-operation.
5.2. With respect to any infringement or threatened infringement6.3 If the Licensee takes legal action under clause 6.2, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings Licensee will:
(collectively, “Enforcement Proceedings”a) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold the Licensor and the University harmless BNED for against all lossescosts (including lawyers’ and patent agents’ fees and expenses), costsclaims, demands and liabilities and expenses arising out of or related to consequent upon such enforcement activities and will settle any invoice received from the bringing Licensor in respect of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, claims, demands and liabilities indemnified hereunder within thirty (30) Business Days of receipt; and
(b) treat any award of profits or damages (including, without limitation, punitive damages) after deduction of all costs (including lawyers’ and patent agents’ fees and expenses that are not recovered from an award of legal costs), claims, demands and liabilities directly arising out of or related consequent upon such enforcement activities which were reasonably and properly incurred, as Net Sales for the purposes of clause 8; and
(c) subject to maintaining privilege or observing any confidentiality arrangements or orders, fully and effectively consult with Licensor in a timely manner before taking any material step in the legal action and take all reasonable steps to keep the Licensor regularly informed of the progress of the legal action, including, without limitation, any claims affecting the scope, enforceability or validity of the Licensed Technology.
6.4 If the Licensee has notified the Licensor in writing that it does not intend to take any action in relation to the bringing unauthorised use, misappropriation or infringement or the Licensee has not taken any such action within [*] of the notification under clause 6.1, the Licensor may take such Enforcement Proceedingslegal action at its own cost. If the Licensor takes legal action under clause 6.4, and the Licensor will:
(za) BNED shall to the extent that there is no breach or impropriety alleged against the Licensee in respect of the matter, not take include, reference or name the Licensee in any action, such action or make any admissions, that may affect proceedings (including by way of adding the validity Licensee as a defendant);
(b) account to Licensee in respect of any registration award of the Exclusively Licensed Marksprofits or damages (including, without the prior written consent limitation, punitive damages) after deduction of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option all costs (including lawyers’ and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities patent agents’ fees and expenses that are not recovered from an award of legal costs), claims, demands and liabilities directly arising out of or related to consequent upon such enforcement activities which were reasonably and properly incurred, which Licensee shall treat as Net Sales for the bringing purposes of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.clause 8; and
Appears in 2 contracts
Sources: Licensing Agreement (Nightstar Therapeutics LTD), Licensing Agreement (Nightstar Therapeutics LTD)
Infringement. 5.1. In A. Licensee and CMCC shall each inform the event that, during other promptly in writing of any alleged infringement by a third party of the Patent Rights in the Field of Use and of any available evidence thereof.
B. During the Term of this Agreement, BNED learns of CMCC shall have the first right, but shall not be obligated, to prosecute any infringement or threatened infringement of the Licensed MarksPatent Rights. In the event that CMCC desires to exercise its right to prosecute such infringement, or dilution by a third party it shall provide written notice thereof to Licensee, and Licensee shall have thirty (30) days from receipt of such notice from CMCC to notify CMCC of its election to join in the U.S. action brought by CMCC.
1. If Licensee does not elect to join an action brought by CMCC pursuant to this Article VII, Section B within the 30-day period described above, and is not required to join such action, the total cost of any such infringement action commenced or defended solely by CMCC shall be borne by CMCC and CMCC shall be entitled to retain all recovery of damages from such action. CMCC shall control such action using counsel selected by CMCC.
2. If Licensee does not elect to join an action brought by CMCC pursuant to this Article VII, Section B within the 30-day period described above, but is required to join such action, then each Party shall bear its own costs and expenses of such action, and CMCC shall control such action subject to Licensee’s reasonable input using counsel selected by CMCC. Any recovery of damages by the Parties for such action shall be applied first in satisfaction of any expenses and legal fees of CMCC and Licensee relating to such suit. The balance remaining from any such recovery shall be split [***] percent ([***]%) to Licensee and [***] percent ([***]%) to CMCC. For clarity, no payments under Article IV shall be owed by Licensee with respect to any recovery of damages retained by Licensee pursuant to this Section.
3. If Licensee does elect to join an action brought by CMCC pursuant to this Article VIII, Section B within the Licensed Marks30-day period described above, BNED then the total cost of any such action shall promptly be borne by Licensee, Licensee shall control such action subject to CMCC’s reasonable input using counsel selected by Licensee and reasonably acceptable to CMCC. If, however, Licensee fails to diligently and vigorously pursue the prosecution of such action, then CMCC may notify B&N Licensee in writing specifying in reasonable detail the nature of such failure, and if Licensee does not cure such failure within a timely period (not to exceed ninety (90) days), then CMCC may elect by written notice to control such action thereafter or its authorized representative giving particulars thereofuntil such time as Licensee is able to show, to CMCC’s reasonable discretion, that Licensee is then able to pursue such action diligently and vigorously. Any recovery of damages by the Parties for such suit or any settlement shall be applied first in satisfaction of any expenses and legal fees of CMCC and Licensee relating to such suit. The balance remaining from any such recovery shall be split [***] percent ([***]%) to Licensee and [***] percent ([***]%) to CMCC. For clarity, no payments under Article IV shall be owed by Licensee with respect to any recovery of damages retained by Licensee pursuant to this Section.
4. Notwithstanding the foregoingforegoing or the remainder of this Article VII, BNED is at any time either Party, due to potential conflicts of interest, may elect to join an action brought by the other under this Article VII, and to do so independently, at its own cost, with its own counsel, and which counsel shall be subject solely to its own control, provided that the Party in control of such action under this Article VII shall remain in control of such action and such other Party shall have the right to participate as provided in this paragraph.
C. If within ninety (90) days after having been notified of any alleged infringement, CMCC shall have been unsuccessful in persuading the alleged infringer to desist and shall not obligated * Confidential Information, indicated by [***], has been omitted from this filing and filed separately with the Securities and Exchange Commission have brought and shall not be diligently prosecuting an infringement action, or if CMCC shall notify Licensee of its intention not to monitor or police unauthorized use bring suit against any alleged infringer then, Licensee shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Licensed Marks by third parties Patent Rights, provided, however, that such right to which it has not bring such an infringement action shall remain in effect only for so long as the license granted a sub-license hereunder remains exclusive with respect to such infringement. Licensee shall control such action subject to CMCC’s reasonable input using counsel selected by Licensee. No settlement, consent judgment or other voluntary final disposition of the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringementsuit may be entered into without the consent of CMCC, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheldwithheld or delayed. Licensee shall indemnify CMCC against any order for costs that may be made against CMCC in such proceedings.
D. In the event Licensee shall undertake the enforcement and/or defense of the Patent Rights pursuant to Paragraph C above, conditioned any recovery of damages by Licensee for such suit or delayed by settlement shall be applied first in satisfaction of any unreimbursed expenses and legal fees of CMCC and Licensee relating to such suit. The balance remaining from any such recovery shall be split [***] percent ([***]%) to Licensee and [***] percent ([***]%) to CMCC. For clarity, no payments under Article IV shall be owed by Licensee with respect to any recovery of damages retained by Licensee pursuant to this Section.
E. In the event that a declaratory judgment action alleging invalidity or non-infringement of any of the Patent Rights shall be brought against Licensee, CMCC, at its option, shall have the right, within thirty (30) days after commencement of such action, to intervene and participate in the defense of the action at its own expense. In the event that a declaratory judgment action alleging invalidity or non-infringement of any of the Patent Rights shall be brought against CMCC, Licensee, at its option, shall have the right, within thirty (30) days after commencement of such action, to intervene and participate in the defense of the action at its own expense.
F. In any infringement suit which either party may institute or join to enforce the Patent Rights pursuant to this Agreement, the other party hereto shall cooperate in all reasonable respects (including without limitation joining any such suit or any other action * Confidential Information, indicated by [***], has been omitted from this filing and filed separately with the Securities and Exchange Commission or proceeding described above at the reasonable request of the other party or if B&N elects not required by law to initiate Enforcement Proceedingsor maintain same). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at , and, to the expense of BNEDextent reasonably possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N like.
G. Licensee shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, sole right subject to the following: (x) B&N shall not have terms and conditions hereof to sublicense any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in alleged infringer for future use of the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related Patent Rights to the bringing extent licensed by this Agreement. Any upfront fees paid to Licensee as part of such Enforcement Proceedings, a sublicense shall be shared between Licensee and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the CMCC as Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement ProceedingsRoyalty Sublicensing Income.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: Exclusive License Agreement (Fate Therapeutics Inc), Exclusive License Agreement (Fate Therapeutics Inc)
Infringement. 5.1. In (a) Each party shall promptly notify the event that, during the Term of this Agreement, BNED learns other party in writing of any infringement alleged or threatened infringement of an issued Patent of which such party becomes aware, provided that Chiron is commercializing a Product under such Patent. Chiron shall have the Licensed Marks, right to bring and control any action or dilution by a third party in the U.S. proceeding with respect to the Licensed Marks, BNED shall promptly notify B&N such alleged or threatened infringement (a "PROCEEDING") at its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use own expense and represented by legal advisers of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marksits own choice.
5.2. With respect to any infringement or threatened infringement(b) In the event Chiron brings a Proceeding, or dilution by a third party Phytera shall reasonably cooperate with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In additionChiron including, if B&N elects to bring Enforcement Proceedingsrequired, whether at BNED’s request undertaking any action or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation agreeing to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in Proceeding, the jurisdiction in reasonable costs of which shall be at Chiron's expense.
(c) In the Enforcement Proceedings are to be broughtevent Chiron commences a Proceeding, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing subject of such Enforcement ProceedingsProceeding is a Product Patent, and (z) BNED shall not take any actionrecovery realized as a result of such Proceeding which is directly attributable to infringement of the Product Patent, or make any admissions, that may affect the validity after reimbursement of any registration and all litigation expenses and reasonable costs of the Exclusively Licensed MarksChiron, without the prior written consent of B&N.shall be treated as Net Sales under this Agreement.
5.3. (d) With respect to any infringement or threatened an actual infringement, if within one hundred twenty (120) days following the notice of infringement referenced in Section 10.2(a), Chiron has not brought a Proceeding or dilution by a third party with respect commenced licensing negotiations to the Non-Exclusively Licensed ▇▇▇▇▇ such actual infringement, B&N Phytera shall have exclusive control the. following rights:
(1) In the event that Chiron possesses a sole or joint ownership interest in the Patent which is the subject of any Enforcement Proceedings relating such infringement, or such Patent is solely owned by Phytera but covers (i.e., contains claimsdirected to) a Chiron Product (a "Phytera Owned Product Patent"), Phytera may propose to Chiron that Chiron and Phytera participate in such Proceeding as partners, with the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings understanding that Phytera and Chiron shall be at the exclusive option and expense of B&N, share equally all costs and all recoveries arising from the Proceeding unless otherwise mutually agreed(the "Joint Proceeding"). If Chiron does not elect to proceed with Phytera in a Joint Proceeding within sixty (60) days after receiving Phytera's Joint Proceeding proposal, Phytera may undertake a Proceeding on its own with respect to a Phytera Owned Product Patent, provided that Phytera shall belong exclusively to B&N. BNED shall not consult with Chiron and shall have no right obtain Chiron's consent prior to initiate undertaking any actions which would affect Chiron's commercial interests with respect to such Enforcement Proceedings in its own namePhytera Owned Product Patent, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are consent not to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of unreasonably withheld or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agreedelayed, provided such settlement does not require a payment of money by BNEDthat Chiron shall be under no obligation to consent to actions which would materially affect Chiron's commercial interests.
Appears in 2 contracts
Sources: Collaboration Agreement (Phytera Inc), Collaboration Agreement (Phytera Inc)
Infringement. 5.1. In 7.1 LICENSEE shall inform LICENSOR promptly in writing of any alleged infringement of the event that, during PATENT RIGHTS by a third party and of any available evidence thereof.
7.2 During the Term term of this Agreement, BNED learns of any infringement or threatened infringement of LICENSOR shall have the Licensed Marksright, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent but shall not be unreasonably withheldobligated, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N prosecute at BNED’s request shall be at its own expense all infringements of the expense of BNEDPATENT RIGHTS and, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing furtherance of such Enforcement Proceedings. In additionright, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED LICENSEE hereby agrees that LICENSOR may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined include LICENSEE as a party plaintiff in any Enforcement Proceedings such suit, without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order expense to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings LICENSEE. The total cost of any such Enforcement Proceedings infringement action commenced or defended solely by LICENSOR shall be borne by LICENSOR and B&N is joined LICENSOR shall keep any recovery or damages for past infringement derived therefrom.
7.3 If within six (6) months after having been notified of any alleged infringement, LICENSOR shall have been unsuccessful in persuading the alleged infringer to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify desist and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any have brought and shall not be diligently prosecuting an infringement action, or make if LICENSOR shall notify LICENSEE at any admissionstime prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, LICENSEE shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the PATENT RIGHTS, and LICENSEE may, for such purposes, use the name of LICENSOR as party plaintiff; provided, however, that such right to bring such an infringement action shall remain in effect only for so long as the license granted herein remains exclusive. No settlement, consent judgment or other voluntary final disposition of the suit may affect be entered into without the validity consent of LICENSOR, which consent shall not unreasonably be withheld. LICENSEE shall indemnify LICENSOR against any order for costs that may be made against LICENSOR in such proceedings.
7.4 In the event that a declaratory judgment action alleging invalidity or noninfringement of any registration of the Exclusively Licensed MarksPATENT RIGHTS shall be brought against LICENSEE, without LICENSOR, at its option, shall have the prior written consent right, within thirty (30) days after commencement of B&N.such action, to intervene and take over the sole defense of the action at its own expense.
5.3. With respect to 7.5 In any infringement or threatened infringementsuit as either party may institute to enforce the PATENT RIGHTS pursuant to this Agreement, or dilution by a third the other party with respect to the Non-Exclusively Licensed ▇▇▇▇hereto shall, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option request and expense of B&Nthe party initiating such suit, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and all recoveries shall belong exclusively to B&N. BNED shall not and the like.
7.6 LICENSEE, during the exclusive period of this Agreement, shall have no the sole right in accordance with the terms and conditions herein to initiate sublicense any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in alleged infringer for future use of the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined PATENT RIGHTS. Any upfront fees as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing part of such Enforcement Proceedingsa sublicense shall be shared equally between LICENSEE and LICENSOR; other royalties shall be treated per Article 4.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: License Agreement (Hemobiotech Inc), License Agreement (Hemobiotech Inc)
Infringement. 5.16.1 PALOMAR shall have the right, but not the obligation, to protect the PATENT RIGHTS from infringement in the LICENSE FIELD and prosecute infringers, in each case whether such infringement occurred or is alleged to have occurred before or after the EFFECTIVE DATE, at PALOMAR’s expense. In PALOMAR may initiate legal proceedings against the event that, during the Term of this Agreement, BNED learns of infringer in GENERAL’s name if so required by law.
6.2 Prior to initiating any infringement or threatened infringement of the Licensed Marks, or dilution by action against a third party for infringement of a VALID CLAIM of a PATENT RIGHT in the U.S. with respect LICENSE FIELD which is exclusively licensed to the Licensed MarksPALOMAR under Paragraph 2.1(a), BNED PALOMAR shall promptly notify B&N provide GENERAL at least thirty (30) days prior written notice of PALOMAR’s intent to initiate such infringement action, which notice shall describe in reasonable detail such alleged infringing activity, and PALOMAR shall consider in good faith any comments and/or concerns provided by GENERAL.
6.3 No settlement, consent judgment or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use other voluntary final disposition of the Licensed Marks suit which invalidates or restricts the claims of such PATENT RIGHTS may be entered into by third parties to which it has not granted a sub-license with respect to PALOMAR without the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringementconsent of GENERAL, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned and shall not be withheld unless GENERAL assumes responsibility for future expenses in litigation. PALOMAR shall indemnify GENERAL against any order for payment that may be made against GENERAL in such proceedings.
6.4 In the event PALOMAR shall initiate or delayed if B&N elects not carry on legal proceedings to initiate Enforcement Proceedings)enforce any PATENT RIGHT in the LICENSE FIELD against any alleged infringer, GENERAL shall fully cooperate with and supply all assistance reasonably requested by PALOMAR. PALOMAR shall have sole control of that suit and shall bear the reasonable expenses (excluding legal fees) incurred by GENERAL in providing such assistance and cooperation as is requested pursuant to this Article 6. PALOMAR shall keep GENERAL informed of the progress of such proceedings and GENERAL shall be entitled to counsel in such proceedings but at GENERAL’s own expense. Any award paid by third parties as the result of such Enforcement Proceedings brought proceedings (whether by B&N at BNED’s request way of settlement or otherwise) shall first be applied to reimbursement of the unreimbursed legal fees and expenses incurred by either party, and then the remainder shall be at divided between the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined parties as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then follows:
(i) BNED may initiate If the amount is based on lost profits, PALOMAR shall receive an amount equal to the damages the court determines PALOMAR has suffered as a result of the infringement less the amount of any royalties that would have been due GENERAL on sales of PRODUCT lost by PALOMAR as a result of the infringement had PALOMAR made such proceedings, sales; and
(ii) GENERAL shall receive an amount equal to the royalties it would have exclusive control received if such sales had been made by PALOMAR; or
(b) As to awards other than those based on lost profits, seventy-five percent (75%) to PALOMAR and twenty-five percent (25%) to GENERAL.
6.5 For the purpose of the Enforcement Proceedingsproceedings referred to in this Article 6, GENERAL shall permit the use of its name and shall execute such documents and carry out such other acts as may be necessary, including without limitation joining (iiiat PALOMAR’s reasonable expense) any decision to maintain infringement action instituted by PALOMAR in accordance with this Article 6 if reasonably requested by PALOMAR or settle any required by applicable law. PALOMAR shall keep GENERAL informed of the progress of such Enforcement Proceedings proceedings and GENERAL shall be entitled to counsel in such proceedings but at the exclusive option and expense of BNEDits own expense, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation said expenses to be joined as a party plaintiff off-set against any damages received by PALOMAR in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in accordance with the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingsforegoing Paragraph 6.4.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 2 contracts
Sources: License Agreement (Palomar Medical Technologies Inc), License Agreement (Palomar Medical Technologies Inc)
Infringement. 5.19.1 If the production, sale or use of LICENSED PRODUCTS under this LICENSE AGREEMENT by LICENSEE results in any third party claim for patent infringement against LICENSEE, LICENSEE shall promptly notify the UNIVERSITY thereof in writing, setting forth the facts of such claim in reasonable detail. LICENSEE shall have the sole right, in its discretion and at its own expense, to defend and control the defense and settlement of any such claim against LICENSEE, by counsel of its own choice. UNIVERSITY agrees to cooperate with LICENSEE in any reasonable manner deemed by LICENSEE to be necessary in defending any such action. LICENSEE shall reimburse UNIVERSITY for any reasonable out of pocket expenses incurred in providing such assistance.
9.2 In the event that, during the Term of this Agreement, BNED learns of that any infringement or threatened infringement of the Licensed Marks, or dilution PATENT RIGHTS licensed to LICENSEE are infringed by a third party in party, LICENSEE shall have the U.S. first right, but not the obligation, to institute, prosecute and control (including as to the settlement thereof) any action or proceeding with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened such infringement, by counsel of its choice, including any declaratory judgment action arising from such infringement. UNIVERSITY agrees to cooperate with LICENSEE in any reasonable manner deemed by LICENSEE to be necessary in instituting any such action, including the UNIVERSITY joining any such action as a party if applicable law or dilution court rules provide that a court would lack jurisdiction based on UNIVERSITY’s absence as a party in such action. It is understood that any settlement, consent judgment or other voluntary disposition of such actions that would materially adversely affect the PATENT RIGHTS must be approved by a third party with respect UNIVERSITY, such approval not to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N delayed. If LICENSEE recovers monetary damages in the form of lost profits from a third party infringer, then LICENSEE shall pay to UNIVERSITY the owed royalties on the recovered profits. If LICENSEE recovers monetary damages in the form of a reasonable royalty, then LICENSEE shall remit to UNIVERSITY [**] percent ([**]%) of the reasonable royalty awarded.
9.3 If LICENSEE elects not to initiate Enforcement Proceedings)enforce any patent within the PATENT RIGHTS, then LICENSEE shall notify UNIVERSITY in writing within [**] days of receiving notice that an infringement exists. Any such Enforcement Proceedings brought by B&N UNIVERSITY may then, at BNED’s request shall be at its own expense and control, take steps to defend or enforce any patent within the expense of BNEDPATENT RIGHTS and recover, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expensefor its own account, any damages, awards or settlements resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedingstherefrom, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissionsprovided, that may affect the validity of UNIVERSITY shall first reimburse LICENSEE for any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution reasonable expenses and attorneys’ fees incurred by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings LICENSEE relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bringsuit.
9.4 Notwithstanding the foregoing, maintain or settle any such Enforcement Proceedings and in UNIVERSITY’s sole discretion and expense, UNIVERSITY shall be at the exclusive option and expense entitled to participate through counsel of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, choosing in any legal action involving the INVENTION and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense PATENT RIGHTS. Nothing in the event that B&N decides that such Enforcement Proceedings should foregoing sections shall be commenced, including to join or be joined as a party construed in any action taken by B&N to enforce its rights in way which would limit the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution authority of the Licensed Marks by third parties, nor by reason Attorney General of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNEDNorth Carolina.
Appears in 2 contracts
Sources: License Agreement (Epizyme, Inc.), License Agreement (Epizyme, Inc.)
Infringement. 5.1. In (a) Each party shall promptly report in writing to the event that, other party during the Term of this Agreement, BNED learns Agreement any known infringement or suspected infringement of any of the CIMA Patents in the Territory by manufacture, use or sale of a Product on a commercial scale in derogation of the rights granted to WCH hereunder (hereinafter, a "Related Infringement") of which it becomes aware, and shall provide the other party with all available evidence supporting said infringement or threatened suspected infringement.
(b) Except as provided in paragraph (d) below, CIMA shall have the right to initiate an infringement or other appropriate suit anywhere in the Territory against any Third Party who at any time has infringed, or is suspected of infringing, any of the Licensed MarksCIMA Patents. CIMA shall give WCH sufficient advance notice of its intent to file any suit on account of a Related Infringement and the reasons therefor, and shall provide WCH with an opportunity to make suggestions and comments regarding such suit. CIMA shall keep WCH promptly informed, and shall from time to time consult with WCH regarding the status of any such suit on account of a Related Infringement and shall provide WCH with copies of all documents filed in, and all written communications relating to, such suit.
(c) CIMA shall have the sole and exclusive right to select counsel for any suit referred to in subsection (b) above and shall, except as provided below, pay all expenses of the suit, including without limitation attorneys' fees and court costs. WCH, in its sole discretion, may elect, within sixty (60) days after the commencement of such litigation on account of a Related Infringement, to contribute to the costs incurred by CIMA in connection with such litigation and, if it so elects, any damages, royalties, settlement fees or dilution other consideration received by CIMA as a third result of such litigation shall be shared by CIMA and WCH pro rata based on their respective sharing of the costs of such litigation provided that such pro rata share shall not exceed fifty percent (50%) unless CIMA has consented to a higher share in writing. In the event that WCH elects not to contribute to the costs of such litigation, CIMA shall be entitled to retain any damages, royalties, settlement fees or other consideration for infringement resulting therefrom. If necessary, WCH 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. WCH shall offer reasonable assistance to CIMA therewith at no charge to CIMA except for reimbursement of reasonable out-of-pocket expenses incurred in rendering such assistance. WCH shall have the right to participate and be represented in any such suit by its own counsel at its own expense. CIMA shall not settle any such suit on terms which grant any license to any other party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use derogation of the Licensed Marks by third parties rights granted to which it has not granted a sub-license with respect to WCH hereunder without obtaining the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (WCH, which consent shall not be unreasonably withheld, conditioned or delayed if B&N .
(d) In the event that CIMA elects not to initiate Enforcement Proceedingsan infringement or other appropriate suit pursuant to subsection (b) above on account of a Related Infringement after reasonable efforts to ▇▇▇▇▇ such Related Infringement without litigation have failed, but in no event later than ninety (90) days after WCH's notice to CIMA under Section 9.2(a). Any , CIMA shall promptly advise WCH of its intent not to initiate such Enforcement Proceedings brought by B&N at BNED’s request a suit, WCH shall be have the right, at the expense of BNEDWCH, and of initiating an infringement or other appropriate suit against the Parties shall equally share in the recovery of damages party or compensation resulting from parties committing such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement ProceedingsRelated Infringement. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce exercising its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order pursuant to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.this subsection
Appears in 1 contract
Infringement. 5.1(a) The Vendor agrees that it shall defend, indemnify ------------ and hold harmless, at its own expense, all suits and claims against the Owner for infringement or violation of any patent, trademark, copyright, trade secret or other intellectual property rights of any third party enforceable in the United States or in any other territory where Vendor has approved the deployment or use of Products under this Contract (collectively, "Intellectual Property --------------------- Rights"), covering, or alleged to cover, the Products or any component thereof. ------ The Vendor agrees that it shall pay all sums, including without limitation, reasonable attorneys' fees and other costs incurred at Vendor's written request or authorization, which, in defense of, by final judgment or decree, or in settlement of any suit or claim to which the Vendor agrees, may be assessed against, or incurred by, the Owner on account of such infringement or violation, provided that the Owner shall cooperate in all reasonable respects with the Vendor and its attorneys in the investigation, trial and defense of such lawsuit or action and any appeal arising therefrom; provided, however, that the Owner may, at its own cost, participate in the investigation, trial and defense of such lawsuit or action and any appeal arising therefrom. The parties shall cooperate with each other in any notifications to insurers. If a claim for Losses (a "Claim") is to be made by a party entitled to indemnification ----- hereunder against the Vendor, the party claiming such indemnification shall give written notice (a "Claim Notice") to the Vendor as soon as practicable after the ------------ party entitled to indemnification becomes aware of any fact, condition or event which may give rise to Losses for which indemnification may be sought under this Agreement, provided, however, no delay on the part of the Owner in notifying the Vendor shall relieve the Vendor from any obligation hereunder unless (and then solely to the extent) the Vendor is thereby materially prejudiced. If any lawsuit or enforcement action is filed against any party entitled to the benefit of indemnity hereunder, written notice thereof shall be given to the Vendor as promptly as practicable (and in any event within fifteen (15) calendar days after the service of the citation or summons). The Vendor shall be entitled, if it so elects, (i) to defend such lawsuit or action, (ii) to employ and engage attorneys of its own choice to handle and defend the same, at the Vendor's cost, risk and expense, and (iii) to compromise or settle such Claim, which compromise or settlement shall be made only with the written consent of the Owner (which may not be unreasonably withheld), unless such compromise or settlement includes an unconditional release of any claims against the Owner in which event such written consent of the Owner shall not be required. If the Vendor fails to assume the defense of such Claim within fifteen (15) calendar days after receipt of the Claim Notice, the Owner against which such Claim has been asserted will (upon delivering notice to such effect to the Vendor) have the right to undertake, at the Vendor's cost and expense, the defense, compromise or settlement of such Claim on behalf of and for the account and risk of the Vendor. In the event thatthe Owner assumes the defense of the Claim, during the Term Owner will keep the Vendor reasonably informed of this Agreement, BNED learns the progress of any infringement such defense, compromise or threatened infringement settlement. The Vendor shall be liable for any settlement of the Licensed Marks, or dilution by a third party any action effected pursuant to and in the U.S. accordance with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect this Agreement and for any final judgment (subject to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation right of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedingsappeal). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N Vendor agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities the Owner from and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including against any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory Losses by reason of B&N’s failure such settlement or refusal judgment.
(b) The Vendor's obligation under this subsection shall not extend to prosecute alleged infringements or otherwise commence Enforcement Proceedings violations that arise because the Products provided by the Vendor are used in combination with respect to, any alleged infringement or dilution of the Licensed Marks other products furnished by third partiesparties and where any such combination was not installed, nor recommended or approved by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNEDthe Vendor.
Appears in 1 contract
Sources: System Equipment Purchase Agreement (Leap Wireless International Inc)
Infringement. 5.1(a) Each party shall promptly report in writing to the other party during the term of this Agreement any known infringement or suspected infringement of any of the CIMA Patents in the Territory by manufacture, use or sale of a Product on a commercial scale in derogation of the rights granted to ESI hereunder (hereinafter, a "Related Infringement") of which it becomes aware, and shall provide the other party with all available evidence supporting said infringement or suspected infringement.
(b) Except as provided in paragraph (d) below, CIMA shall have the right to initiate an infringement or other appropriate suit anywhere in the Territory against any Third Party who at any time has infringed, or is suspected of infringing, any of the CIMA Patents. CIMA shall give ESI sufficient advance notice of its intent to file any suit on account of a Related Infringement and the reasons therefor, and shall provide ESI with an opportunity to make suggestions and comments regarding such suit. CIMA shall keep ESI promptly ***TEXT OMITTED AND FILED SEPARATELY CONFIDENTIAL TREATMENT REQUESTED UNDER 17 C.F.R. SECTIONS 200.80(B)(4), 200.83 AND 240.24B-2 informed, and shall from time to time consult with ESI regarding the status of any such suit on account of a Related Infringement and shall provide ESI with copies of all documents filed in, and all written communications relating to, such suit.
(c) CIMA shall have the sole and exclusive right to select counsel for any suit referred to in subsection (b) above and shall, except as provided below, pay all expenses of the suit, including without limitation attorneys' fees and court costs. ESI, in its sole discretion, may elect, within 60 days after the commencement of such litigation on account of a Related Infringement, to contribute to the costs incurred by CIMA in connection with such litigation and, if it so elects, any damages, royalties, settlement fees or other consideration received by CIMA as a result of such litigation shall be shared by CIMA and ESI pro rata based on their respective sharing of the costs of such litigation provided that such pro rata share shall not exceed fifty percent (50%) unless CIMA has consented to a higher share in writing. In the event thatthat ESI elects not to contribute to the costs of such litigation, during CIMA shall be entitled to retain any damages, royalties, settlement fees or other consideration for infringement resulting therefrom. If necessary, ESI shall join as a party to the Term suit but shall be under no obligation to participate except to the extent that such participation is required as the result of this Agreementbeing a named party to the suit. ESI shall offer reasonable assistance to CIMA therewith at no charge to CIMA except for reimbursement of reasonable out-of-pocket expenses incurred in rendering such assistance. ESI shall have the right to participate and be represented in any such suit by its own counsel at its own expense. CIMA shall not settle any such suit on terms which grant any license to any other ***TEXT OMITTED AND FILED SEPARATELY CONFIDENTIAL TREATMENT REQUESTED UNDER 17 C.F.R. SECTIONS 200.80(B)(4), BNED learns of any infringement or threatened infringement 200.83 AND 240.24B-2 party in derogation of the Licensed Marks, or dilution by a third party in rights granted to ESI hereunder without obtaining the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (ESI, which consent shall not be unreasonably withheld, conditioned or delayed if B&N .
(d) In the event that CIMA elects not to initiate Enforcement Proceedingsan infringement or other appropriate suit pursuant to subsection (b) above on account of a Related Infringement after reasonable efforts to abat▇ ▇▇▇h Related Infringement without litigation have failed, but in no event later than ninety (90) days after ESI's notice to CIMA under Section 9.3(a). Any , CIMA shall promptly advise ESI of its intent not to initiate such Enforcement Proceedings brought by B&N at BNED’s request a suit, ESI shall be have the right, at the expense of BNEDESI, and of initiating an infringement or other appropriate suit against the Parties shall equally share in the recovery of damages party or compensation resulting from parties committing such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement ProceedingsRelated Infringement. In additionexercising its rights pursuant to this subsection (d), if B&N elects ESI have the sole and exclusive right to bring Enforcement Proceedingsselect counsel and shall, whether at BNED’s request or otherwiseexcept as provided below, B&N shall have exclusive control pay all expenses of the Enforcement Proceedingssuit including without limitation attorneys' fees and court costs. CIMA, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless may elect, within 60 days after the commencement of such joinder is required in order litigation, to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related contribute to the bringing costs incurred by ESI in connection with such litigation, and, if it so elects, any damages royalties, settlement fees or other consideration received by ESI as a result of such Enforcement Proceedings, litigation shall be shared by ESI and (z) BNED CIMA pro rata based on their respective sharing of the costs of such litigation provided that such pro rata share shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3exceed fifty percent (50%) unless ESI has consented to a higher share in writing. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in In the event that B&N decides that CIMA elects not to contribute to the costs of such Enforcement Proceedings should litigation, ESI shall be commencedentitled to retain any damages, including to royalties, settlement fees or other consideration for infringement resulting therefrom. If necessary, CIMA shall join or be joined as a party to the suit but shall ***TEXT OMITTED AND FILED SEPARATELY CONFIDENTIAL TREATMENT REQUESTED UNDER 17 C.F.R. SECTIONS 200.80(B)(4), 200.83 AND 240.24B-2 be under no obligation to participate except to the extent that such participation is required as a result of being named a party to the suit. At ESI's request, CIMA shall offer reasonable assistance to ESI in connection therewith at no charge to ESI except for reimbursement of reasonable out-of-pocket expenses incurred in rendering such assistance. CIMA shall have the right to participate and be represented in any action taken such suit by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingsown counsel at its own expense.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 1 contract
Infringement. 5.1. In (a) Each Party will notify the event that, during the Term of this Agreement, BNED learns other Party promptly upon becoming aware of any infringement claim or threatened infringement assertion by a Third Party that the Intellectual Property Rights infringe or otherwise are in violation of a Third Party’s patents or intellectual property. The Parties shall promptly enter into discussions with the Third Party to determine the existence and extent of the Licensed Marksinfringement and the Parties’ mutually agreed course of action. Each Party will absorb its own costs of the discussions.
(b) Licensee and Licensor may agree to jointly defend or pursue litigation, but neither of them shall bind or dilution commit the other to any course of action which involves liability for legal costs, expenses or damages. If Licensee and Licensor fail to agree, within a reasonable time, having regard to the normal progress of litigation, as to any course of action which might be jointly taken, then either of them may take or defend proceedings alone, if legally entitled to act alone, and shall be entitled to retain anything awarded to it by a third party court or paid to it as a settlement by the Third Party. Where either Licensee or Licensor wishes to act alone or is unable to agree on a joint defence, but formalities require participation of the other, then the other shall join in the U.S. with respect proceeding to the Licensed Marksextent necessary for formalities. Each will cooperate with the other in making available all necessary documents and witnesses for any legal proceedings. The Party acting alone will reimburse the other for its time and all costs associated with participation in the proceedings, BNED and making available of documents. If either Licensee or Licensor proceeds alone (or with the other as a formality), it shall promptly notify B&N or its authorized representative giving particulars thereofindemnify the other for reasonable legal costs for representation that is reasonably necessary and for any court-ordered payments. Notwithstanding Neither Licensee nor Licensor shall settle any such claim without the foregoing, BNED is not obligated to monitor or police unauthorized use consent of the Licensed Marks by third parties other, such consent not to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed .
(c) The Parties may negotiate with a Third Party to obtain any additional rights required such as may arise if B&N elects not to initiate Enforcement Proceedings)a Third Party’s patent emerges. Any such Enforcement Proceedings brought by B&N at BNED’s request Each Party shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in absorb its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out costs of or related to the bringing of such Enforcement Proceedingsnegotiation.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 1 contract
Sources: Technology License Agreement (Profound Medical Corp.)
Infringement. 5.17.1. In The parties shall inform each other promptly, in writing, of any alleged infringement of the event thatPatent Rights by a third party, during and of any available evidence thereof. * Confidential Treatment Requested
7.2. During the Term term of this Agreement, BNED learns LICENSEE shall have the right, subject only to approval not unreasonably withheld of any infringement or threatened infringement of the Licensed MarksRESEARCH FOUNDATION, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent but shall not be unreasonably withheldobligated, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N prosecute at BNED’s request shall be at the its own expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedingsinfringements of the Patent Rights and, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing furtherance of such Enforcement Proceedings. In additionright, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED RESEARCH FOUNDATION hereby agrees that LICENSEE may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined join RESEARCH FOUNDATION as a party plaintiff in any Enforcement Proceedings such suit, without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order expense to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings RESEARCH FOUNDATION. The total cost of any such Enforcement Proceedings infringement action commenced or defended solely by LICENSEE shall be borne by LICENSEE and B&N is joined to any recovery realized from such Enforcement Proceedings without infringement action, after reimbursing LICENSEE for its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities costs and expenses arising out in prosecuting the infringement, shall be treated as if it were a royalty received by LICENSEE from a sublicensee for Net Sales of or related Licensed Product and the provisions of Section 4.1(b) shall apply.
7.3. If within [...***...] months after notifying an alleged infringer of any alleged infringement, LICENSEE shall have been unsuccessful in persuading the alleged infringer to the bringing of such Enforcement Proceedings, desist and (z) BNED shall not take any have brought and shall not be diligently prosecuting an infringement action, or make if LICENSEE shall notify RESEARCH FOUNDATION at any admissionstime prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, RESEARCH FOUNDATION shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Patent Rights, and RESEARCH FOUNDATION may, for such purposes, use the name of LICENSEE as party plaintiff. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of the other party, which consent shall not unreasonably be withheld.
7.4. In the event that may affect the validity a declaratory judgment action alleging invalidity or noninfringement of any registration of the Exclusively Licensed MarksPatent Rights shall be brought against RESEARCH FOUNDATION, without LICENSEE at its option, shall have the prior written consent right within [...***...] after commencement of B&N.such action, to intervene and take over the sole defense of the action at its own expense.
5.37.5. With respect to In any infringement or threatened infringementsuit as either party may institute to enforce the Patent Rights pursuant to this Agreement, or dilution by a third the other party with respect to the Non-Exclusively Licensed ▇▇▇▇hereto shall, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option request and expense of B&Nthe party initiating such suit, cooperate in all respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and all recoveries shall belong exclusively the like.
7.6. RESEARCH FOUNDATION warrants and represents that it has the lawful right to B&N. BNED grant the license provided in this Agreement and that it has not granted rights or licenses in derogation of this Agreement. RESEARCH FOUNDATION agrees that during the term of this Agreement, or any license granted hereunder, RESEARCH FOUNDATION shall not and shall have no right to initiate enter into any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N other agreements that conflict with the rights or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commencedobligations provided hereunder, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be broughtand obligations that survive termination of this Agreement. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.* Confidential Treatment Requested
Appears in 1 contract
Infringement. 5.1. 12.1 In the event that, that any third party infringes or attempts to infringe any rights acquired by the Licensee hereunder during the Term the Licensee shall inform FAPL of this Agreement, BNED learns of any such infringement or threatened attempted infringement of as soon as the Licensed Marks, or dilution by a third party relevant facts are known to it. If FAPL decides (in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request absolute discretion) that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be commenced the Licensee shall at the request of FAPL and at the Licensee's own expense of BNED, give full co-operation and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary all information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined FAPL as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be broughtFAPL may reasonably consider necessary. If B&N brings any such Enforcement Proceedings that are FAPL decides not at BNED’s request, and BNED does not consent to participate and bear commence proceedings the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N Licensee shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings do so in its own name, name or otherwise whether pursuant to sections 30 or 31 of the Trade Marks Act 1994 or otherwise. FAPL shall bear the costs of any such proceedings (save only the Licensee's costs of assistance therewith as set out above) and BNED shall be entitled to retain any recovery therefrom to cover such costs any balance being divided between the parties in accordance with the Royalty percentages as set out in this Agreement
12.2 If at any time during the Term the Licensee becomes aware that any other Person alleges that the use of the Property infringes any rights of another party the Licensee shall immediately give to FAPL full particulars in writing thereof and shall make no comment or admission to any third party in respect thereof. FAPL will in consultation with the Licensee take such steps as it considers reasonably necessary to defend any such allegation but shall not be obliged to take any steps if it decides in its absolute discretion not to do so
12.3 In the event that any third party infringes or attempts to infringe any rights of the Licensee in connection with the Licensed Products (not being rights acquired by the Licensee hereunder and/or the Materials) during the Term FAPL shall inform the Licensee of such infringement or attempted infringement as soon as the relevant facts are known to it. If the Licensee decides that proceedings shall be commenced FAPL shall at the request of the Licensee give full co-operation and provide necessary all information and assistance to B&N the Licensee as the Licensee may reasonably consider necessary. The Licensee shall bear the costs of any such proceedings (including FAPL's reasonable costs of assistance therewith as set out above) and shall be entitled to retain any recovery therefrom
12.4 If at any time during the Term FAPL becomes aware that any other Person alleges that the use of the Topps Name and Logo in the Licensed Articles infringes any rights of another party FAPL shall immediately give to the Licensee full particulars in writing thereof and shall make no comment or admission to any third party in respect thereof. The Licensee will in consultation with FAPL take such steps as it considers reasonably necessary to defend any such allegation but shall not be obliged to take any steps if it decides in its authorized representatives absolute discretion not to do so
12.5 In the event that any third party infringes or attempts to infringe any rights in or in connection with the Materials which are the subject matter of joint copyright hereunder during the Term or at B&N’s expense any time thereafter until the expiry of all relevant copyrights any party which becomes aware of the same shall inform the other of such infringement or attempted infringement as soon as the relevant facts are known to it. If either party ("the first party") decides (in its absolute discretion) that proceedings shall be commenced it shall notify the other ("the second party") in writing of that decision and the second party (in the event that B&N decides it does not agree terms with the first party to participate as joint claimant in the said proceedings) shall at the request of the first party give full co-operation and provide all information and assistance to the first party as the first party may reasonably consider necessary. The first party shall bear the costs of any such proceedings (including the second party's reasonable costs of assistance therewith as set out above) and shall be entitled to retain any recovery therefrom
12.6 If at any time during the Term or at any time thereafter until the expiry of all relevant copyrights either party becomes aware that such Enforcement Proceedings should be commenced, including any other Person alleges that the use of the Materials which are the subject of joint copyright hereunder infringes any rights of another party that party shall immediately give to join the other full particulars in writing thereof and shall make no comment or be joined as a admission to any third party in respect thereof. The parties will in consultation with each other take such steps as they consider reasonably necessary to defend any such allegation and in the event of any dispute between the parties as to any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings taken neither party shall make any admission or compromise any proceedings arising therefrom or fail to take any step to defend any such Enforcement Proceedings, and BNED is joined allegation and/or proceedings arising therefrom without first giving written notice to the other party of their intention to do so such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are notice to be brought, B&N agrees given in sufficient time to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out give the notified party the opportunity to take such action as it may reasonably consider appropriate to restrain such admission compromise or failure to act. For the avoidance of or related doubt the contents of this clause shall be without prejudice to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability Licensee's indemnity given to BNED under FAPL pursuant to clause 9.1 and any legal theory indemnity given by reason of B&N’s failure or refusal FAPL pursuant to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.clause 10.1.12
Appears in 1 contract
Sources: Licensing Agreement (Topps Co Inc)
Infringement. 5.1. In the event that7.1 GTx shall inform UTRC and UTRC shall inform GTx, during the Term of this Agreement, BNED learns promptly in writing of any infringement or threatened alleged assertion and/or claim of infringement of the Licensed Marks, or dilution Patents by a third party in Third Party and of any available evidence thereof.
7.2 GTx shall have the U.S. with respect right, but shall not be obligated, to the Licensed Marks, BNED shall promptly notify B&N or prosecute at its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use own expense all infringements of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringementPatents and, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing furtherance of such Enforcement Proceedings. In additionright, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED UTRC hereby agrees that GTx may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined include UTRC as a party plaintiff in any Enforcement Proceedings such suit, without its prior written expense to UTRC. The total cost of any such infringement action commenced or defended by GTx shall be borne by GTx. After deduction of outstanding expenses, including attorneys fees of GTx, the balance remaining from any such recovery shall be divided equally between GTx and UTRC until UTRC shall have recovered in full any royalty payments to which it would have been otherwise entitled to receive hereunder, but for such infringement, and any remaining balance, if any, shall be retained by GTx. No settlement, consent, which judgment or other voluntary dismissal of such suits may be granted or withheld in its sole discretionentered into without the consent of UTRC, unless provided that such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any be unreasonably withheld and that UTRC shall not condition such consent on an increase in payments to UTRC hereunder.
7.3 If within six (6) months after having been notified of an alleged infringement, GTx has not brought or is not diligently prosecuting an infringement action, or make if GTx has notified UTRC at any admissions, that may affect the validity time prior thereto of its intention not to bring suit against any registration alleged infringement of the Exclusively Patents, then, and in those events only, UTRC shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Licensed MarksPatents, and UTRC may, for such purposes, use the name of GTx as party plaintiff. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the prior written consent of B&N.
5.3GTx, which consent shall not unreasonably be withheld. With respect After deduction of outstanding expenses of UTRC, including attorney fees and any expenses of GTx, including attorney fees incurred prior to any infringement or threatened UTRC's pursuit of such infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle balance remaining from any such Enforcement Proceedings recovery shall be at divided equally between GTx and UTRC.
7.4 In the exclusive option event that GTx undertakes the enforcement and/or defense of the Licensed Patents by litigation or an inter partes proceeding in the United States or a foreign country against a Third Party, GTx may withhold up to [ * ] of the payments otherwise thereafter due UTRC under Article 4 that are attributable to sales in the country where such litigation or inter partes proceeding takes place and expense apply the same toward reimbursement of B&Nup to half of GTx's expenses, and all recoveries shall belong exclusively to B&N. BNED shall including reasonable attorneys' fees, in connection therewith. GTx may not and shall have no right to initiate withhold any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense portion of the payments due UTRC under Article 4 in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in GTx undertakes the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution enforcement and/or defense of the Licensed Marks Patents by third partieslitigation or an inter partes proceeding in the United States or a foreign country against an Affiliate, nor a Joint Alliance Party or a Residual Alliance Party. Any recovery of damages by reason GTx for each such suit shall be applied first in satisfaction of any settlement unreimbursed expenses and legal fees of GTx relating to which B&N may agreesuch suit, provided and next toward reimbursement of UTRC for any payments under Article 4 past due or withheld and applied pursuant to this Article 7.
7.5 In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the Licensed Patents shall be brought against UTRC, GTx at its option shall have the right, within thirty (30) days after commencement of such settlement does not require a payment action, to intervene and take over the sole defense of money by BNEDthe action at its own expense.
Appears in 1 contract
Infringement. 5.18.4.1. If either Party becomes aware of any activity of any third party that involves or may involve infringement or other violation of either GS1 AISBL's rights or interests on and/or in the Global Marks or of the MO's rights on the Local Marks or Domain Names, such Party shall promptly notify the other Party of such activity,infringement or violation.
8.4.2. GS1 AISBL shall take whatever action it deems appropriate to protect or defend the Registered Global Marks against any invalidity claim, any infringing activities or other violation of its rights on the Registered Global Marks. The MO shall provide reasonable assistance to GS1 AISBL with respect to bringing any suchlegal ▇▇▇▇▇▇.▇▇ particular, the MO shall submit to GS1 AISBL any evidence of infringement that comes to the MO's knowledge and shall cooperate with GS1 AISBL to defend the Registered Global Marks. Where appropriate, GS1 AISBL may request the MO to join GS1 AISBL and become a party to any proceedings involving the Registered Global Marks. The MO shall not unreasonably withhold its consent. GS1 AISBL shall bear the costs of any proceedings pertaining to the defence of the Registered Global Marks. In the event thatthat GS1 AISBL decides not to institute proceedings to protect or defend a Registered Global Mark, during and notwithstanding the Term provisions of section 2.1 of this Agreement, BNED learns of any infringement or threatened infringement of the Licensed Marks, or dilution MO shall be entitled to institute such proceedings by a third party in the U.S. with respect itself subject to the Licensed Marksprior, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoingwritten and explicit consent of GS1 AISBL, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld▇▇▇▇▇▇▇▇.▇▇ that case, conditioned the MO shall handle such dispute in good faith and cooperation with GS1 AISBL and according to the guidance and recommendations of GS1 AISBL, if any. In particular, the MO shall not enter into any settlement agreement or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate any restriction of use or registration without GS1 AISBL's prior, written and bear explicit consent. The MO is entitled to seek reimbursement from GS1 AISBL of any reasonable legal costs borne by the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED MO for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control its defence of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNEDRegistered Global Mark, subject to the following: (x) B&N policy for refunding legal expenses agreed by the General Assembly and documented in the GS1 Operational Manual.
8.4.3. The MO shall not have any obligation to be joined as a party plaintiff take whatever action it deems appropriate, and,in any Enforcement Proceedings without event, whenever GS1 AISBLreasonably requests it, shall protect or defend the Local Marks or the Domain Names against any invalidity claim, any infringing activities or other violation of its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction rights in the jurisdiction in which Local Marks or the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related Domain Names. GS1 AISBL shall provide reasonable assistance to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party MO with respect to the Non-Exclusively Licensed bringing any such ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇.▇▇ against particular, GS1 AISBL shall submit to the MO any evidence of infringement that comes to GS1 AISBL’s knowledge and shall cooperate with the MO to defend the Local Marks or the Domain Names. GS1 AISBL shall not unreasonably withhold its consent. When the resolution of the disputes related to Local Marks may have an impact on any of the Global Marks, GS1 AISBL may decide to join the MO and become a third party to any proceedings involving the Local Marks. In any event,the MO shall handle such disputes in good faith and cooperation with GS1 AISBL and according to the guidance and recommendations of GS1 AISBL, if such joinder ▇▇▇.▇▇ particular, the MO shall not enter into any settlement agreement or consent to any restriction of use or registration without GS1 AISBL's prior, written and explicit consent. Where appropriate, the MO is required in order entitled to confer jurisdiction seek reimbursement from GS1 AISBL of any reasonable legal costs borne by the MO for the defence of the Local Marks and/or the Domain Names, subject to the policy for refunding legal expenses agreed by the General Assembly and documented in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement ProceedingsGS1 Operational Manual.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 1 contract
Sources: Intellectual Property and Data Management Agreement
Infringement. 5.1. In 7.1 The Licensee hereby undertakes to promptly notify the event that, during the Term of this Agreement, BNED learns Licensor of any notice or claim of infringement or threatened of any action for infringement of the Licensed Marks, or dilution patents brought against it by a third party in and based upon the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks Licensor' s Technology by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed MarksLicensee as permitted hereunder.
5.2. With respect to 7.2 In the event of any action for infringement or threatened infringement, or dilution of intellectual property rights brought against the Licensee by a third party with based upon a claim that the use of an invention claimed by Licensor' s Patents as they relate to Licensor' s Technology results in infringing a third party patent right (the " Action for Infringement" ), the Licensee shall have the right to suspend the payment of royalties in respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction sales made in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any Action for Infringement has been instituted and place the amount of such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction royalties in the jurisdiction in escrow until final judgement or until judgment from which the Enforcement Proceedings are period to file an appeal has expired. In the event the Action for Infringement is dismissed, all royalties placed by the Licensee in escrow, including any accrued interest, shall be broughtpaid forthwith to the Licensor. If, B&N agrees on the other hand, the Action for Infringement is allowed, then the Licensee shall be entitled to defend, retain all royalties placed by it in escrow and the Licensor is to indemnify and hold harmless BNED for keep indemnified the Licensee from and against all lossescosts, costsexpenses, liabilities and expenses arising out damages suffered or incurred by the Licensee resulting from such claim and royalties paid or to be paid to such third party and, at the Licensee' s option, terminate this agreement forthwith.
7.3 Each party shall promptly upon notice advise the other in writing of any acts of infringement of the Licensor' s Technology and the Patents by a third party. The Licensee may institute and prosecute any proceedings to restrain infringement or related defend declaratory judgment actions relating to any rights of the parties in respect of the Licensor' s Technology provided the cost and expense of such proceedings shall be borne by Licensor. The Licensor may participate in such proceedings or actions, upon notice to the bringing of such Enforcement ProceedingsLicensee to that effect. In addition, if B&N requested by Licensee and necessary to prosecute the proceedings or action, the Licensor agrees to be made party to any such proceedings or action, at Licensor' s expense. It is understood and agreed that any financial settlement resulting from such a lawsuit shall paid to the Licensor after deduction therefrom of all costs and expenses incurred by Licensee in pursuing such prosecutions or actions. If the Licensee elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any actionlegal action against an infringing third party, or make any admissionsthen the Licensor has the right but not the obligation to take such legal action and, that may affect in such a case, the validity of any registration of Licensor would pay all legal costs and would retain the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason entire amount of any settlement to which B&N may agree, provided obtained from such settlement does not require a payment of money by BNEDthird party.
Appears in 1 contract
Sources: Technology License Agreement (First American Scientific Corp \Nv\)
Infringement. 5.1. In 8.1 Each party shall promptly give written notice to the event that, during other party of: (i) any suspected infringement of a Licensed Technology; (ii) the Term threat of this Agreement, BNED learns or filing of any infringement declaratory judgment action by a third party alleging the invalidity, unenforceability, or threatened non-infringement of the Licensed Marks, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed MarksTechnology.
5.2. With respect 8.2 LICENSEE shall have the first right (but not the obligation) to any infringement notify an entity or threatened infringement, or dilution by a third party with respect to individual of using the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related Trade Secrets and initiate legal proceedings (collectivelyto ▇▇▇▇▇ the infringement of a Licensed Technology within LICENSEE'S Field of Use, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including Knight agrees to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consentsuch lawsuit initiated by LICENSEE, which may be granted or withheld in its sole discretionif requested to do so by LICENSEE, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are with all costs, attorneys' fees, and expenses of Knight to be brought, paid by LICENSEE. Should LICENSEE elect not to institute such an action to enforce the Licensed Technology against infringement within LICENSEE's Field of Use within ninety (y90) if BNED brings any days after receipt of written notice from Knight of Knight's intention to bring suit for such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution Knight shall have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE shall have the right to participate at its own expense in any action brought by a third party with respect Knight.
8.3 If LICENSEE leads proceedings to the Non-Exclusively Licensed ▇▇▇▇▇ and remedy infringement, B&N any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall have exclusive control first be applied to reimburse LICENSEE's unreimbursed expenses of any Enforcement Proceedings relating such proceedings and then Knight's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys’ fees and court costs. If Knight leads proceedings to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring▇ and remedy infringement, maintain or settle any such Enforcement Proceedings monetary recovery from the infringement of Licensed Technology shall be at the exclusive option and expense first applied to reimburse Knight's unreimbursed expenses of B&Nsuch proceedings, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any then LICENSEE’s unreimbursed expenses of such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commencedproceedings, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be broughtwithout limitation, reasonable attorneys’ fees and court costs. If B&N brings any such Enforcement ProceedingsAny remainder shall, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings.
5.4. B&N shall incur no liability extent the same pertains to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged an infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNEDTechnology shall be divided between the LICENSEE and Knight as mutually agreed.
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Infringement. 5.1. In 7.1 Each PARTY shall inform the event that, during other PARTY promptly in writing of any alleged infringement of PATENT RIGHTS by a third party and any available evidence thereof.
7.2 During the Term term of this Agreement, BNED learns LICENSEE shall have the first right, but shall not be obligated to prosecute at its own expense, all infringements or misappropriations of any infringement TECHNOLOGY. LICENSEE may, for such purposes, include CURF as party plaintiff, if necessary, without expense to CURF. No settlement, consent judgment or threatened infringement other voluntary final disposition of the Licensed Markssuit may be entered into without the consent of CU RF, or dilution by a third party in the U.S. with respect to the Licensed Marks, BNED shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use of the Licensed Marks by third parties to which it has not granted a sub-license with respect to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation of Enforcement Proceedings by BNED (which consent shall not unreasonably be unreasonably withheld, conditioned . The total cost of any such infringement or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought misappropriation action commenced or defended solely by B&N at BNED’s request LICENSEE shall be at the expense of BNEDborne by LICENSEE, and the Parties LICENSEE shall equally share in the keep any recovery of or damages for past infringement or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, misappropriation derived therefrom subject to the following: payment of a percentage on any recoveries net of costs and expenses as an "other payment" in accordance with Section 4.l (xe). LICENSEE shall indemnify CURF against any order for costs that may be made against CURF in such proceedings.
7.3 If within three (3) B&N months after having been notified of any alleged infringement, LICENSEE is unsuccessful in persuading the alleged infringer to desist and has not brought or is not diligently pursuing an infringement action or if LICENSEE notifies CURF at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, CURF shall have the right, but shall not have any obligation be obligated, to be joined prosecute at its own expense all infringements or misappropnat10ns of TECHNOLOGY and CURF may, for such purposes, include LICENSEE as a party plaintiff in any Enforcement Proceedings such suit, without its prior written consentexpense to LICENSEE. The total cost of such infringement action commenced or defended solely by CURF shall be borne by CURF and CURF shall keep any recovery or damages for past infringement derived therefrom.
7.4 In the event that LICENSEE shall undertake the enforcement and/or defense of the TECHNOLOGY by litigation, which LICENSEE may withhold up to fifty percent (50%) of the payments otherwise due CURF under Article 4 hereunder and apply the same toward payment of up to half of LICENSEE's expenses, including reasonable attorney ' s fees, in connection therewith. LICENSEE shall modify the Royalty Report form to reflect any withholdings. Any recovery of damages by LICENSEE for each such suit shall be granted applied first in satisfaction of any unreimbursed expenses and legal fees of LICENSEE relating to such suit, and next toward reimbursement of CURF for any payments under Article 4 past due or withheld in its sole discretion, unless such joinder is required in order and applied pursuant to confer jurisdiction in this Section 7.4. LICENSEE shall keep the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings balance remaining from any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related recovery subject to the bringing payment of such Enforcement Proceedings, and a percentage as an "other payment" in accordance with Section 4.l (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.e).
5.3. With respect to 7.5 In any infringement or threatened infringementmisappropriation suit that either PARTY may institute to enforce the PATENT RIGHTS pursuant to this Agreement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇other PARTY hereto shall, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option request and expense of B&Nthe PARTY initiating such suit, cooperate in all respects and, to the extent possible, have its employees testify when requested and all recoveries shall belong exclusively to B&N. BNED shall not make available relevant records, papers, information, samples, specimens and the like.
7.6 LICENSEE, during the exclusive period of this Agreement, shall have no the sole right in accordance with the terms and conditions herein to initiate sublicense any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in alleged infringer for the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined FIELD OF USE for future use of the PATENT RIGHTS. Any upfront fees as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing pai1 of such Enforcement Proceedingsa sublicense shall be treated pursuant to Article 4.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
Appears in 1 contract
Sources: Settlement and Patent License Agreement (Organovo Holdings, Inc.)
Infringement. 5.1. In 7.1 Each party shall promptly report in writing to the event that, other party during the Term of this Agreement, BNED learns of Agreement any infringement or threatened suspected infringement of any patent, or unauthorized use or misappropriation of the Licensed Marks, Technology or dilution Know-how by a third party in within the U.S. Territory, or any country(s) designated by Licensee, of which it becomes aware, and shall provide the other party with respect to the Licensed Marksall available evidence supporting such infringement, BNED shall promptly notify B&N suspected infringement, or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use or misappropriation.
7.2 Except as provided in Paragraph 7.3, Licensee shall have the right to initiate an infringement suit or other appropriate action against any third party who at any time has infringed or is suspected of infringing any of the Patents or of using without proper authorization all or any portion of the Licensed Marks Technology or Know-how within the Territory, or any country(s) designated by third parties Licensee. Licensee shall give Company sufficient advance written notice of its intent to which it initiate such action and the reasons therefor, and shall provide Company with an opportunity to make suggestions and comments regarding such action. Licensee shall keep Company promptly informed of the status of any such action. Licensee shall have the sole and exclusive right to select counsel for and shall pay all expenses of such action. Company shall offer reasonable assistance to Licensee at no charge to Licensee except for reimbursement of reasonable out-of-pocket expenses. Licensee may settle any such action subject to prior approval of Company. Any damages, profits or awards of whatever nature recovered from such action shall be treated as Net Sales under this Agreement after Licensee has not granted a sub-license with respect to the Exclusively Licensed Marksbeen compensated for its costs in handling such action.
5.2. With respect to any infringement or threatened 7.3 In the event that Licensee does not within six (6) months (a) secure cessation of the infringement, or dilution (b) enter suit against the infringer, or (c) provide Company with evidence of the pendency of a bona fide negotiation for the acceptance by the infringer of a third party sublicensee under this Agreement, Company shall thereafter have the right, but not the obligation, to convert Licensee’s exclusive License in Paragraph 2.2 hereunder to a non- exclusive License and/or to take action against the infringer at Company’s own expense. Licensee shall offer reasonable assistance to Company in connection with respect such action at no charge to Licensee except for the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related legal proceedings (collectively, “Enforcement Proceedings”) or provide prior written consent to the initiation reimbursement of Enforcement Proceedings by BNED (which consent shall not be unreasonably withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings)reasonable out-of-pocket expenses. Any such Enforcement Proceedings brought by B&N at BNED’s request shall be at the expense damages, profits, or awards of BNED, and the Parties shall equally share in the recovery of damages or compensation resulting whatever nature recovered from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation action shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect to initiate Enforcement Proceedings after receiving BNED’s written request but consents to the initiation of Enforcement Proceedings by BNED, then (i) BNED may initiate such proceedings, (ii) shall have exclusive control of the Enforcement Proceedings, (iii) any decision to maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of BNED, and (iv) all recoveries shall belong exclusively to BNED, subject to the following: (x) B&N shall not have any obligation to be joined as a party plaintiff in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement ProceedingsCompany.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
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Infringement. 5.1. In the event that7.1 GENERAL will protect its PATENT RIGHTS from infringement and prosecute infringers when, during the Term of this Agreementin its sole judgement, BNED learns of any infringement or threatened such action may be reasonably necessary, proper and justified.
7.2 If COMPANY shall have supplied GENERAL with written evidence demonstrating to GENERAL’s reasonable satisfaction prima facie infringement of the Licensed Marks, or dilution a claim of a PATENT RIGHT by a third party in party, COMPANY may by notice request GENERAL to allow COMPANY to initiate legal proceedings against the U.S. with respect to the Licensed Marks, BNED infringer at COMPANY’s expense. GENERAL shall promptly notify B&N or its authorized representative giving particulars thereof. Notwithstanding the foregoing, BNED is not obligated to monitor or police unauthorized use COMPANY within two (2) months of the Licensed Marks by third parties receipt of such notice whether GENERAL will allow COMPANY to which it has not granted a sub-license with respect initiate legal proceedings, and if GENERAL so decides, COMPANY may, upon notice to the Exclusively Licensed Marks.
5.2. With respect to any infringement or threatened infringementGENERAL, or dilution by a third party with respect to the Exclusively Licensed Marks, BNED may request that B&N bring litigation, opposition, cancellation or related initiate legal proceedings (collectivelyagainst the infringer at COMPANY’s expense and in GENERAL’s name if so required by law. No settlement, “Enforcement Proceedings”) consent judgment or provide prior written other voluntary final disposition of the suit which invalidates or restricts the claims of such PATENT RIGHTS may be entered into without the consent to the initiation of Enforcement Proceedings by BNED (GENERAL, which consent shall not be unreasonably unreasonable withheld, conditioned or delayed if B&N elects not to initiate Enforcement Proceedings). Any such Enforcement Proceedings brought by B&N at BNED’s request COMPANY shall indemnify GENERAL against any order for payment that may be at the expense of BNED, and the Parties shall equally share made against GENERAL in the recovery of damages or compensation resulting from such Enforcement Proceedings. If B&N initiates Enforcement Proceedings and BNED declines to bear the expense, any resulting damages or compensation shall belong solely to B&N. In any such Enforcement Proceedings, BNED shall nevertheless provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense, including to join or be joined as a party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings that are not at BNED’s request, and BNED does not consent to participate and bear the expense and is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings. In addition, if B&N elects to bring Enforcement Proceedings, whether at BNED’s request or otherwise, B&N shall have exclusive control of the Enforcement Proceedings, including any decision to maintain or settle such proceedings. If B&N does not elect however, GENERAL notifies COMPANY within said two (2) month period that it intends to initiate Enforcement Proceedings after receiving BNED’s written request but consents prosecute such alleged infringer at its expense, GENERAL shall, within three (3) months of its notice to the initiation of Enforcement Proceedings by BNED, then COMPANY either (i) BNED may initiate such proceedings, cause infringement to terminate or (ii) initiate legal proceedings against the infringer.
7.3 In the event one party shall initiate or carry on legal proceedings to enforce any PATENT RIGHT against any alleged infringer, the other party shall fully cooperate with and supply all assistance reasonably requested by the party initiating or carrying on such proceedings. The party which institutes any suit to protect or enforce a PATENT RIGHT shall have exclusive sole control of that suit and shall bear the Enforcement Proceedings, reasonable expenses (iiiexcluding legal fees) any decision incurred by said other party in providing such assistance and cooperation as is requested pursuant to maintain this paragraph. The party initiating or settle any carrying on such Enforcement Proceedings legal proceedings shall keep the other party informed of the progress of such proceedings and said other party shall be entitled to counsel in such proceedings but at its own expense. Any award paid by third parties as the exclusive option result of such proceedings (whether by way of settlement or otherwise) shall first be applied to reimbursement of the unreimbursed legal fees and expense of BNED, expenses incurred by either party and (ivthen the remainder shall be divided between the parties as follows: ) all recoveries shall belong exclusively to BNED, subject [**]%) percent to the following: (xparty initiating such proceedings and [**]%) B&N percent to the other party.
7.4 For the purpose of the proceedings referred to in this Article 7, the GENERAL and COMPANY shall not have any obligation permit the use of their names and shall execute such documents and carry out such other acts as may be necessary. The party initiating or carrying on such legal proceedings shall keep the other party informed of the progress of such proceedings and said other party shall be entitled to counsel in such proceedings but at its own expense, said expenses to be joined as a off-set against any damages received by the party plaintiff bringing suit in any Enforcement Proceedings without its prior written consent, which may be granted or withheld in its sole discretion, unless such joinder is required in order to confer jurisdiction in accordance with the jurisdiction in which the Enforcement Proceedings are to be brought, (y) if BNED brings any such Enforcement Proceedings and B&N is joined to such Enforcement Proceedings without its consent solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, BNED agrees to defend, indemnify and hold harmless B&N for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedings, and (z) BNED shall not take any action, or make any admissions, that may affect the validity of any registration of the Exclusively Licensed Marks, without the prior written consent of B&N.
5.3. With respect to any infringement or threatened infringement, or dilution by a third party with respect to the Non-Exclusively Licensed ▇▇▇▇, B&N shall have exclusive control of any Enforcement Proceedings relating to the Non-Exclusively Licensed ▇▇▇▇. The decision whether to bring, maintain or settle any such Enforcement Proceedings shall be at the exclusive option and expense of B&N, and all recoveries shall belong exclusively to B&N. BNED shall not and shall have no right to initiate any such Enforcement Proceedings in its own name, and BNED shall provide necessary information and assistance to B&N or its authorized representatives at B&N’s expense in the event that B&N decides that such Enforcement Proceedings should be commenced, including to join or be joined as a party in any action taken by B&N to enforce its rights in the Non-Exclusively Licensed ▇▇▇▇ against a third party if such joinder is required in order to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought. If B&N brings any such Enforcement Proceedings, and BNED is joined to such Enforcement Proceedings solely to confer jurisdiction in the jurisdiction in which the Enforcement Proceedings are to be brought, B&N agrees to defend, indemnify and hold harmless BNED for all losses, costs, liabilities and expenses arising out of or related to the bringing of such Enforcement Proceedingsforegoing paragraph 7.3.
5.4. B&N shall incur no liability to BNED under any legal theory by reason of B&N’s failure or refusal to prosecute or otherwise commence Enforcement Proceedings with respect to, any alleged infringement or dilution of the Licensed Marks by third parties, nor by reason of any settlement to which B&N may agree, provided such settlement does not require a payment of money by BNED.
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