Infringement. (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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment. (b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: System Equipment Purchase Agreement (Leap Wireless International Inc)
Infringement. (a) The Vendor agrees that it 10.1 PracSys shall defend, hold harmless and indemnify NASI from and hold harmless, at its own expense, against any and all suits liability and claims against the Owner for infringement or violation of any patent, trademark, copyright, trade secret or other intellectual property rights expense by reason of any third party enforceable claim, suit, action or proceeding for infringement of any third party proprietary rights including, but not limited to, copyrights, trade secrets rights, or patents arising in connection with the United States or in any other territory where Vendor has approved the deployment manufacture, installation, sale or use of Products under this Contract (collectivelythe Equipment including any and all judgments or decrees which may be rendered against NASI and reasonable attorney's fees and settlements made arising out of any such claim, "Intellectual Property Rights")suit, coveringaction, 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 Agreementproceeding, 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 that:
10.1.1 PracSys 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable responsible for any settlement of any such claim, suit, action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal)or proceeding made without its prior written consent, and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.which shall not unreasonably be withheld;
(b) The Vendor's obligation under this subsection 10.1.2 This indemnity shall not extend to any alleged infringements infringement based upon the combination of the Equipment or violations that arise because the Products provided by the Vendor are used in combination any portion thereof with other products items or things not furnished hereunder unless PracSys (a) knew of NASI's specific intention to combine the Equipment or any portion thereof with a specific item and (b) in connection therewith PracSys may be held reasonably to have been aware that such a combination would constitute an infringement and PracSys did not so advise NASI; and
10.1.3 This indemnity shall not extend to any alleged infringement based upon a modification to the Equipment by third parties NASI unless PracSys directs that the modification be made or unless Pracsys (a) knew of NASI's specific intention to modify the Equipment or any portion thereof and where (b) in connection therewith PracSys may be held reasonably to have been aware that such a modification would cause an infringement and Pracsys did not so advise NASI.
10.2 PracSys shall defend at its own expense all suits, actions or proceedings brought against NASI with respect to the matters listed in paragraph 10.1 above. NASI shall have the right, at its option and at its sole expense, to participate in the defense of any such combination was not installedclaim, recommended suit, action or approved proceeding, without relieving PracSys of any obligation hereunder. NASI shall promptly notify PracSys in writing after any such claim is made or suit is brought and shall cooperate with PracSys in writing after any such claim is made or suit is brought and shall cooperate with PracSys, and PracSys agrees to reimburse NASI for its reasonable out-of-pocket expenses incurred in connection with such cooperation, provided PracSys has agreed to the nature of the cooperation in advance. *** REDACTED PORTION. CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL HAS BEEN SEPARATELY FILED WITH THE COMMISSION.
10.3 If, however, as a consequence of a final determination of any suit for infringement or any court decision involving any injunction resulting from or arising in connection with the manufacture, sale or use of the Equipment or any part thereof furnished or employed by PracSys hereunder, NASI is enjoined or limited in any material manner in the Vendoruse of said Equipment or material part thereof, PracSys shall, at its option and at its own expense.
10.3.1 Procure for NASI the right to continue use of said Equipment or part; or
10.3.2 So modify the Equipment or part as to render it non-infringing without any significant effect on the use thereof; or
10.3.3 Replace the Equipment or part with a materially equivalent non-infringing product.
10.4 In the event PracSys is unable, after diligent good faith efforts, to provide any of the remedies provided for in clauses 10.3.1 through 10.3.3 hereof, PracSys may in fulfillment of its obligation under this paragraph remove such Equipment or part and refund to NASI the purchase price thereof.
10.5 THIS PARAGRAPH SETS FORTH THE SOLE OBLIGATIONS OF PracSys AND ITS SUBCONTRACTORS AND AFFILIATES, AND THE EXCLUSIVE REMEDIES OF NASI, WITH RESPECT TO INFRINGEMENT OF THIRD PARTY PROPRIETARY RIGHTS. IN NO EVENT SHALL PracSys OR ITS SUBCONTRACTORS OR AFFILIATES BE LIABLE TO NASI FOR LOSS OF USE, REVENUE, OR PROFIT OR ANY OTHER DIRECT, INDIRECT, INCIDENTAL OR CONSEQUENTIAL DAMAGES ARISING FROM ANY SUCH INFRINGEMENT.
Appears in 1 contract
Infringement. (a) The Vendor agrees that it Each party shall defend, indemnify and hold harmless, at its own expense, all suits and claims against promptly report in writing to the Owner for other party during the Term of this Agreement any known infringement or violation suspected infringement of any patentof the CIMA Patents in the Territory by manufacture, trademarkuse or sale of a Product on a commercial scale in derogation of the rights granted to WCH hereunder (hereinafter, copyrighta "Related Infringement") of which it becomes aware, trade secret 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 intellectual property rights 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 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 third party enforceable 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 the United States or in any other territory where Vendor has approved the deployment or use of Products under this Contract subsection (collectivelyb) above and shall, "Intellectual Property Rights")except as provided below, covering, or alleged to cover, the Products or any component thereof. The Vendor agrees that it shall pay all sumsexpenses of the suit, including without limitation, reasonable limitation attorneys' fees and other costs incurred at Vendor's written request or authorization, whichcourt costs. WCH, in defense of, by final judgment or decree, or in settlement of any suit or claim to which the Vendor agreesits sole discretion, may be assessed againstelect, or incurred by, within sixty (60) days after the Owner commencement of such litigation on account of such infringement or violationa Related Infringement, 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") contribute 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 costs incurred by CIMA 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 entitledconnection 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 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 (i50%) unless CIMA has consented to defend a higher share in writing. In the event that WCH elects not to contribute to the costs of such lawsuit litigation, CIMA shall be entitled to retain any damages, royalties, settlement fees or actionother consideration for infringement resulting therefrom. If necessary, (ii) WCH shall join as a party to employ 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 engage attorneys of be represented in any such suit by its own choice counsel at its own expense. CIMA shall not settle any such suit on terms which grant any license to handle and defend any other party in derogation of the same, at rights granted to WCH hereunder without obtaining 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 prior written consent of the Owner (WCH, which may consent shall not be unreasonably withheld.
(d) In the event that CIMA elects not to initiate an 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), unless CIMA shall promptly advise WCH of its intent not to initiate such compromise or settlement includes an unconditional release of any claims against the Owner in which event such written consent of the Owner a suit, WCH 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 undertakeright, at the Vendor's cost and expenseexpense of WCH, of initiating an infringement or other appropriate suit against the defense, compromise party or settlement of parties committing such Claim on behalf of and for the account and risk of the VendorRelated Infringement. 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 defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected exercising its rights pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.subsection
Appears in 1 contract
Infringement. (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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: System Equipment Purchase Agreement (Leap Wireless International Inc)
Infringement. 8.1 Each party shall promptly give written notice to the other party of: (ai) The Vendor any suspected infringement of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment action by a third party alleging the invalidity, unenforceability, or noninfril). gement of the Licensed Technology.
8.2 LICENSEE shall have the first right (but not the obligation) to notify an entity or individual of using the Trade Secrets and initiate legal proceedings to ▇▇▇▇▇ the infringement of a Licensed Technology within LICENSEE'S Field of Use. Avalon agrees that it to join as a party plaintiff in any such lawsuit initiated by LICENSEE, if requested to do so by LICENSEE, with all costs, attorneys' fees, and expenses of Avalon to be 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 (90) days after receipt of written notice from Avalon of Avalon's intention to bring suit for such infringement, Aval on shall defend, indemnify and hold harmless, have the right (but not the obligation) at its own expenseexpense to take those steps on behalf of itself and LICENSEE, all suits and claims against provided that LICENSEE shall have 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 right to participate at its own expense in any other territory where Vendor has approved action brought by Avalon.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the deployment or use infringement of Products under this Contract (collectively, "Intellectual Property Rights"), covering, or alleged Licensed Technology received by LICENSEE shall first be applied to cover, the Products or any component thereof. The Vendor agrees that it shall pay all sumsreimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and other costs incurred at Vendorcourt costs. If Avalon leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology shall be first applied to reimburse Avalon'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 unreimbursed expenses of such infringement or violationproceedings, provided that the Owner shall cooperate in all reasonable respects with the Vendor and its attorneys in the investigation, trial and defense then LICENSEE's unreimbursed expenses of such lawsuit or action proceedings, including without limitation, reasonable attorneys' fees and any appeal arising therefrom; providedcourt costs. Any remainder shall, 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 extent the party entitled same pertains 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 an infringement 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 Licensed Technology shall be given to divided between the Vendor LICENSEE and Avalon 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentmutually agreed.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Infringement. (a) The Vendor agrees If NetYantra becomes aware that it shall defenda third party may be infringing or threatening to infringe the intellectual property rights in the Products, indemnify and hold harmlessincluding, at its own expense, all suits and claims against the Owner for infringement or violation of any patent, trademark, copyright, trademark and trade secret rights ("Products IP Rights") within the Territory, NetYantra shall provide prompt written notice thereof to Vistula, which notice shall set forth the facts known to Vistula concerning such infringement or other intellectual property rights threatened infringement (the "Infringement Notice"). If NetYantra becomes aware that a third party may be infringing or threatening to infringe the Product IP Rights within the Territory, whether by way of an Infringement Notice or otherwise and the exclusive nature of the appointment of Vistula as a distributor of the Products in the Territory has not been terminated pursuant to Section 2.5, Vistula shall have the sole and exclusive right, but not the obligation, to initiate and/or pursue legal proceedings against such third party at Vistula's sole expense. Any damage, cost, award fee, recovery, or compensation paid by any third party enforceable in connection with any legal proceeding initiated and/or pursued at Vistula's expense (whether by way of settlement or otherwise) shall be retained by Vistula. In the United States event that Vistula desires to initiate or pursue, initiates or pursues any legal proceeding against a third party to enforce or protect the Product IP Rights within the Territory, NetYantra shall fully cooperate with and supply all assistance reasonably requested by Vistula in any other territory where Vendor has approved connection therewith. Vistula shall have sole and absolute control of the deployment or use proceeding and shall bear all reasonable expenses and legal fees incurred by NetYantra in providing such cooperation and assistance as Vistula may reasonably request. For the purposes of Products under this Contract (collectivelySection 3.6, NetYantra shall only be "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 aware" of any suit infringement or claim to which threatened infringement of the Vendor agreesProduct IP Rights if any member of the senior management of NetYantra including ▇▇▇▇▇▇▇ ▇▇▇▇▇, may be assessed against, or incurred by, the Owner on account ▇▇▇▇▇ ▇▇▇▇▇▇ and ▇▇▇▇▇ ▇▇▇▇▇ has actual knowledge 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 threatened infringement of the Owner Product IP Rights unless such member of senior management, 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 his 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 her reasonable opinion does not consider such alleged infringement or infringement constitutes actual infringement or threatened infringement 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 Product IP Rights for the account and risk purposes 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 defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentSection 3.6.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: Distribution and Marketing Agreement (Vistula Communications Services Inc)
Infringement. (a) The Vendor agrees that it shall defend, indemnify and hold harmlessthe Companies, at its own expenseand their respective officers, directors, employees, affiliates, agents and assigns of each of the Companies (collectively, the “Company Indemnified Parties”) harmless from and against any and all suits and Losses based on or arising from claims against that the Owner for infringement Products, the Work or violation of any components thereof infringe, misappropriate or violate any patent, trademark, copyright, trade secret or other intellectual property rights right of any third party which is enforceable in the United States or in where any other territory where Vendor has approved the deployment Person is permitted to deploy or use of the Products under this Contract Agreement (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 Company Indemnified Parties involved shall cooperate cooperate, at Vendor’s expense, 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 reasonably 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 any Company Indemnified Parties 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. Notwithstanding the foregoing, the Company Indemnified Parties may, at their own cost, participate in the investigation, trial and defense of such lawsuit or action and any appeal arising therefrom; provided, however, that if Vendor assumes the defense of such lawsuit, action or investigation and any appeals and continues to pursue the defense of such lawsuit, action or investigation to conclusion and fulfills all of Vendor’s obligations in this Section 13, Vendor shall have sole control over the defense and settlement negotiations thereof (subject to the provisions of this Section 13) and while Vendor is defending such lawsuit, action or investigation Vendor shall not be liable for any settlements entered into or expenses/costs incurred by any Company without Vendor’s prior written approval. The parties shall cooperate with each other in any notifications to insurers. 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 reasonably 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 ’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 Company Indemnified Parties involved (which may not be unreasonably withheld), unless such compromise or settlement includes an unconditional release of any claims against the Owner Company Indemnified Parties, includes no restrictions on the operations of the Company Indemnified Parties and admits no wrongdoing by any Company Indemnified Parties in which event such written consent of the Owner Company Indemnified Parties 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, or assumes such defense but thereafter abandons such defense, the Owner Company Indemnified Parties 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 ’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 any Company Indemnified Parties assume the defense of the ClaimClaim due to the Vendor’s failure to assume the defense of such claim within fifteen (15) calendar days, the Owner such Company Indemnified Parties will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement or compromise of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner Company Indemnified Parties from and against any Losses by reason of such settlement or judgment.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: System Equipment Purchase Agreement (Leap Wireless International Inc)
Infringement. (a) The Vendor agrees If a third party makes, uses or sells a XENOGRAFT PRODUCT that it infringes any of the NOVARTIS PATENTS under which LOXO is licensed, LOXO shall defend, indemnify have the right and hold harmlessoption but not the obligation to bring an action for infringement, at its own sole expense, all suits against such third party in the name of LOXO, and claims against to join the Owner for infringement or violation owner of the NOVARTIS PATENT as a party plaintiff if required. LOXO shall promptly notify NOVARTIS of any patentsuch infringement and shall keep NOVARTIS informed as to the prosecution of any action for such infringement and shall not institute any infringement action without providing NOVARTIS with thirty (30) days prior written notice. No settlement, trademark, copyright, trade secret consent judgment or other intellectual property voluntary final disposition of the suit may be entered into without the consent of NOVARTIS, which consent shall not unreasonably be withheld. The 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 granted under this Contract (collectively, "Intellectual Property Rights"), covering, or alleged Section 7.1 are subject to cover, the Products or terms and conditions of the THIRD PARTY AGREEMENTS with respect to NOVARTIS PATENTS licensed under THIRD PARTY AGREEMENTS. Any recovery of damages by LOXO for any component thereofsuch suit shall be applied first in satisfaction of obligations under THIRD PARTY AGREEMENTS. The Vendor agrees that it shall pay all sumsbalance, including without limitationif any, 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 remaining 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 such recovery 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 Vendorretained by LOXO.
7.2. In the event that LOXO elects not to pursue an action for infringement pursuant to Section 7.1, or does not do so within sixty (60) days after written notice by NOVARTIS that an unlicensed third party is an infringer of a NOVARTIS PATENT licensed to LOXO, NOVARTIS or its licensor(s) shall have the Owner assumes right and option, but not the defense obligation at its cost and expense to initiate infringement litigation and to retain any recovered damages.
7.3. In any infringement suit either PARTY may institute to enforce the NOVARTIS PATENTS pursuant to this Agreement, the other PARTY hereto shall, at the request of the ClaimPARTY 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. All reasonable out-of-pocket costs of the other PARTY incurred in connection with rendering such cooperation shall be paid by the requesting PARTY.
7.4. In the event of the institution of any suit by a third party against LOXO, its AFFILIATES or their licensees involving the manufacture, use, sale, distribution or marketing of any XENOGRAFT PRODUCT in the TERRITORY, LOXO shall promptly notify NOVARTIS in writing of such suit. During the pendency of such action, all royalties due hereunder shall continue to be paid by LOXO. LOXO shall have full responsibility for the payment of any award for damages, or any amount due pursuant to any settlement entered into by LOXO with such third party.
7.5. In any infringement suit either PARTY may institute to enforce patents pursuant to this Agreement, the Owner will other PARTY hereto shall, at the request 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. All reasonable out-of-pocket costs of the other PARTY incurred in connection with rendering such cooperation shall be paid by the requesting PARTY. In addition, such PARTY shall keep the Vendor reasonably informed of the progress other PARTY advised of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentlitigation.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Infringement. (a) The Vendor agrees that it shall defend, indemnify and hold harmless, at its own expense, all suits and claims against Subject to clause 9.2(b):
(i) if under the Owner for Project Legislation an infringement notice is caused to be served but further proceedings are not taken in respect of the relevant offence (or violation of any patent, trademark, copyright, trade secret or other intellectual property rights of any third party enforceable in alleged offence under 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"Project Legislation), covering, or alleged as a result of the payment of an amount sufficient to coverexpiate the notice, the Products or any component thereof. The Vendor agrees that it State shall pay all sumsto Project Co an amount equal to the “TU Amount” (as determined and re-determined) under clause 9.2 of the Concession Deed (TU Amount) within 20 Business Days of that payment;
(ii) Project Co shall, including without limitationhowever, reasonable attorneys' fees refund any amount so paid to it in accordance with clause 9.2(a)(i) within 5 Business Days of its being requested by the State to do so if the relevant infringement notice is withdrawn by the enforcement officer under the Project Legislation;
(iii) the State and other costs incurred at Vendor's written request or authorization, which, Project Co will adjust for any GST payable in defense of, by final judgment or decree, or respect of the TU Amount in settlement accordance with the same procedure as set out in clause 9.2(ra) of any suit or claim the CityLink Concession Deed; and
(iv) Project Co will not be entitled to TU Amounts in respect of a WGT/CityLink Trip in relation 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 Company 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentalready received TU Amounts.
(b) The Vendor's obligation If there has been a termination of the CityLink Concession Deed or an expiry of the Concession Period (as defined in the CityLink Concession Deed) prior to the expiry of the Term, the TU Amount will be the same as it was immediately prior to that termination or expiry, except that:
(i) the elements of the TU Amount which were subject to indexation under this subsection shall the CityLink Concession Deed will continue to be indexed on the same basis; and
(ii) the State may make any determination or redetermination in relation to the elements of the TU Amount not extend subject to alleged infringements indexation, on the same basis that it would have been entitled to make that determination or violations redetermination under clause 9.2(r) of the CityLink Concession Deed immediately prior to that arise because termination or expiry. M80 – West Gate Fwy to Greensborough Bypass Minus Sunshine Ave-Calder Fwy Section Widening (to 6 or 8 Lanes) M80 - Tullamarine Fwy to ▇▇▇▇▇▇ Vale Rd New Exit Ramp to ▇▇▇▇▇▇ Vale Rd (2 Lanes) Dingley Arterial West - Warrigal Rd to ▇▇▇▇▇▇▇ ▇▇ New Route (6 Lanes Divided); Includes Duplication of South Rd Extension Tullamarine Freeway - Mickleham Road to M80 Widening (6 Lanes) Tullamarine Freeway - Melbourne Airport to Mickleham Road Widening (6 Lanes) Eastern Freeway - North-East Link to Doncaster Rd Widening (10 Lanes) Eastern Freeway - Doncaster Rd to Springvale Rd Widening (8 Lanes) CityLink/Tullamarine Widening Project Widening (8 to 11 Lanes) M80 - Sunshine Ave to Calder Fwy Section Widening (to 8 Lanes) Calder Freeway - Keilor Park Dr to ▇▇▇▇▇▇ Hwy Widening (6 lanes divided) North-East Link New route (6-8 lane motorway) EastLink - Maroondah Hwy to Dingley Arterial Widening (8 lanes) Outer Melbourne Ring Road - Ballan Rd to East- West Freeway New route (4 lane motorway) Outer Western Motorway - OMR to Deer Park Bypass New route (4 lane motorway) Dingley Arterial - South Gippsland Hwy to South Gippsland Fwy New route (6 lanes divided) South Gippsland Fwy/Monash Fwy Interchange Ramp New ramp (south to east) Mornington Peninsula Fwy - EastLink to Springvale Rd Widening (6 lanes) Western Port Hwy - North Rd to ▇▇▇▇▇▇ Tooradin Rd Duplication (4 lanes divided) Western Fwy - ▇▇▇▇▇▇▇ ▇▇ to Leakes Rd Widening (6 lanes) Tullamarine Freeway - Melbourne Airport to OMR New route (6 lane motorway) Melbourne Metro Rail Project Metropolitan train service between South Kensington to South Yarra Airport Rail Link Metropolitan train service to airport Western Freeway Connection (M80 to CityLink) New route (3 lane motorway) Eastern Freeway Extension (Eastern Freeway to CityLink) New route (3 lane motorway) Western Port Hwy - South Gippsland Hwy to Cranbourne-Frankston Rd (excludes Wedge Rd interchange) Conversion to motorway (4 lanes) Mornington Peninsula Fwy - Springvale Road to Dingley Fwy New route (4 lane motorway) Koo Wee Rup Rd, new motorway - Princes Fwy at Pakenham to South Gippsland Highway at Koo Wee Rup Conversion to motorway (4 lanes) Calder Fwy - Vineyard Rd to ▇▇▇▇▇▇ Hwy Widening (6 lanes) OMR - Sunbury Rd to ▇▇▇▇ Fwy New route (4 lane motorway) Western Port Hwy - Cranbourne-Frankston Rd to Graydens Rd Conversion to motorway (4 lanes) OMR - Princes Fwy to Ballan Rd New route (4 lane motorway) E6 – M80 to Findon Rd New route (4 lane motorway) This Schedule 30 outlines exceptions or qualifications to the Products provided requirements of clause 52 (Intellectual Property Rights) in relation to specific Project Intellectual Property Rights supplied by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendorspecific Subcontractors.
Appears in 1 contract
Sources: WGT Osars Interface Agreement
Infringement. (a) The Vendor 9.1 LICENSEE and PRINCETON shall promptly inform the other in writing of any alleged infringement of which it shall have notice by a third party of any patents within the Patent Rights and provide such other with any available evidence of infringement.
9.2 During the term of this Agreement, LICENSEE shall have the right, but shall not be obligated, to prosecute at its own expense any such infringements of the Patent Rights and, in furtherance of such right, PRINCETON hereby agrees that it LICENSEE may join PRINCETON as a party plaintiff in any such suit, without expense to PRINCETON, provided, however, that notwithstanding the foregoing, Merck shall defendhave the rights set forth in Paragraph 4 of the Side Agreement. The total cost of any such infringement action commenced or defended solely by LICENSEE shall be borne by LICENSEE, and LICENSEE shall keep any recovery or damages for past infringements derived therefrom. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of PRINCETON, which consent shall not unreasonably be withheld. LICENSEE shall indemnify PRINCETON against any order for costs that may be made against PRINCETON in such proceedings.
9.3 If within six (6) months after having been notified of any alleged infringement, LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and hold harmlessshall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE shall notify PRINCETON at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, PRINCETON shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Patent Rights, and PRINCETON may, for such purposes, join LICENSEE as party plaintiff, provided, however, that notwithstanding the foregoing, Merck shall have the rights set forth in Paragraph 4 of the Side Agreement.
9.4 In the 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 royalties otherwise thereafter due PRINCETON hereunder and apply the same toward reimbursement of its expenses, including reasonable attorneys' fees, in connection therewith. 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 PRINCETON for any royalties past due or withheld and applied pursuant to this Article IX. The balance remaining from any such recovery shall be divided equally between LICENSEE and PRINCETON.
9.5 In the event that a declaratory judgment action alleging invalidity or non-infringement of any of the Patent Rights shall be brought against LICENSEE, and LICENSEE is not diligently defending such action, PRINCETON, at its option, shall have the right, within ninety (90) days after commencement of such action, to intervene and take over the sole defense of the action 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 notwithstanding the Owner mayforegoing, at its own cost, participate Merck shall have the rights set forth in Paragraph 4 of the investigation, trial and defense of such lawsuit or action and Side Agreement.
9.6 In any appeal arising therefrom. The parties shall cooperate with each other in any notifications infringement suit as either party may institute to insurers. If a claim for Losses (a "Claim") is enforce the Patent Rights pursuant 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 other 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 samehereto shall, at the Vendor's costrequest and expense of the party initiating such suit, risk cooperate in all respects and, to the extent possible, have its employees testify when requested and expensemake available relevant records, papers, information, samples, specimens, and (iii) to compromise or settle such Claimthe like.
9.7 LICENSEE, which compromise or settlement during the exclusive period of this Agreement, 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 sole 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 defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement the terms and conditions herein to sublicense any alleged infringer under the Patent Rights for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentfuture infringements.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: License Agreement (Intercardia Inc)
Infringement. 7.1 Each party shall inform the other promptly in writing of any alleged infringement of the PATENT RIGHTS by a third party, including all details then available. So long as the License is exclusive, COMPANY shall have the right to prosecute in its own name and at its own expense any infringement of any patent within PATENT RIGHTS.
7.2 If COMPANY elects to commence an action as described above, COMPANY shall bear all expenses related to such action and GENERAL shall cooperate fully with COMPANY in connection with any such action. COMPANY, at its option and expense, may join GENERAL as a plaintiff.
7.3 COMPANY will consult with GENERAL with respect to any settlement, consent judgment or other voluntary final disposition of any suit, but shall have the final authority with respect thereto, unless such action will result in the invalidation of the PATENT RIGHTS, in which event the prior written consent of GENERAL will be required, which GENERAL agrees will not be unreasonably withheld.
7.4 Recoveries or reimbursements from infringement actions commenced by COMPANY pursuant to this Article VII shall be distributed as follows: (a) The Vendor agrees that it COMPANY and GENERAL shall defendbe reimbursed litigation expenses, indemnify including but not limited to reasonable attorneys’ fees; (b) GENERAL shall be reimbursed for any payments past due; and hold harmless(c) any remaining recoveries or reimbursements shall belong to COMPANY, unless the Note has been paid in cash, (in which event 75% thereof shall belong to COMPANY and 25% shall belong to GENERAL.
7.5 If COMPANY has not taken legal action or been successful in obtaining cessation of the infringement within one hundred and twenty (120) days of written notification from GENERAL, GENERAL may prosecute such an infringement at its own expense. In such event, all suits GENERAL shall control the action and claims against the Owner for infringement shall distribute any recoveries 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 reimbursements as follows: (collectively, "Intellectual Property Rights"), covering, or alleged to cover, the Products or any component thereof. The Vendor agrees that it a) COMPANY and GENERAL shall pay all sumsbe reimbursed litigation expenses, including without limitation, but not limited to reasonable attorneys' fees ’ fees; and other costs incurred at Vendor's written request (b) any remaining recoveries or authorization, which, in defense of, by final judgment or decree, or in reimbursements shall belong to GENERAL. With respect to the settlement of any infringement prosecuted by GENERAL, GENERAL will not agree to any settlement, consent judgment or other voluntary final disposition of the suit without the prior written consent of COMPANY.
7.6 If a declaratory judgment alleging invalidity or claim non-infringement of any of the patents in PATENT RIGHTS is brought against COMPANY or GENERAL, COMPANY shall have the right to which control such action by written notice to GENERAL given within sixty (60) days of notice of the Vendor agreessuit. If COMPANY does not give such notice within sixty (60) days after such notice of commencement of that action, GENERAL may be assessed against, or incurred byelect to take over the sole defense of the action at its sole expense.
7.7 In any infringement suit that either party brings to enforce the Patent Rights, the Owner on account other party shall, at the request and expense of such infringement or violationthe party bringing the suit, provided that the Owner shall cooperate in all reasonable respects with respects, including, to the Vendor extent possible, obtaining the testimony of its employees and its attorneys making available physical evidence in the investigation, trial and defense possession 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentparty.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Infringement. (a) The Vendor agrees that it 7.1 CONSORTIUM shall defendinform NEOMAGIC promptly in writing of any alleged or potential infringement of the Patent Rights by a third party which comes to its attention and of any available evidence thereof. Similarly, indemnify NEOMAGIC shall inform CONSORTIUM promptly in writing of any alleged infringement of the Patent Rights by a third party which comes to its attention and hold harmlessof any available evidence thereof.
7.2 NEOMAGIC shall have the right, but shall not be obligated, to prosecute at its own expense, all suits at any time, any infringement of the Patent Rights, and claims against NEOMAGIC may, for such purposes, use the Owner for infringement or violation name of CONSORTIUM as party plaintiff in any such suit, without expense to CONSORTIUM. The total cost of any patentsuch infringement action commenced or defended by NEOMAGIC shall be borne by NEOMAGIC and any recovery or damages derived therefrom shall be divided between NEOMAGIC and CONSORTIUM as follows: eighty-four percent (84%) to NEOMAGIC and sixteen percent (16%) to CONSORTIUM (or eighty-nine percent (89%) to NEOMAGIC and eleven percent (11%) to CONSORTIUM, trademarkif CONSORTIUM was not involved, copyrightin any way, 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"), coveringintroduction of, or alleged to coverany negotiation with, 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 violationthird party), provided that all expenses described in 1.8(i) - (iv) related to such recovery paid or payable by NEOMAGIC shall first be reimbursed to NEOMAGIC. CONSORTIUM shall assist NEOMAGIC in defending against any counter suit resulting from such proceedings, while NEOMAGIC will be responsible for paying any costs resulting from an order or judgment that may be made against NEOMAGIC or CONSORTIUM in such proceedings. Other than reimbursement for expenses and payments as described above in this Section 7.2, Consortium will receive no fees or other compensation for services rendered in support of any litigation or court action. Consortium further agrees that any settlement in NEOMAGIC’s favor related to its current litigation with Trident Microsystems, Inc. will be fully excluded from any payment or settlement and, as such, is fully excluded from all consideration under this Agreement.
7.3 In any infringement suit either party may institute to enforce the Owner shall Patent Rights pursuant to this Agreement, the other party hereto shall, at the request of the party initiating such suit, cooperate in all reasonable respects with the Vendor and its attorneys in the investigationand, 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 factextent possible, condition or event which may give rise to Losses for which indemnification may be sought under this Agreementhave its employees testify when requested and make available relevant records, providedpapers, howeverinformation, 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 hereundersamples, 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal)specimens, and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentlike.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Infringement. (a) The Vendor agrees If any of the GENAERA PATENTS or ▇▇▇▇▇▇ PATENTS to the extent that it MEDIMMUNE is licensed exclusively or sublicensed exclusively hereunder is infringed by an unlicensed person or entity in the FIELD, and subject to the provisions of the ▇▇▇▇▇▇ LICENSE AGREEMENT(S), MEDIMMUNE shall defend, indemnify have the right and hold harmlessoption but not the obligation to bring an action for such infringement, at its own sole expense, all suits and claims against the Owner for infringement such an unlicensed person or violation of any patent, trademark, copyright, trade secret or other intellectual property rights of any third party enforceable entity in the United States name of GENAERA and/or in the name of MEDIMMUNE and/or in the name of a licensor of GENAERA, as the case may be, and to join GENAERA or in any other territory where Vendor has approved the deployment or use of Products under this Contract (collectivelyits licensor as a party plaintiff if required, "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, whichand, in defense ofthe absence of MEDIMMUNE'S joinder of GENAERA as a party plaintiff, 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 mayGENAERA shall, at its own costoption, participate in be permitted to join such action ---------------- **Certain portions of this exhibit have been omitted based upon a request for confidential treatment that has been filed with the investigation, trial and defense of such lawsuit or action and any appeal arising therefromCommission. 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 omitted portions have been 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 separately 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 Commission. at GENAERA's expense. MEDIMMUNE 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress promptly notify GENAERA of any such defense, compromise or settlement. The Vendor infringement and shall be liable for any settlement keep GENAERA informed as to the prosecution of any action effected pursuant to and in accordance with this Agreement and for any such infringement. No settlement, consent judgment or other voluntary final judgment (subject to any right disposition of appeal)the suit that adversely affects GENAERA PATENTS or ▇▇▇▇▇▇ PATENTS may be entered into without the consent of GENAERA, and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentwhich consent shall not unreasonably be withheld.
(b) In the event that MEDIMMUNE shall undertake the enforcement under Section 7.1(a) of any of the GENAERA PATENTS or ▇▇▇▇▇▇ PATENTS by litigation and with respect to ▇▇▇▇▇▇ PATENTS, subject to the provisions of the ▇▇▇▇▇▇ LICENSE AGREEMENT(S), any recovery of damages by MEDIMMUNE for any such suit shall be applied first pro rata in satisfaction of any unreimbursed out of pocket expenses and legal fees of MEDIMMUNE regarding such suit and next to any unreimbursed out of pocket expenses and legal fees of GENAERA regarding such suit, if GENAERA has joined in such suit. The Vendor's obligation balance remaining from any such recovery shall be divided between MEDIMMUNE and GENAERA, as follows (i) for that portion, if any, based on lost profits, GENAERA shall recover the royalty GENAERA would have received under this subsection Agreement if such sales had been made by MEDIMMUNE, and (ii) for any other recovery, GENAERA shall receive five percent (5%) of the remaining amount.
7.2 In the event that MEDIMMUNE elects not extend to alleged infringements pursue an action for infringement, within a reasonable time period after written notice to GENAERA by MEDIMMUNE that an unlicensed person or violations entity is an infringer of a VALID PATENT CLAIM of any of the GENAERA PATENTS or ▇▇▇▇▇▇ PATENTS licensed to MEDIMMUNE, GENAERA shall have the right and option, but not the obligation at its cost and expense to initiate infringement litigation and to retain any recovered damages. ---------------- **Certain portions of this exhibit have been omitted based upon a request for confidential treatment that arise because has been filed with the Products provided Commission. The omitted portions have been filed separately with the Commission.
7.3 In any infringement suit either party may institute to enforce any of the GENAERA PATENTS or ▇▇▇▇▇▇ PATENTS pursuant to this Agreement, the other party hereto shall, at the request of the party initiating such suit, reasonably cooperate and, to the extent reasonably possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like. All reasonable out-of-pocket costs incurred in connection with rendering cooperation requested hereunder shall be paid by the Vendor are used party requesting cooperation.
7.4 Notwithstanding anything in combination with this Section 7, GENAERA shall have the right to initiate any action against any person or entity related to the infringement by a person or entity of a PRODUCT or any other products furnished by third parties and where any such combination was not installed, recommended or approved by processes outside of the VendorFIELD.
Appears in 1 contract
Infringement. (a) The Vendor agrees that it 7.1 Licensor shall defend, indemnify and hold harmlessdefend Licensee from and against all claims, at its own expenseactions, all suits legal proceedings, judgments, awards, royalties and claims against the Owner for costs including reasonable attorney' s fee and any other expenses that may arise from or in connection with infringement or violation alleged infringement of any patentpatents, trademark, copyright, trade secret know-how or other intellectual property proprietary rights of any third party enforceable because of the use or practice of the Licensor' s Technology or Patents through the manufacture, sale, operation or maintenance of KDS Micronizing Machine.
7.2 For the indemnification or defence, the Licensee hereby undertakes to promptly notify the Licensor of any notice or claim of infringement or of any action for infringement of patents brought against it by a third party based upon the use of the Licensor' s Technology by the Licensee as permitted hereunder
7.3 In the event of any asserting claims for infringement of intellectual property rights brought against Licensee by a third party that the use of Licensor' s Technology results in infringing a third party patent right for a particular application or applications, Licensor shall be to provide Licensee with all reasonable measures such as making such changes 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 Licensor' s Technology as Licensor shall deem desirable 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 avoid such infringement or violationinfringement, provided that such changes shall not impair the Owner operation of the KDS Micronizing Machine owned by licensee' s customer or procuring for Licensee an appropriate license at the Licensor' s own expense, but in no case shall cooperate the amount required to be paid for said procurement exceed the original cost of the license fee paid pursuant to clause 2.1 herein times the ratio of the number of units sold for the challenged application(s) divided by the total number of all units sold by the licensee to the date of filing of the legal action.
7.4 In the event of any filing of a legal action for infringement of intellectual property rights brought against the Licensee, its customers, or the Licensor, or any of them in all reasonable respects with combination by a third party based upon a claim that the Vendor and its attorneys use of an invention claimed by Licensor' s Patents as they relate to Licensor' s Technology results in infringing upon a third party patent right that existed in the investigation, trial and defense of such lawsuit or action and any appeal arising therefrom; provided, however, that territory at 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 time of the Owner in notifying signing this agreement (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" Action for infringement" ), unless such compromise or settlement includes an unconditional release of any claims against then the Owner in which event such written consent of the Owner shall not be required. If the Vendor fails Licensee shall, subject first to assume the defense of such Claim within fifteen (15) calendar days after receipt of the Claim Noticearbitration pursuant to clause 17.1 herein, the Owner against which such Claim has been asserted will (upon delivering notice to such effect to the Vendor) have the right to undertakemake the payments for royalties due in respect of sales made for that application(s) in which the Action for Infringement has been instituted into trust until such time as the Licensor settles the Action or, at the Vendor's cost and expenseLicensee' s option, 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 defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with Licensee may terminate this Agreement and for any final judgment (subject to any right of appeal)agreement forthwith as far as that application is concerned, and the Vendor disposition of the any amounts held in trust herewith will be settled by arbitration pursuant to 17.1 herein. Notwithstanding the foregoing, any amounts paid into trust pursuant to this clause, may be drawn upon to pay reasonable legal expenses incurred in defence of the said legal action.
7.5 Each party shall advise the other in writing immediately upon becoming aware of any acts of infringement of the Patents by a third party in the territory. The Licensee may institute and prosecute any proceedings to restrain infringement or 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 jointly by the Licensor and the Licensee. The Licensor may participate in such proceedings or actions, upon notice to the Licensee to that effect. In addition, if requested by Licensee and necessary to prosecute the proceedings or action, the Licensor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.
(b) The Vendor's obligation under this subsection shall not extend be made party to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was proceedings or action, at Licensee' 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 reasonable costs and expenses incurred by Licensee in pursuing such prosecutions or actions. If the Licensee elects to not installedtake any legal action against an infringing third party, recommended or approved by then the VendorLicensor has the right but not the obligation to take such legal action and, in such a case, the Licensor would pay all legal costs and would retain the entire amount of any settlement obtained from such a third party.
Appears in 1 contract
Sources: Technology License Agreement (First American Scientific Corp \Nv\)
Infringement. (a) The Vendor agrees If HPI learns of any substantial infringement of the 412 Patent Rights, HPI shall so inform Callisto. During the Term, Callisto shall have the right to prosecute in its own name and at its own expense any infringement of any of the 412 Patent Rights. HPI or the Inventors may voluntarily join such suit and may be represented by counsel of their choice, each at their own expense. Callisto may not join HPI or the Inventors in a suit initiated by Callisto without such party's prior written consent, PROVIDED, HOWEVER, that it if HPI or the Inventors are determined by a court to be a necessary or required party in any such suit, then no consent shall defendbe required. If, indemnify in a suit initiated by Callisto, HPI or the Inventors are involuntarily joined other than by Callisto, or if HPI or the Inventors are joined because they are deemed to be a necessary or required party, then Callisto will pay the reasonable costs incurred by HPI or the Inventors, as applicable, arising out of such suit, including but not limited to, any reasonable legal fees of counsel that HPI or the Inventors select and hold harmlessretain to represent them in the suit.
(b) Recoveries from actions brought by Callisto pursuant to Paragraph 5.2(a) shall belong to the Callisto, PROVIDED, HOWEVER, that the amount by which such recoveries exceed Callisto's expenses for such actions shall be subject to the royalty in Section 3.2 above as if the net amount of any such recovery is considered to be "Net Sales." In the event that Callisto does not elect to exercise its right to prosecute an infringement on the 412 Patent Rights pursuant to this Section 5.2, after written consent by Callisto, which such consent shall not be unreasonably withheld or delayed, HPI may do so 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 controlling 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 that HPI does not elect to exercise its right to prosecute an infringement on the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected 412 Patent Rights pursuant to and in accordance with this Agreement and for any final judgment (subject Section 5.2, then the Inventors may do so at their own expense, controlling such action. Recoveries from such actions brought by HPI or the Inventors shall belong entirely to any right of appeal)HPI or the Inventors, and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentas applicable.
(bc) The Vendor's obligation under this subsection Each party shall not extend to alleged infringements or violations that arise because cooperate with the Products provided other in litigation proceedings at the expense of the party bringing suit. Litigation shall be controlled by the Vendor are used party bringing the suit, except that HPI and the Inventors may be represented by counsel of their choice in combination with other products furnished any suit brought by third parties and where any such combination was not installed, recommended or approved by the VendorCallisto.
Appears in 1 contract
Sources: Sublicense Agreement (Callisto Pharmaceuticals Inc)
Infringement. (a) The Vendor agrees that it 9.1 Licensee shall defendinform Northwestern promptly in writing of any alleged infringement of the Patent Rights by a third party and of any available evidence thereof.
9.2 During the term of this Agreement, indemnify and hold harmlessNorthwestern shall have the right, but shall not be obligated, to prosecute at its own expenseexpense all infringements of the Patent Rights and, all suits and claims against the Owner for infringement or violation in furtherance of such right, Licensee hereby agrees that Northwestern may include Licensee as a party plaintiff in such suit, without expense to Licensee. The total cost of any patentsuch infringement action commenced or defended solely by Northwestern shall be borne by Northwestern and Northwestern shall keep any recovery or damages for past infringement derived therefrom.
9.3 If within six (6) months after having been notified of any alleged infringement, trademarkNorthwestern 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, copyrightor if Northwestern shall notify Licensee at any time prior thereto of its intention not to bring suit against any alleged infringer, trade secret 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 Northwestern as party plaintiff; 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. No settlement, consent judgment or other intellectual property rights voluntary final disposition 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 againstentered into without the consent of Northwestern, which consent shall not unreasonably be withheld. Licensee shall indemnify Northwestern against any order for costs that may be made against Northwestern in such proceedings. Licensee shall keep any recovery or incurred by, the Owner on account of such damages for past 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 derived therefrom; provided, however, that such recovery, less expenses, including reasonable attorneys' fees, shall be treated as Net Sales for the Owner maypurpose of calculating running royalties under Paragraph 5.4
9.4 In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the Patent Rights shall be brought against Licensee, Northwestern, at its own costoption, participate in shall have the investigationright, trial within thirty (30) days after it receives notice of the commencement of such action, to intervene and take over the sole defense of such lawsuit or the action and at its own expense.
9.5 In any appeal arising therefrom. The parties shall cooperate with each other in any notifications infringement suit that either Party may institute to insurers. If a claim for Losses (a "Claim") is enforce the Patent Rights pursuant 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 other 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 samehereto shall, at the Vendor's costrequest and expense of the Party initiating such suit, risk cooperate in all respects and, to the extent possible, have its employees testify when requested and expensemake available relevant records, papers, information, samples, specimens, and (iii) to compromise or settle such Claimthe like.
9.6 Licensee, which compromise or settlement during the term of this Agreement, 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 sole 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 defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement the terms and conditions herein to sublicense any alleged infringer for any final judgment (subject to any right future use of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason Patent Rights. Any upfront fees as part of such settlement or judgmenta sublicense shall be shared equally between Licensee and Northwestern; other royalties shall be treated pursuant to Paragraph 5.4.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Infringement. 8.1 LICENSEE or its SUBLICENSEE(s) has the right to prosecute in their own name and at their own expense any infringement of the PATENT RIGHTS, so long as the license is exclusive when the legal action is commenced. LICENSOR agrees to notify LICENSEE promptly of each infringement of the PATENT RIGHTS of which LICENSOR becomes aware. Before LICENSEE or its SUBLICENSEES commences an action for infringement, LICENSEE or SUBLICENSEE shall notify LICENSOR and carefully consider the views of LICENSOR and the public interest.
8.2 LICENSOR agrees to join, subject to the approval of the Ohio Attorney General, as a party plaintiff in any lawsuit initiated by LICENSEE, if requested by LICENSEE, with all costs, attorney fees and expenses to be paid by LICENSEE.
8.3 If LICENSEE undertakes to enforce and/or defend the PATENT RIGHTS by litigation, LICENSEE may withhold up to [***] percent (a[***]%) of the payments otherwise thereafter due during the course of such litigation to LICENSOR under Article 3. LICENSEE may apply the amounts withheld to reimburse up to half of LICENSEE's litigation expenses, including reasonable attorneys’ fees. If LICENSEE recovers damages in the patent litigation, the award shall be applied first to satisfy LICENSOR’s and LICENSEE’S unreimbursed expenses and legal fees for the litigation, and next to reimburse LICENSOR for any payments under Article 3 which are past due or were withheld pursuant to this Article 8. The Vendor agrees that it remaining balance shall defendbe shared in accordance with the percentages described in Section 4.3, indemnify except for such amounts attributable for lost sales which amounts shall be paid in accordance with earned royalties described in Section 3.3.
8.4 No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without LICENSOR’s consent, which shall not be unreasonably withheld.
8.5 If LICENSEE and hold harmlessits SUBLICENSEE(s) elect not to exercise their right to prosecute or defend an infringement of the PATENT RIGHTS, LICENSOR may do so at its own expense, controlling such action and retaining all suits and claims against the Owner for infringement or violation recoveries.
8.6 If a declaratory judgment action alleging invalidity of any patentof the PATENT RIGHTS is brought against LICENSEE or LICENSOR, 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 maythen LICENSOR, at its own costsole option, 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 intervene 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 take over the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentat its own expense.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Infringement. (a) 7.1 The Vendor agrees that it parties shall defendinform each other promptly, indemnify in writing, of any alleged infringement of the Patent Rights by a third party, and hold harmlessof any available evidence thereof.
7.2 During the term of this Agreement, LICENSEE shall have the right, subject only to approval not unreasonably withheld of RESEARCH FOUNDATION, but shall not be obligated, to prosecute at its own expenseexpense any such infringements of the Patent Rights and, all suits and claims against the Owner for infringement or violation in furtherance of such right, RESEARCH FOUNDATION hereby agrees that LICENSEE may join RESEARCH FOUNDATION as a party plaintiff in any such suit, without expense to RESEARCH FOUNDATION. The total cost of any patentsuch infringement action except as provided in paragraph 7.4 hereof, trademarkcommenced or defended solely by LICENSEE shall be borne by LICENSEE and LICENSEE 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, copyrightLICENSEE 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, trade secret or if LICENSEE shall notify RESEARCH FOUNDATION at any time 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 intellectual property rights 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 LICENSEE shall undertake the enforcement and/or defense of the Patent Rights by litigation, LICENSEE may withhold up to [***] percent ([***]%) of the royalties otherwise thereafter due RESEARCH FOUNDATION hereunder and apply the same toward reimbursement of up to fifty percent (50%) of its expenses, including reasonable attorneys’ fees, in connection therewith. Any recovery by LICENSEE of damages for past infringement in any such suit shall be applied first in satisfaction of any third unreimbursed expenses and legal fees of LICENSEE relating to the suit, and next toward reimbursement of RESEARCH FOUNDATION for any royalties past due or withheld and applied pursuant to this Article VII. LICENSEE shall keep the balance remaining from any such recovery.
7.5 In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the Patent Rights shall be brought against RESEARCH FOUNDATION, LICENSEE 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 except as provided in paragraph 7.4.
7.6 In any infringement suit as either party enforceable in may institute to enforce the United States or in any other territory where Vendor has approved the deployment or use of Products under Patent Rights pursuant to this Contract (collectively, "Intellectual Property Rights"), covering, or alleged to coverAgreement, the Products or any component thereof. The Vendor agrees that it shall pay all sumsother party hereto shall, including without limitationat the request and expense of the party initiating such suit, 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 investigationand, 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 extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the party entitled like.
7.7 RESEARCH FOUNDATION warrants and represents that it has the lawful right to indemnification becomes aware grant the license provided in this agreement and that it has not granted rights or licenses In derogation of any fact, condition or event which may give rise to Losses for which indemnification may be sought under this Agreement. RESEARCH FOUNDATION agrees that during the term of this Agreement, provided, however, no delay on the part of the Owner in notifying the Vendor shall relieve the Vendor from or 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 license granted hereunder, written notice thereof RESEARCH FOUNDATION shall be given to the Vendor as promptly as practicable (and in not enter into 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 other agreements that conflict with the written consent rights or obligations provided hereunder, including any rights and obligations provided hereunder, including any rights and obligations that survive termination 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentAgreement.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Infringement. 16.1 If either party learns of a claim of 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. Licensor, in consultation with Licensee, shall then use reasonable efforts to terminate such infringement if the parties mutually agree that such efforts are appropriate under the circumstances. In the event Licensor fails to ▇▇▇▇▇ the infringing activity within ninety (90) days after such written notice or to bring legal action against the third party, Licensee may bring suit for patent infringement. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of Licensor, which consent shall not be unreasonably withheld.
16.2 Any such legal action shall be at the expense of the party by whom suit is filed, hereinafter referred to as the “Litigating Party”. Any damages or costs recovered by the Litigating Party in connection with a legal action filed by it hereunder, and provided that the Litigating Party is reimbursed for its costs and expenses reasonably incurred in the lawsuit, and after any royalties or other payments due to Licensor under Article 4 are paid, shall be retained by Licensee under the following conditions: (a) The Vendor agrees that it damages for lost sales shall defend, indemnify be treated as Net Sales (after reasonable costs and hold harmless, at its own expense, all suits and claims against the Owner for infringement or violation expenses 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"litigation are subtracted), coveringand the royalty due on the corresponding amount of Net Sales shall be paid to Licensor; (b) [***] percent ([***]%) of punitive damages, 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, whichif any, in defense of, excess of damages for lost sales shall be paid to Licensor and the remainder shall be retained by final judgment or decree, or Licensee. Specific terms in settlement this exhibit have been redacted because confidential treatment for those terms has been requested. These redacted terms have been marked in this exhibit with three asterisks [***]. An unredacted version 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 this exhibit has been separately filed with the Vendor Securities and its attorneys in the investigation, trial Exchange Commission. KUCTC-Reata Confidential [***]
16.3 Licensee 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 Licensor shall cooperate with each other in any notifications to insurers. If a claim for Losses (a "Claim") is to litigation proceedings instituted hereunder, provided that such cooperation shall be made by a party entitled to indemnification hereunder against at 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 expense of the Owner in notifying the Vendor shall relieve the Vendor from any obligation hereunder unless (Litigating Party, 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 such litigation 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided controlled by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the VendorLitigating Party.
Appears in 1 contract
Sources: Exclusive License Agreement
Infringement. 8.1 The Parties shall promptly notify each other of any suspected infringement of any Licensed Patents.
i. During the Term, COMPANY shall, at its expense, have the right to enforce any Licensed Patents against such infringer and may defend any declaratory judgment action brought against it alleging the invalidity of a Licensed Patent. COMPANY agrees to defend EMORY against any counterclaim brought against it in such action. EMORY shall cooperate with COMPANY in such effort, at COMPANY'S expense, including being joined as a party to such action, if necessary. COMPANY shall reimburse EMORY for any costs incurred, including reasonable attorneys’ fees, as part of any action brought by COMPANY.
ii. COMPANY shall not enter into any settlement agreement or other voluntary final disposition in any action regarding the Licensed Patents, including without the express written consent of EMORY. Any amounts received for punitive or exemplary damages shall be shared equally between EMORY and COMPANY and any other amounts received, including compensatory damages or damages based on a loss of revenues which exceed the out-of-pocket costs and expenses incurred by COMPANY, shall be deemed to be the proceeds of Sales of Licensed Products in the fiscal quarter received.
8.2 If COMPANY fails, within one hundred twenty (a120) The Vendor agrees days after receiving notice of a potential infringement, to institute an action against such infringer or notifies EMORY that it does not plan to institute such action, then EMORY shall defend, indemnify and hold harmless, have the right to do so at its own expense, . COMPANY shall cooperate with EMORY in such effort including being joined as a party to such action if necessary. EMORY shall be entitled to retain all suits damages or costs awarded in such action. Should either EMORY or COMPANY be a party to a suit under the provisions of this Article 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 thereafter elect to coverabandon such suit, the Products or any component thereof. The Vendor agrees that it abandoning party shall pay all sums, including without limitation, reasonable attorneys' fees and give timely notice to the 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 party who may, at its own costdiscretion, participate in the investigation, trial and defense continue prosecution 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentsuit.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: License Agreement
Infringement. (a) The Vendor agrees that it 7.1 Each PARTY shall defendinform the 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 of this Agreement, indemnify and hold harmlessLICENSEE shall have the first right, but shall not be obligated to prosecute at its own expense, all suits and claims against infringements or misappropriations of TECHNOLOGY. LICENSEE may, for such purposes, include CURF as party plaintiff, if necessary, without expense to CURF. No settlement, consent judgment or other voluntary final disposition of the Owner for suit may be entered into without the consent of CURF, which consent shall not unreasonably be withheld. The total cost of any such infringement or violation misappropriation action commenced or defended solely by LICENSEE shall be borne by LICENSEE, and LICENSEE shall keep any recovery or damages for past infringement or misappropriation derived therefrom subject to the payment of a percentage on any recoveries net of costs and expenses as an "other payment" in accordance with Section 4. l(e). LICENSEE shall indemnify CURF against any order for costs that may be made against CURF in such proceedings.
7.3 If within three (3) months after having been notified of any patentalleged infringement, trademarkLICENSEE 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, copyrightthen, trade secret and in those events only, CURF shall have the right, but shall not be obligated,to prosecute at its own expense all infringements or other intellectual property rights misappropriations of any third TECHNOLOGY and CURF may, for such purposes, include LICENSEE as a party enforceable in the United States or plaintiff in any other territory where Vendor has approved the deployment or use of Products under this Contract (collectivelysuch suit, "Intellectual Property Rights"), covering, or alleged without expense to cover, the Products or any component thereofLICENSEE. 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 total cost of such infringement action commenced or violationdefended 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, provided 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 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 and applied pursuant to this Section 7.4. LICENSEE shall keep the balance remaining from any such recovery subject to the payment of a percentage as an "other payment" in accordance with Section 4.1(e).
7.5 In any infringement or misappropriation suit that either PARTY may institute to enforce the Owner shall 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 reasonable respects with the Vendor and its attorneys in the investigationand, 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 extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens and the party entitled to indemnification becomes aware like.
7.6 LICENSEE, during the exclusive period 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 sole 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 defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement the terms and conditions herein to sublicense any alleged infringer for any final judgment (subject to any right the FIELD OF USE for future use of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason PATENT RIGHTS. Any upfront fees as pm1 of such settlement or judgmenta sublicense shall be treated pursuant to Article 4.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Infringement. (a) The Vendor agrees If a third party makes, uses or sells a XENOGRAFT PRODUCT that it infringes any of the BTI PATENTS under which LOXO is licensed, LOXO shall defend, indemnify have the right and hold harmlessoption but not the obligation to bring an action for infringement, at its own sole expense, all suits against such third party in the name of LOXO, and claims against to join the Owner for infringement or violation owner of the BTI PATENT as a party plaintiff if required. LOXO shall promptly notify BTI of any patentsuch infringement and shall keep BTI informed as to the prosecution of any action for such infringement and shall not institute any infringement action without providing BTI with thirty (30) days prior written notice. No settlement, trademark, copyright, trade secret consent judgment or other intellectual property voluntary final disposition of the suit may be entered into without the consent of BTI, which consent shall not unreasonably be withheld. The 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 granted under this Contract (collectively, "Intellectual Property Rights"), covering, or alleged Section 7.1 are subject to cover, the Products or terms and conditions of the THIRD PARTY AGREEMENTS with respect to BTI PATENTS licensed under THIRD PARTY AGREEMENTS. Any recovery of damages by LOXO for any component thereofsuch suit shall be applied first in satisfaction of obligations under THIRD PARTY AGREEMENTS. The Vendor agrees that it shall pay all sumsbalance, including without limitationif any, 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 remaining 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 such recovery 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 Vendorretained by LOXO.
7.2. In the event that LOXO elects not to pursue an action for infringement pursuant to Section 7.1, or does not do so within sixty (60) days after written notice by BTI that an unlicensed third party is an infringer of a BTI PATENT licensed to LOXO, BTI or its licensor(s) shall have the Owner assumes right and option, but not the defense obligation at its cost and expense to initiate infringement litigation and to retain any recovered damages.
7.3. In any infringement suit either PARTY may institute to enforce the BTI PATENTS pursuant to this Agreement, the other PARTY hereto shall, at the request of the ClaimPARTY initiating such suit, cooperate in all respects and, to the Owner will keep the Vendor reasonably informed of the progress of any such defenseextent possible, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to have its employees testify when requested and in accordance with this Agreement and for any final judgment (subject to any right of appeal)make available relevant records, papers, information, samples, specimens, and the Vendor agrees to indemnify and hold harmless like. All reasonable out-of-pocket costs of the Owner from and against any Losses by reason of other PARTY incurred in connection with rendering such settlement or judgment.
(b) The Vendor's obligation under this subsection cooperation shall not extend to alleged infringements or violations that arise because the Products provided be paid by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendorrequesting PARTY.
Appears in 1 contract
Infringement. (a) The Vendor agrees that it A. LICENSEE and CMCC shall each inform the 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 License Agreement, LICENSEE shall have the right, but not the obligation, to prosecute and/or defend, indemnify and hold harmless, at its own expenseexpense and utilizing counsel of its choice, all suits and claims against the Owner for any infringement or violation of any patentof, 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 coverand/or challenge to, 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 therefromPatent Rights; provided, howeverhowever that CMCC shall have the right to approve LICENSEE’s choice of counsel, such approval not to be unreasonably withheld. In furtherance of such right, CMCC hereby agrees that LICENSEE may join CMCC as a party in any such suit, without expense to CMCC. No settlement, consent judgment or other voluntary final disposition of any such suit may be entered into without the Owner mayconsent of CMCC which consent shall not unreasonably be withheld. LICENSEE shall indemnify CMCC against any order for costs that may be made against CMCC in any such suit.
C. In the event that LICENSEE shall undertake the enforcement and/or defense of the Patent Rights, as provided in Paragraph 7.2, LICENSEE may withhold up to fifty percent (50%) of the royalties otherwise thereafter due CMCC in Article IV(A)(3) and apply such amount toward reimbursement of LICENSE.E’s expenses, including attorneys’ fees, in connection therewith. Any recovery of damages by LICENSEE, in 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 CMCC for any royalties past due or withheld and applied pursuant to this paragraph. Any balance remaining from any such recovery shall be apportioned 50% to LICENSEE and 50% to CMCC.
D. If within six (6) months after receiving notice of any alleged infringement, LICENSEE shall have been unsuccessful in persuading the alleged infringement to desist, or shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE Shall notify CMCC, at any time prior thereto, of its intention not to bring suit against the alleged infringer, then, and in those events only, CMCC shall have the right, but not the obligation, to prosecute, at its own costexpense and utilizing counsel of its choice, participate in the investigation, trial any cost of any such infringement action commenced solely by CMCC shall be borne by CMCC and defense of such lawsuit CMCC shall keep any recovery or action and any appeal arising damages for past infringement derived therefrom. The parties CMCC shall cooperate with each other indemnify LICENSEE against any order for costs that may be made against LICENSEE in any notifications such suit.
E. In any suit to insurers. If a claim for Losses (a "Claim") is enforce and/or defend the Patent Rights pursuant to be made by a party entitled to indemnification hereunder against the Vendorthis License Agreement, the party claiming not in control of 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 samesuit shall, at the Vendor's costrequest and expense of the controlling party, risk cooperate in all respects and, to the extent possible, have its employees testify when requested and expensemake available relevant records, papers, information, samples, specimens, and (iii) to compromise or settle such Claimthe like.
F. LICENSEE during the period of this License Agreement, 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 undertakesole right, 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 defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement the terms and conditions herein, to sublicense any alleged infringer for any final judgment (subject to any right future use of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentPatent Rights.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: Exclusive License Agreement (Boston Life Sciences Inc /De)
Infringement. (a) The Vendor agrees 19B.1 In the event that it shall defendany claim, indemnify and hold harmlesssuit, at its own expenseor other legal proceeding is threatened or commenced against Gilardoni that is founded, all suits and claims against the Owner for infringement in whole or violation of in part, on an allegation that any patentVivid Product infringes any trade secret, trademark, copyrightpatent, trade secret copyright or other intellectual property rights belonging to a third party, Gilardoni will give Vivid prompt written notice thereof and Vivid may elect to assume primary control of the defense to or settlement of such dispute. Gilardoni shall cooperate fully with Vivid in any such defense, settlement or compromise made by Vivid. Neither Gilardoni nor Vivid shall enter into any settlement agreement or other voluntary resolution of any third party enforceable such claim, suit, or other legal proceeding without obtaining the other's prior written consent thereto. If Gilardoni has complied fully with the procedures set forth in this Section, Vivid will indemnify and hold Gilardoni harmless from and against any loss, cost, damage, or other expenses incurred by Gilardoni as a result of such claim, suit, or legal proceeding. In addition, if a final injunction is obtained against Gilardoni's use of the Vivid Product, or if in the United States or in any other territory where Vendor has approved opinion of Vivid the deployment or use Vivid Product is likely to become subject of Products under this Contract (collectivelya successful claim of infringement, "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 Vivid may, at its own costoption and expense (a) procure for Gilardoni the right to continue distributing and using the Vivid Product, participate or (b) replace or modify said product so that it becomes non-infringing, or (c) if neither (a) or (b) are reasonably available, accept return of Vivid Product sold hereunder, grant a credit therefore as depreciated on a five-year straight-line basis and terminate this Agreement. This indemnification procedure shall be null and void and Vivid shall have no liability to the extent that any claim is based on any use of the Vivid Product in combination with any item not supplied or approved in writing by Vivid, or if the investigationVivid Product has been tampered with, trial and defense of such lawsuit or action and any appeal arising therefrom. The parties shall cooperate with each other modified in any notifications to insurers. If a claim for Losses (a "Claim") is to be made by a party entitled to indemnification hereunder against way except as provided in this Agreement without 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 express written consent of the Owner (which may not be unreasonably withheld)Vivid, unless such compromise or settlement includes an unconditional release of if Gilardoni or its sub- distributor, affiliate, or customer has any claims against the Owner property interest 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 Noticesaid claim, the Owner against which such Claim has been asserted will (upon delivering notice to such effect to the Vendor) have the right to undertakesuit, at the Vendor's cost and expenseor legal proceeding, 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 defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject license to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentso asserted.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Infringement. Enforcement of Proprietary Rights -----------------------------------------------
6.1 CIO shall inform CDS promptly of any alleged infringement involving Ophthalmic Applications by third parties of any Licensed Patent Rights and provide any information available to CIO relating to such alleged infringement. CDS shall promptly investigate such alleged infringement and act diligently to end any infringement of such rights, including but not limited to bringing suit against such third-party infringer, or causing UKRF to take such steps. Unless otherwise agreed by CDS and CIO, CDS shall bear the cost of any such infringement suit commenced by CDS and shall keep any recovery derived therefrom. CDS shall consult with CIO on the material aspects of such litigation, and shall select counsel to which CIO has no reasonable objection. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of CIO, which consent shall not be unreasonably withheld or delayed. CDS shall indemnify CIO against any order for costs that may be made against CIO in such proceedings.
6.2 If within 120 days after having been notified of any alleged infringement, CDS (aor UKRF) shall have been unsuccessful in obtaining the agreement of the alleged infringer to desist from the infringing activities, or shall not have brought and be diligently prosecuting an infringement action, or if CDS shall have notified CIO of its intention not to bring suit against the alleged infringer, then (and only then) CIO shall have the right, but not the obligation, to prosecute such infringement at its own expense with counsel to which CDS has no reasonable objection. In such case CIO shall have the right to withhold from its royalty obligations pursuant to Article 3, to the extent of CIO's expenses then incurred in connection with such suit, 50 % of the royalties otherwise thereafter due hereunder to CDS and UKRF, and CIO shall apply the reduced amounts toward reimbursement of CIO's expenses, including reasonable attorneys' fees, in connection with such suit, until such time as such expenses shall have been fully reimbursed. If such expenses are less than the maximum amount that may be credited, the credit shall be applied first against the royalties due UKRF and then against the royalties due CDS. CIO shall consult with CDS on material aspects of such litigation. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of CDS which consent shall not be unreasonably withheld or delayed. CIO shall indemnify CDS and UKRF against any order for costs that may be made against either of them in such proceedings. Any recovery of damages in any such suit shall be applied first in satisfaction of any unreimbursed expenses and legal fees of CIO in connection with the suit, and next toward reimbursement of CDS and UKRF for any royalties [*]=CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETED ASTERISKS HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED. withheld and applied pursuant to this Article 6. The Vendor agrees balance remaining from any such recovery shall be retained by CIO, provided that it such remaining balance shall defendbe deemed included within Net Sales under this Agreement and shall bear royalties as provided herein.
6.3 In the event that a declaratory judgment action alleging invalidity or non-infringement of any of the Licensed Patent Rights shall be brought against CIO, indemnify CDS, at its option, shall have the right, within thirty (30) days after commencement of such action, to intervene and hold harmless, take over the defense of the action at its own expense; provided that CDS shall consult with CIO on material aspects of such litigation and provided further that CDS shall select counsel to which CIO has no reasonable objection. No settlement, all suits and claims against the Owner for infringement or violation of any patent, trademark, copyright, trade secret consent judgment or other intellectual property rights voluntary final disposition 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, entered into without the consent of CDS which consent shall not be unreasonably withheld or incurred by, delayed.
6.4 Should CDS or CIO commence a suit under the Owner on account of such infringement or violation, provided that the Owner shall cooperate in all reasonable respects with the Vendor foregoing provisions 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 thereafter elect 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 abandon the same, at the Vendor's costabandoning party shall give timely written notice to the other party and such other party may continue prosecution of such suit, risk with the expenses and expenserecovery being allocated as set forth in Sections 6.1, 6.2, 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment6.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: License and Development Agreement (Control Delivery Systems Inc/Ma)
Infringement. (a) The Vendor agrees that it 9.1 Licensee shall defendinform Northwestern promptly in writing of any alleged infringement of the Patent Rights by a third party and of any available evidence thereof
9.2 During the term of this Agreement, indemnify and hold harmlessNorthwestern shall have the right, but shall not be obligated, to prosecute at its own expenseexpense all infringements of the Patent Rights and, all suits and claims against the Owner for infringement or violation in furtherance of such right, Licensee hereby agrees that Northwestern may include Licensee as a party plaintiff in such suit, without expense to Licensee. The total cost of any patentsuch infringement action commenced or defended solely by Northwestern shall be borne by Northwestern and Northwestern shall keep any recovery or damages for past infringement derived therefrom.
9.3 If within six (6) months after having been notified of any alleged infringement, trademarkNorthwestern 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, copyrightor if Northwestern shall notify Licensee at any time prior thereto of its intention not to bring suit against any alleged infringer, trade secret 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 Northwestern as party plaintiff; provided, however, that such right to bring such infringement action shall remain in effect only for so long as the license ranted herein remains exclusive. No settlement, consent judgment or other intellectual property rights voluntary final disposition 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 againstentered into without the consent of Northwestern, which consent shall not unreasonably be withheld. Licensee shall indemnify Northwestern against any order for costs that may be made against Northwestern in such proceedings. Licensee shall keep any recovery or incurred by, the Owner on account of such damages for past 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 derived therefrom; provided, however, that such recovery, less expenses, including reasonable attorneys' fees, shall be treated as Net Sales for the Owner maypurpose of calculating running royalties under Paragraph 5.4
9.4 In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the Patent Rights shall be brought against Licensee, Northwestern, at its own costoption, participate in shall have the investigationright, trial within thirty (30) days after it receives notice of the commencement of such action, to intervene and take over the sole defense of such lawsuit or the action and at its own expense.
9.5 In any appeal arising therefrom. The parties shall cooperate with each other in any notifications infringement suit that either Party may institute to insurers. If a claim for Losses (a "Claim") is enforce the Patent Rights pursuant 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 other 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 samehereto shall, at the Vendor's costrequest and expense of the Party initiating such suit, risk cooperate in all respects and, to the extent possible, have its employees testify when requested and expensemake available relevant records, papers, information, samples, specimens, and (iii) to compromise or settle such Claimthe like.
9.6 Licensee, which compromise or settlement during the term of this Agreement, 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 sole 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 defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement the terms and conditions herein to sublicense any alleged infringer for any final judgment (subject to any right future use of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason Patent Rights. Any upfront fees as part of such settlement or judgmenta sublicense shall be shared equally between Licensee and Northwestern; other royalties shall be treated pursuant to Paragraph 5.4.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: Asset Purchase Agreement (Immtech International Inc)
Infringement. (a) The Vendor agrees that it 8.1 Licensee shall defendinform USM promptly in writing of any alleged infringement of the Patent Rights by a third party and of any available evidence thereof.
8.2 During the term of this Agreement, indemnify and hold harmlessUSM shall have the right, but shall not be obligated, to prosecute at its own expenseexpense any such infringements of the Patent Rights. If USM prosecutes any such infringement, Licensee agrees that USM 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 USM shall be borne by USM, but USM shall keep any recovery or damages for past infringement derived from said suit, whether resulting from a judgment, settlement, or otherwise, as reimbursement for any and all suits expenses, costs, and claims against efforts expended by USM in pursuit of the Owner claim. The remainder, if any, shall then be divided between USM and Licensee in an equitable manner to allow USM to receive a portion thereof equivalent to the royalty that USM would have received but for the infringement.
8.3 If within six (6) months after having been notified of any alleged infringement or violation of any patentsuch shorter time prescribed by law, trademark, copyright, trade secret or other intellectual property rights of any third party enforceable USM shall have been unsuccessful in persuading 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"), coveringalleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if USM 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 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, prosecute at its own costexpense any infringement of the Patent Rights, participate and Licensee may, but only after obtaining consent from and authority from the Attorney General for the State of Mississippi to do so for such purposes, use the name of USM as party plaintiff; provided however that such right to bring an infringement action shall remain in effect only for so long as the investigationlicense granted herein remains exclusive. No settlement, trial and defense consent judgment or other voluntary final disposition 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 suit may be sought under this Agreement, provided, however, no delay on entered into without the part consent 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 ClaimUSM, which compromise or settlement consent shall be made only with the written consent of the Owner (which may not be unreasonably withheld). Licensee shall indemnify USM from and against all costs, unless expenses, judgments, or other adverse results that arise during or that result from such compromise proceedings 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. actions associated therewith.
8.4 In the event that Licensee shall undertake the Owner assumes the enforcement and/or defense of the ClaimPatent Rights by litigation, the Owner will keep the Vendor reasonably informed Licensee may withhold up to fifty percent (50%) of the progress royalties otherwise thereafter due USM hereunder and apply the same toward reimbursement of its expenses, including reasonable attorney's fees, in connection therewith. Said withholding of royalties shall begin no earlier than the date Licensee first receives a ▇▇▇▇ for professional services or expenses for the enforcement and/or defense of the Patent Rights in litigation. Any recovery of damages by Licensee for any such suit shall be applied first in satisfaction of any such defenseunreimbursed expenses and legal fees of Licensee relating to the suit, compromise or settlement. The Vendor shall be liable and next toward reimbursement to USM for any settlement of any action effected royalties past due or withheld and applied pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.Section
Appears in 1 contract
Sources: Patent License Agreement
Infringement. (a) The Vendor agrees that it Monogram shall defend, indemnify and hold harmless, at its own expense, all suits and claims against the Owner for infringement or violation notify MW promptly of any patentinfringements, trademark, copyright, trade secret imitations 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 unauthorized use of Products under this Contract the Licensed Marks by any credit provider(s) (collectively, "Intellectual Property RightsInfringements")) of which Monogram becomes aware. MW shall take such steps as it deems reasonable in the circumstances to ▇▇▇▇▇ any such Infringements. Except as provided below, coveringMW shall have the sole right, or alleged at its expense, to cover, the Products or bring 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 action on account of such infringement or violationany infringements, 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 Monogram shall cooperate with each MW as MW may request (and at MW's expense), in connection with any such action reasonably brought by MW. MW may settle infringements at its sole discretion (but shall use best efforts not to settle in a manner that conflicts with Monogram's rights hereunder), and may retain any and all resulting damages and/or other in any notifications to insurerscompensation paid by the infringer(s). If a claim for Losses MW does not undertake appropriate steps to ▇▇▇▇▇ an Infringement within ninety (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 (1590) calendar days after notice thereof from Monogram, Monogram may prosecute the service same, at its expense, provided that no settlement shall be made without the prior written approval of MW. Monogram shall advise MW periodically of the citation or summons)status of such action and promptly of any material developments. The Vendor MW reserves the right to participate at any time in such proceedings. In the event that any damage, settlement and/or compensation are paid in connection with any such action brought by Monogram, Monogram shall first retain an amount reimbursing its expenses, any remaining amount shall be entitleddivided equally between MW and Monogram.
(b) MW shall have the sole right, if it so electsat its expense, (i) to defend and settle any action that may be commenced against MW or Monogram alleging that use of the Licensed Marks infringe any rights of others. In such lawsuit or actionevent, (ii) Monogram shall, at the reasonable direction of MW, promptly discontinue its use of the Licensed Marks alleged to employ and engage attorneys infringe rights of others. If MW does not give notice to Monogram of its own choice intent to handle and defend or settle such action against Monogram or affecting Monogram's use of the Licensed Marks within ninety (90) calendar days after notice thereof from Monogram, Monogram may defend the same, at the Vendor's cost, risk and its expense, and (iii) to compromise or settle such Claim, which compromise or provided that no settlement shall be made only with without the prior written consent approval of MW. Monogram shall advise MW periodically of the Owner (which may not be unreasonably withheld), unless status of such compromise or settlement includes an unconditional release action and promptly of any claims against the Owner in which event such written consent of the Owner shall not be requiredmaterial developments. 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 MW reserves the right to undertake, participate at the Vendorany time in such proceedings. It is understood that nothing in this Section 5.15(6)(b) is intended to limit or otherwise modify MW'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 defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.
(b) The Vendor's indemnification obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the VendorSECTION 5.15(7)(a)) hereof.
Appears in 1 contract
Sources: Bank Credit Card Program Agreement (Montgomery Ward Holding Corp)
Infringement. (a) The Vendor agrees that it 13.1 ECHOMAIL shall defend, indemnify and hold harmlessharmless CUSTOMER from all costs, at its own expenseexpenses, all damages, suits and claims against other proceedings incurred by CUSTOMER, its officers, directors, employees or agents in connection with any claim that the Owner for infringement or violation of Licensed Software infringes any patent, trademark, copyright, trade secret or other intellectual property proprietary 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 violationparty, 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"a) 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 CUSTOMER promptly informs ECHOMAIL of any factsuch action, condition or event and
(b) CUSTOMER furnishes to ECHOMAIL all information and assistance in connection therewith which may give rise be reasonably requested by ECHOMAIL from time 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 time. ECHOMAIL 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 sole right to undertakesettle, at the Vendor's cost and expensedefend, the defense, compromise or settlement of otherwise handle any such Claim on behalf of and for the account and risk of the Vendorclaim. In the event the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress use of any Licensed Software is enjoined, ECHOMAIL shall, at its option, either (a) procure for CUSTOMER the right to continue to use such defenseLicensed Software, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.
(b) The Vendor's obligation replace or modify the same to make it non-infringing, or (c) terminate the license to such Licensed Software and provide a pro rata refund to CUSTOMER of all amounts paid by CUSTOMER for the allegedly infringing Licensed Software to ECHOMAIL hereunder, based upon a five (5) year life of such Licensed Software.
13.2 ECHOMAIL’S obligations under this subsection Section 13.0 shall be only for the benefit of CUSTOMER. ECHOMAIL shall not extend be obligated to alleged infringements defend or violations that arise because to be liable under this Section 13.0 to the Products extent the infringement asserted arises out of (a) compliance with specification originating with CUSTOMER, (b) use or combination of Licensed Software with items not provided by ECHOMAIL to the Vendor are used in extent such infringement would not have occurred but for such use or combination with such other products items; (c) use of other than the latest unmodified version of Licensed Software if such infringement would have been avoided by the use of such later version; or (d) modification of Licensed Software other than by ECHOMAIL.
13.3 This Section 13.0 states the exclusive remedy of CUSTOMER and the entire liability of ECHOMAIL with respect to infringement of any patent, copyright, or other proprietary rights of third parties by items furnished by third parties and where any such combination was not installed, recommended or approved by the VendorECHOMAIL hereunder.
Appears in 1 contract
Infringement. Each Party shall promptly inform the other Party in writing of any suspected, alleged or threatened infringement of any Helicon Patents, CSHL Patents or Joint Patents of which it becomes aware.
(a) The Vendor agrees that it With respect to Helicon Patents which are not also Joint Patents, Helicon 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 but not the obligation to undertakebring, at the VendorHelicon'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 defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to expense and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and its sole control an appropriate action against any Losses by reason Person or entity infringing the Helicon Patent. If Helicon does not bring such action within forty-five (45) days of notification thereof, CSHL shall have the right, but not the obligation, to bring at CSHL's expense and in its sole control, such settlement or judgmentappropriate action.
(b) The VendorWith respect to CSHL Patents which are not also Joint Patents, CSHL shall have the right but not the obligation to bring, at CSHL's obligation expense and in its sole control an appropriate action against any Person or entity infringing the CSHL Patent. If CSHL does not bring such action within forty-five (45) days of notification thereof, Helicon shall have the right, but not the obligation, to bring at Helicon's expense and in its sole control, such appropriate action.
(c) With respect to third party infringement of Joint Patents which are neither Helicon Patents nor CSHL Patents, the Parties shall confer and take such action and allocate expenses and recoveries in such manner, as they may agree. In the absence of agreement, the rules applicable to Helicon Patents which are not also Joint Patents shall apply to the Joint Patent in question.
(d) Any Party not bringing an action under this subsection Section, if it so desires, may also be represented by separate counsel of its own selection, the fees for which counsel shall be paid by it; but such Party shall fully cooperate with the Party bringing such action. The Party which is not in control of any action brought pursuant to this Section may elect to contribute fifty percent of the costs of litigation against such third party infringer by providing written notice to the controlling Party within ninety days after such action is first brought. If the non-controlling Party elects to bear fifty percent of such litigation costs it shall receive fifty percent of any damage award or settlement resulting from such action. If the non-controlling Party does not elect to share such litigation costs it shall not extend participate in any damage award or settlement resulting from such action.
(e) Should either Party commence a suit under the provisions of this Section 5.8 and thereafter elect to alleged infringements or violations abandon such suit, the abandoning Party shall give timely notice to the other Party who may, if it so desires, continue prosecution of such suit, provided that arise because the Products provided by the Vendor are used sharing of expenses and any recovery in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendorsuit shall be as agreed upon between both Parties.
Appears in 1 contract
Sources: Convertible Preferred Stock Purchase Agreement (Osi Pharmaceuticals Inc)
Infringement. 1To the extent permitted by law, Licensee shall have the right during the term of this Agreement to commence an action for infringement of the Licensed Patents against any unlicensed third party for any infringement occurring within the Field, provided that Licensee shall provide UVA LVG thirty (a30) The Vendor agrees that it days prior written notice of such infringement and of Licensee’s intent to file such action. UVA LVG shall defend, indemnify and hold harmless, have the right at its own expenseexpense to appear in such action by counsel of its own selection. If, all suits as a matter of law, an infringement action must be prosecuted in the UVA LVG’s name, UVA LVG shall voluntarily participate in or pursue such action at Licensee’s expense (including without limitation reasonable and claims against documented legal fees and out of pocket expenses). Notwithstanding the Owner for foregoing, if an appearance or infringement action would subject UVA LVG to the jurisdiction of a foreign tribunal that could not otherwise assert jurisdiction over UVA LVG, then UVA LVG shall have the right to decline appear or violation otherwise pursue such action. Settlement of any patentaction initiated and/or paid for by Licensee shall require the consent of UVA LVG and Licensee, trademark, copyright, trade secret or other intellectual property rights of any third party enforceable in which neither shall unreasonably withhold from the United States or in any other territory where Vendor has approved other. In 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 event that it shall pay Licensee pays all sums, including without limitation, reasonable attorneys' fees and other costs incurred at Vendor's written request expenses related to an infringement action, any settlement amount 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 recovery 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 damages shall be given to the Vendor applied 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, follows: (i) first, to defend such lawsuit or action, reimburse the parties for their expenses in connection with the litigation; and (ii) to employ and engage attorneys second, UVA LVG shall receive compensation for the time of its own choice to handle and defend any UVA LVG personnel involved in the same, at the Vendor's cost, risk and expense, action; and (iii) to compromise third, Licensee shall receive eighty five percent (85%) and UVA LVG shall receive fifteen percent (15%) of any monies remaining. If Licensee pays less than all such fees and expenses, Licensee’s share of any settlement amount or settle such Claim, which compromise or settlement recovery for damages shall be made only with reduced from eighty five percent (85%) in proportion to the written consent percentage of the Owner fees and expense paid by UVA LVG (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 and/or unreimbursed by Licensee prior 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appealSettlement), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: License Agreement (Agenus Inc)
Infringement. (a) The Vendor agrees that 9.1 LICENSEE and USC shall promptly inform the other in writing of any alleged infringement of which it shall defendhave notice by a third party or any patents within the Patent Rights and provide such other with any available evidence of infringement.
9.2 During the term of this Agreement, indemnify and hold harmlessLICENSEE shall have the tight, but shall not be obligated, to prosecute at its own expenseexpense any such infringements of the Patent Rights and, all suits and claims against the Owner for infringement or violation in furtherance of such rights, USC hereby agrees that LICENSEE may join USC as a party plaintiff in any such suit, without expense to USC. The total cost of any patentsuch infringement action commenced or defended solely by LICENSEE shall be borne by LICENSEE, trademarkand LICENSEE shall keep any recovery or damages for past infringement derived therefrom, copyrightexcept for that portion to be paid to USC pursuant to Article IV hereof USC shall make the inventors available and cooperate in the litigation. No settlement, trade secret consent judgment or other intellectual property rights voluntary final disposition of the suit may be entered into without the consent of USC, which consent shall not unreasonably be withheld. LICENSEE shall indemnify USC against any order for costs that may be made against USC in such proceedings.
9.3 If within eighteen (18) months after having been notified of any third party enforceable alleged infringement, LICENSEE shall have been unsuccessful in persuading 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"), coveringalleged infringe to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE shall notify USC at any time prior thereto of its intention not to bring suit against any alleged infringe, then, and in those events only, USC shall have the right, but shall not be obligated, to coverprosecute at its own expense any infringement of the Patent Rights, and USC may, for such purposes, use the Products or any component thereof. The Vendor agrees name of LICENSEE as party plaintiff.
9.4 In the event that it LICENSEE shall pay all sumsundertake 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 USC hereunder and apply the same toward reimbursement of its expenses, including without limitation, reasonable attorneys' fees and other costs incurred at Vendor's written request or authorization, whichfees, in defense ofconnection therewith. Any recovery of damages by LICENSEE for any such suit shall be applied first in satisfaction with any unreimbursed expenses and legal fees of LICENSEE relating to the suit, by final judgment and next toward reimbursement of USCN for any royalties past due or decree, or in settlement of withheld and applied pursuant to this Article IX.
9.5 In any infringement suit or claim that either party may institute to which enforce the Vendor agrees, may be assessed against, or incurred byPatent Rights pursuant to this Agreement, the Owner on account other party shall, at the request and expense of the party initiating such infringement or violationsuit, provided that the Owner shall cooperate in all reasonable respects with the Vendor and its attorneys in the investigationand, 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 extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the party entitled to indemnification becomes aware like.
9.6 LICENSEE, during the exclusive period 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 sole 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 defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement the terms and for conditions herein to sublicense any final judgment (subject to any right of appeal), and alleged infringer under the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentPatent Rights.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: License Agreement (Universal Technology Systems Corp.)
Infringement. (a) The Vendor 9.1 LICENSEE and BRANDEIS 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 PATENT RIGHTS and shall provide such other with any available evidence of such infringement.
9.2 During the term of this Agreement, LICENSEE shall have the rights, but shall not be obligated, to prosecute at its own expense any infringements of the PATENT RIGHTS and, in furtherance of such right, LICENSEE hereby agrees that it BRANDEIS may join LICENSEE as a party plaintiff in any infringement suit, without expense to LICENSEE. The total cost of any infringement action commenced or defended solely by LICENSEE shall defendbe borne by LICENSEE and LICENSEE shall keep any recovery or damages for past infringement derived therefrom in keeping with Paragraph 9.4. If BRANDEIS and LICENSEE mutually agree to join together in the prosecution of any such infringement, indemnify the expenses for such prosecution shall be equally divided between BRANDEIS and hold harmlessLICENSEE. Any recovery or damages for past infringement derived therefrom shall be applied first in satisfaction of any unreimbursed expenses and reasonable legal fees of both parties, and the balance remaining from such recovery shall be divided equally between LICENSEE and BRANDEIS.
9.3 If within ninety (90) days after having been notified of any alleged infringement, LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be prosecuting an infringement action, or if LICENSEE shall notify BRANDEIS at any time prior thereto of its intention not to bring suit against any alleged infringer, then, BRANDEIS 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, join BRANDEIS as a party plaintiff, without expense to BRANDEIS. No settlement, consent judgment or other voluntary final disposition of an infringement suit may be entered into without the consent of both BRANDEIS and LICENSEE where both are parties joined in the suit, which consent shall not unreasonably be withheld.
9.4 In the 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 royalties otherwise thereafter due BRANDEIS hereunder and apply the same toward reimbursement of its expenses, including reasonable attorneys’ fees, court reporters, transcripts, expert witnesses, and exhibits in connection therewith. 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 BRANDEIS for any royalties past due or withheld and applied pursuant to this Article IX. The balance remaining from any such recovery shall be divided equally between LICENSEE and to BRANDEIS.
9.5 In the event that a declaratory judgment action alleging invalidity or infringement of any of the PATENT RIGHTS shall be brought against LICENSEE, BRANDEIS, at its option, shall have the right, within thirty (30) days after commencement of such action has been noticed to BRANDEIS, to intervene and take over the sole defense of the action at its own expense, all suits and claims against the Owner for infringement or violation . Any recovery of damages by BRANDEIS shall be applied first in satisfaction of any patentunreimbursed expenses of both BRANDEIS and LICENSEE. If BRANDEIS elects not to intervene, trademark, copyright, trade secret or other intellectual property rights LICENSEE may assume the defense and may escrow annually fifty (50%) percent of royalties otherwise due BRANDEIS and apportion any third party enforceable damages in the United States same proportions and to the same extent as set forth in Paragraph 9.4 hereof. Any obligation of BRANDEIS to reimburse LICENSEE shall cease upon termination of this Agreement.
9.6 In any infringement suit as either party may institute to enforce the PATENT RIGHTS or in any other territory where Vendor has approved defense of the deployment or use of Products under PATENT RIGHTS pursuant to this Contract (collectively, "Intellectual Property Rights"), covering, or alleged to coverAgreement, the Products or any component thereof. The Vendor agrees that it shall pay all sumsother party hereto shall, including without limitationat the request and expense of the party initiating such suit, 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 investigationrespects, 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 including being named as 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 suit in order to facilitate compliance with legal requirements for joinder of parties and, to the party entitled to indemnification becomes aware extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like.
9.7 LICENSEE, during the period 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 with the Vendor's cost and expense, the defense, compromise or settlement concurrent approval 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 defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and BRANDEIS in accordance with the terms and conditions of this Agreement to sublicense any alleged infringer under the PATENT RIGHTS relating to past and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentfuture infringements.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Infringement. (a) The Vendor agrees In the event 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 Party becomes aware of any fact, condition alleged or event which may give rise to Losses for which indemnification may be sought under this Agreement, provided, however, no delay on the part threatened infringement of the Owner Licensed Patents in notifying the Vendor Territory, such Party shall relieve promptly notify the Vendor from any obligation hereunder unless (and then solely to other Party in writing. Shionogi shall have the extent) right, but not 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 sameobligation, at the Vendor's cost, risk its discretion and expense, to enforce the Licensed Patents against such infringement, and (iii) to compromise defend the Licensed Patents against any claims of invalidity or settle unenforceability in the Territory. Peninsula shall give Shionogi all reasonable information and assistance with respect to such Claimenforcement. Except as set forth in Section 12.3(b), which compromise any damages or settlement remuneration received as a result of such action 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 reimbursing for the account costs 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 defense, compromise or settlement. The Vendor shall be liable expenses incurred by Peninsula for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentits assistance.
(b) The Vendor's obligation under this subsection Peninsula shall have the right, but not extend the obligation, at its discretion and expense, to alleged infringements join in such action and seek damages for its lost profits caused by such infringement. Any damages or violations that arise because remuneration received as a result of such action shall be applied first to reimburse each Party for the Products provided costs and expenses incurred in such action. Any [*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED. remaining amount of such damages or remuneration shall be allocated by the Vendor are used in combination Parties [*] of the Parties.
(c) If Shionogi does not take any legal action for any reason with other products furnished respect to such infringement within one hundred twenty (120) days following Peninsula's notification, Peninsula shall have the right to bring any appropriate suit or action against the infringer at Peninsula's expense. Shionogi shall give Peninsula all reasonable information and assistance with respect to such infringement. Any damages or remuneration received as a result of such action shall be [*] after reimbursing any cost and expenses incurred by third parties and where any such combination was not installed, recommended or approved by the VendorShionogi for its assistance.
Appears in 1 contract
Infringement. (a8.1. LICENSEE or its SUBLICENSEE(s) The Vendor shall have the right to prosecute in their own name and at their own expense any infringement of the PATENT RIGHTS, so long as the license is effective at the time such legal action is commenced. LICENSOR agrees that it to notify LICENSEE promptly of each infringement of the PATENT RIGHTS of which LICENSOR becomes aware. Before LICENSEE or its SUBLICENSEES commences an action for infringement, LICENSEE or SUBLICENSEE shall defendnotify LICENSOR and carefully consider the views of LICENSOR and the public interest.
8.2. LICENSOR agrees to join as a party plaintiff in any lawsuit initiated by LICENSEE, indemnify if requested by LICENSEE, with all costs, attorney fees and hold harmlessexpenses to be paid by LICENSEE.
8.3. If LICENSEE undertakes to enforce and/or defend the PATENT RIGHTS by litigation, any award paid by a third party as a result of such enforcement and/or defense shall be applied first to satisfy LICENSOR’s and LICENSEE’S unreimbursed expenses and legal fees for the litigation, and any remaining balance shall be subject to EARNED ROYALTIES as set forth in Section 3.6. INFORMATION MARKED BY [***] HAS BEEN OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTION HAS BEEN SEPARATELY FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
8.4. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without LICENSOR’s consent, which shall not be unreasonably withheld.
8.5. If LICENSEE and its SUBLICENSEE(s) elect not to exercise their right to prosecute or defend an infringement of the PATENT RIGHTS, LICENSOR may do so at its own expense, controlling such action and retaining all suits and claims against the Owner for infringement or violation recoveries.
8.6. If a declaratory judgment action alleging invalidity of any patentof the PATENT RIGHTS is brought against LICENSEE or LICENSOR, 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 maythen LICENSOR, at its own costsole option, 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 intervene 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 take over the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentat its own expense.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: Exclusive License Agreement (Arno Therapeutics, Inc)
Infringement. (a) The Vendor agrees that it parties shall defendinform each other promptly, indemnify in writing, of any alleged infringement of the Patent Rights by a third party, and hold harmlessany available evidence thereof. During the term of this Agreement, LICENSEE shall have the right, subject only to approval not unreasonably withheld of RESEARCH FOUNDATION, but shall not be obligated to prosecute at its own expenseexpense any such infringements of the Patent Rights and, all suits and claims against the Owner for infringement or violation in furtherance of such right, RESEARCH FOUNDATION hereby agrees that LICENSEE may join RESEARCH FOUNDATION as a party plaintiff in any such suit, without expense to RESEARCH FOUNDATION. The total cost of any patentsuch infringement action except as provided in Paragraph 7.4. hereof, trademarkcommenced or defended solely by LICENSEE shall be borne by LICENSEE and LICENSEE shall keep any recovery or damages for past infringement derived therefrom, copyrightprovided, trade secret that LICENSEE, after deduction of its reasonable costs expended in Pursuit of such infringement, shall remit to Research Foundation a share of said recovery or other intellectual property rights damages equivalent to a royalty as if such recovery or damages were Net Sales hereunder. If within six (6) months after having been notified of any third party enforceable alleged infringement, LICENSEE shall have been unsuccessful in persuading 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"), coveringalleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE shall notify RESEARCH FOUNDATION at any time 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 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, prosecute at its own costexpense any infringement of the Patent Rights, participate in and RESEARCH FOUNDATION may, for such purposes, use the investigationname of LICENSEE as party plaintiff. No settlement, trial and defense consent judgment or other voluntary final disposition 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 suit may be sought under this Agreement, provided, however, no delay on entered into without 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 (other party, 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 unreasonably 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 Vendorwithheld. In the event that LICENSEE shall undertake the Owner assumes the enforcement and/or defense of the ClaimPatent Rights by litigation, LICENSEE may withhold up to fifty percent (50%) of the royalties otherwise thereafter due RESEARCH FOUNDATION hereunder and apply the same toward reimbursement of up to fifty percent (50%) of its expenses, including reasonable attorneys’ fees, in connection therewith. Any recovery by LICENSEE of damages for past infringement in 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 RESEARCH FOUNDATION for any royalties past due or withheld and applied pursuant to this Article VII. LICENSEE shall keep the balance remaining from any such recovery subject to the proviso set forth in Article 7.2 above. In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the Patent Rights shall be brought against RESEARCH FOUNDATION, LICENSEE 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 except as provided in Paragraph 7.4. In any infringement suit as either party may institute to enforce the Patent Rights pursuant to this Agreement, the Owner will keep other party hereto shall, at the Vendor reasonably informed request and expense of the progress of any party initiating such defensesuit, compromise or settlementcooperate 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. The Vendor shall be liable for any settlement of any action effected pursuant RESEARCH FOUNDATION warrants and represents that it has the lawful right to and grant the license provided in accordance with this Agreement and for 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 final judgment (subject to any right of appeal)license granted hereunder, and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.
(b) The Vendor's obligation under this subsection RESEARCH FOUNDATION shall not extend to alleged infringements enter into any other agreements that conflict with the rights or violations obligations provided hereunder, including any rights and obligations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendorsurvive termination of this Agreement.
Appears in 1 contract
Sources: License Agreement
Infringement. A. In the event that a third part appears to be infringing one or more of the Licensed Patents, CONVATEC shall bring such infringement to the attention of LICENSOR. If LICENSOR does not institute infringement proceedings against such third party within ninety (a90) The Vendor agrees days after written notice from CONVATEC that such third party appears to be infringing one or more of the Licensed Patents, CONVATEC shall have the right to take whatever steps in its own and sole discretion it shall defenddeem advisable, indemnify including but not limited to, settlement or the filing of suit for damages or to enjoin such sales or offers for sale by such third party. LICENSOR agrees to perform all acts which may become necessary or desirable to vest in CONVATEC the right to institute any such suit and hold harmlessshall, upon reasonable notice, cooperate and, to the extent deemed necessary or desirable by CONVATEC and at its own CONVATEC’s expense, all suits participate in any suit to enjoin such infringement and claims against to collect, for the Owner for infringement or violation benefit of CONVATEC, damages, profits and awards of any patent, trademark, copyright, trade secret nature recoverable for such infringement. The costs and expenses of such suit or other intellectual property rights settlement shall be borne by CONVATEC. Recovery of damages in any such suit or settlement with any third party enforceable in shall inure to the United States or in any other territory where Vendor has approved the deployment or use benefit of Products under this Contract (collectivelyCONVATEC; however, "Intellectual Property Rights"), covering, or alleged to cover, the Products or any component thereof. The Vendor agrees that it CONVATEC shall pay all sums, including without limitation, after first recouping its 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 connection with such suit or claim settlement apply any excess recovered damages to which reimbursing LICENSOR, to the Vendor agrees, may be assessed against, or incurred byextent of such excess, the Owner on account royalties that would have been payable to LICENSOR but for application of such Article V, Paragraph E, hereof.
B. LICENSOR agrees should a third party institute a patent 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 suit 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 country of the Owner in notifying the Vendor Territory against CONVATEC or a Subsidiary or sublicensee of CONVATEC predicated on CONVATEC’s or its Subsidiaries' or sublicensees’ manufacture, use or sale of Product, CONVATEC 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 reduce by fifty percent (50%) royalties due to LICENSOR in such Claim on behalf of and for the account and risk of the Vendorcountry hereunder with respect to such Product. In the event the Owner assumes the defense of the Claimsuch third party suit is successfully defended by CONVATEC, the Owner will keep the Vendor reasonably informed of the progress of any it shall, upon final determination thereof, pay to LICENSOR all royalties that would have been payable to LICENSOR if such defensesuit had not been instituted, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to less reasonable attorneys’ fees and costs incurred by CONVATEC in accordance connection with this Agreement and for any final judgment (subject to any right of appeal)such suit, and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.
(b) The Vendor's obligation under this subsection which shall not extend exceed the total amount of royalties payable to alleged infringements or violations that arise because the Products provided LICENSOR by the Vendor are used in combination with other products furnished by third parties virtue of said successful defense and where any such combination was not installed, recommended or approved by the Vendorfinal determination.
Appears in 1 contract
Sources: License Agreement (Bioprogress PLC)
Infringement. 8.1 In the event that there is infringement of the PATENTS, the PARTIES shall notify each other in writing to that effect. During the one hundred twenty (a120) The Vendor agrees that it shall defendday period after such notice, indemnify and hold harmlessSSC will have the right, at its own expense, all suits and claims but not the obligation to bring suit against the Owner for infringement or violation alleged infringer. SSC shall bear the expenses of any patent, trademark, copyright, trade secret suit brought by it and shall retain all damages or other intellectual property rights of any third party enforceable in the United States monies awarded 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 received in settlement of any suit or claim such suit. If SSC elects to which bring suit, SSC shall have the Vendor agrees, may be assessed against, or incurred by, the Owner final decision 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 matters relating to litigation and any appeal arising therefromsettlement discussions; provided, however, that SSC shall not enter into any settlement agreement or take any position in litigation, and shall take reasonable efforts to prevent Tyco from entering into any settlement or taking any position in litigation, that compromises or adversely impacts the Owner mayrights granted to LICENSEE under this Agreement (including, at its own costbut not limited to, participate in the investigation, trial and defense exclusivity granted to LICENSEE within the field of such lawsuit or action and any appeal arising therefromuse of angiographic guidewire introducers) without LICENSEE's prior written consent. The parties shall LICENSEE will use reasonable efforts to cooperate with each other SSC 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 suit and 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, consult with SSC and be represented by its own counsel at the Vendor's cost and its own expense, the defense, compromise or settlement of . All reasonable costs incurred by LICENSEE associated with providing such Claim on behalf of and for the account and risk of the Vendorcooperation to SSC will be paid by SSC. In the event either SSC or Tyco, without LICENSEE's prior written consent, enters into any settlement agreement or takes any position in litigation that eliminates the Owner assumes exclusivity granted to LICENSEE within the defense field of use of angiographic guidewire introducers, the minimum annual royalties specified in Section 5.2 hereof shall automatically be reduced by one-half. If, after the expiration of said one hundred twenty (120) days from the date of such notice, SSC has not brought suit against a third party infringer, then LICENSEE shall have the right after such one hundred twenty (120) day notice period, but not the obligation, to bring suit against such infringer and join SSC as a party plaintiff provided that LICENSEE shall bear all expenses of such suit. LICENSEE shall retain all damages or other monies awarded or received in settlement of such suit. SSC will reasonably attempt to cooperate with LICENSEE in any suit for infringement of the Claimsubject patent brought by LICENSEE against a third party and shall have the right to consult with LICENSEE and to participate in and be represented by independent counsel in such litigation at its own expense. All reasonable costs incurred by SSC associated with providing cooperation to LICENSEE shall be paid by LICENSEE. Where it is necessary for LICENSEE to have standing to file the suit, SSC shall assign limited concurrent rights to the Owner will keep licensed PATENTS for the Vendor reasonably informed terms of the progress suit.
8.2 In the event LICENSEE has decided to bring suit against an infringer, it shall use reasonable commercial efforts to ▇▇▇▇▇ such infringement. It is understood that the term best efforts under this Paragraph 8.2 shall include the filing for injunctive relief and all other actions which could bring about an early abatement of the infringing activity. Notwithstanding the foregoing, LICENSEE shall not enter into any such defensesettlement agreement, compromise or settlementtake any position in litigation which adversely impacts SSC's rights under this Agreement without written consent by SSC. The Vendor During the period commencing with LICENSEE's filing of a complaint for infringement of the licensed PATENTS (or the PARTIES' receipt of a filed complaint from a third party) and ending on a court's issuance of a final non-appealable decision or other termination of the proceeding, LICENSEE's royalty obligation under Paragraph 5.2 shall be liable for any settlement of any action effected pursuant to reduced by the costs and expenses LICENSEE has incurred in accordance with this Agreement enforcing and for any final judgment (subject to any right of appeal), and protecting the Vendor agrees to indemnify and hold harmless PATENTS against infringement by third parties.
8.3 In the Owner from and against any Losses by reason event of such settlement or judgmentinfringement, LICENSEE's remedies against SSC shall be limited to those remedies expressly set forth in this Article 8. It is also understood and agreed that infringement proceedings referenced in this section includes proceedings challenging the validity of the PATENTS.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: License Agreement (Specialized Health Products International Inc)
Infringement. 16.1 If either party learns of a claim of 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. Licensor, in consultation with Licensee, shall then use reasonable efforts to terminate such infringement if the parties mutually agree that such efforts are appropriate under the circumstances. In the event Licensor fails to ▇▇▇▇▇ the infringing activity within ninety (90) days after such written notice or to bring legal action against the third party, Licensee may bring suit for patent infringement. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of Licensor, which consent shall not be unreasonably withheld.
16.2 Any such legal action shall be at the expense of the party by whom suit is filed, hereinafter referred to as the “Litigating Party”. Any damages or costs recovered by the Litigating Party in connection with a legal action filed by it hereunder, and provided that the Litigating Party is reimbursed for its costs and expenses reasonably incurred in the lawsuit, and after any royalties or other payments due to Licensor under Article 4 are paid, shall be retained by Licensee under the following conditions: (a) The Vendor agrees that it damages for lost sales shall defend, indemnify be treated as Net Sales (after reasonable costs and hold harmless, at its own expense, all suits and claims against the Owner for infringement or violation expenses 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"litigation are subtracted), coveringand the royalty due on the corresponding amount of Net Sales shall be paid to Licensor; (b) [***] percent ([***]%) of punitive damages, 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, whichif any, in defense of, excess of damages for lost sales shall be paid to Licensor and the remainder shall be retained by final judgment or decree, or Licensee. Specific terms in settlement this Exhibit have been redacted because such terms are both not material and are 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 type that the Owner shall cooperate Company treats as private or confidential. These redacted terms have been marked in all reasonable respects this Exhibit with the Vendor three asterisks [***].
16.3 Licensee 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 Licensor shall cooperate with each other in any notifications to insurers. If a claim for Losses (a "Claim") is to litigation proceedings instituted hereunder, provided that such cooperation shall be made by a party entitled to indemnification hereunder against at 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 expense of the Owner in notifying the Vendor shall relieve the Vendor from any obligation hereunder unless (Litigating Party, 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 such litigation 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided controlled by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the VendorLitigating Party.
Appears in 1 contract
Sources: Exclusive License Agreement (Reata Pharmaceuticals Inc)
Infringement. (a) The Vendor agrees that it Licensee and Licensor shall defendeach promptly notify the other following the discovery of any alleged infringement or unauthorized use of the Patents, indemnify and hold harmlessTechnology and/or Trademark which may come to their attention. Licensor shall promptly undertake, at its own Licensor's expense, all suits and claims against reasonable efforts to obtain a discontinuance of the Owner for infringement or violation unauthorized use and, if not successful, Licensor will bring suit against such infringer unless the patent is no longer necessary to protect the product.
(b) If Licensor fails to obtain a discontinuance of such infringement, then Licensor shall give notice in writing to Licensee within thirty (30) days of such failure or election and Licensee may, but is not required to, obtain a discontinuance of the alleged infringement or unauthorized use or bring an infringement suit; provided, that Licensee shall not agree to any patent, trademark, copyright, trade secret settlement with respect to such infringement or other intellectual property rights unauthorized use without the prior written consent of any third party enforceable Licensor. Any infringement suit by the Licensee shall be in the United States or in any other territory where Vendor has approved name of 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 decreeLicensee, or in settlement the name of the Licensor, or jointly by both Licensee or Licensor, as may be required by the law of the forum. Licensor shall execute such documentation as may be reasonably required by Licensee.
(c) It is understood and agreed that the party to this Agreement that institutes suit or action shall bear solely all costs and expenses in connection therewith and shall be entitled to recover all costs first and then share 50/50 the balance of any suit sums received, obtained, collected or claim to which the Vendor agreesrecovered whether by judgement, may be assessed againstsettlement or otherwise, or incurred by, the Owner on account as a result 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 therefromsuit; 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 if a claim for Losses settlement by Licensee (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 prior written consent of the Owner (which may not be unreasonably withheld)Licensor) includes the granting by Licensee of rights hereunder to a third party, unless amounts received by Licensee or such compromise or settlement includes an unconditional release of any claims against the Owner in which event such written consent of the Owner third party shall not be requiredincluded in Net Sales. If the Vendor fails In addition, with respect to assume the defense of such Claim within fifteen (15) calendar days after receipt any suit for infringement or unauthorized use of the Claim NoticePatents, Technology and /or Trademark, the Owner against which such Claim has been asserted will (upon delivering notice to such effect party that did not institute suit shall render all reasonable assistance to the Vendor) have the right to undertakeparty that did institute suit, at the Vendor's cost and expenseincluding but not limited to, 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 executing all documents as may be reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided requested by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by party that did institute the Vendorsuit.
Appears in 1 contract
Infringement. (a) 7.1 If any claims in the PATENT RIGHTS are believed to be infringed by a third party, the party to this AGREEMENT first having knowledge of such infringement shall promptly so notify the other party to this AGREEMENT in writing. Such notice shall set forth in reasonable detail the facts of that infringement as are then known. The Vendor parties shall keep each other informed on a timely basis of all developments within their knowledge in relation to such infringement.
7.2 BIOMIRA shall have the primary right, but not the obligation, to initiate, prosecute, and control any action or proceeding with respect to such infringement. UA agrees to cooperate and give reasonable assistance including executing all necessary documents and being named a party plaintiff and to vest in BIOMIRA the right to institute any such suit. To the extent BIOMIRA exercises its rights under this section 7.2, BIOMIRA shall bear all costs and expenses incurred by it in the foregoing regard. Any recoveries as a result of such proceedings shall belong to BIOMIRA, provided that if BIOMIRA's recoveries exceed BIOMIRA's costs and expenses with respect to such infringement action, such excess recoveries shall be considered NET SALES and subject to the applicable royalty obligations under section 4.1.2.
7.3 Decisions or actions concerning or governing any final disposition of the complaint shall be taken in consultation with UA.
7.4 During the term of this AGREEMENT, if BIOMIRA fails in a reasonably timely manner to or chooses not to prosecute infringers, UA shall have the right, but shall not be obligated, to prosecute at its own expense all infringers of the PATENT RIGHTS and, in furtherance of such right, BIOMIRA hereby agrees that it UA may include BIOMIRA as a party plaintiff in any such suit, without expense to BIOMIRA. The total cost of any such infringement action commenced or defended solely by UA shall defendbe borne by UA and UA shall keep any recovery or damages for past infringement derived therefrom.
7.5 In the event that a declaratory judgment action alleging invalidity of or infringement of third party rights by any of the PATENT RIGHTS shall be brought against BIOMIRA and/or UA, indemnify and hold harmlessBIOMIRA fails to or chooses not to defend such action in a reasonably timely manner, UA, at its option, shall have the right, within [+] after commencement of such action, to intervene and take over the defense of the action at its own expense, all suits and claims against .
7.6 In any infringement suit that either party may institute to enforce 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 PATENT RIGHTS pursuant to this Contract (collectively, "Intellectual Property Rights"), covering, or alleged to coverAGREEMENT, the Products or any component thereof. The Vendor agrees that it shall pay all sumsother party hereto shall, including without limitationat the request and expense of the party initiating such suit, 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 investigationand, 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 factextent possible, condition or event which may give rise to Losses for which indemnification may be sought under this Agreementhave its employees testify when requested and make available relevant records, providedpapers, howeverinformation, 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 hereundersamples, 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal)specimens, and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentlike.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: License Agreement (Biomira CORP)
Infringement. (a) The Vendor agrees that it shall Company will defend, indemnify and hold harmless, at its own expense, all suits and claims any action against MassRoots based on a claim that the Owner CannaRegs Non-Cannabis Intellectual Property infringes a United States or foreign patent, or United States or foreign copyright or involves misappropriation of a trade secret to the extent that such claim relates to Company’s usage of the CannaRegs Non-Cannabis Intellectual Property. Company will pay such damages or costs as are finally awarded against MassRoots for such infringement or violation misappropriation provided that MassRoots gives Company: (a) prompt written notice of any such action and of all prior related claims; (b) sole control of the defense and settlement of such action; and (c) full cooperation (at Company’s expense) in any defense or settlement. Company shall not be liable for any fees, costs or damages incurred without such prior written notice, control and cooperation and/or that do not relate to Company’s usage of the CannaRegs Non-Cannabis Intellectual Property. Should any CannaRegs Non-Cannabis Intellectual Property become, or in Company's opinion be likely to become, the subject of a claim of infringement or trade secret misappropriation as set forth herein, Company shall, at its option and expense either: (a) obtain for itself the right to continue using the CannaRegs Non-Cannabis Intellectual Property; (b) replace or modify the CannaRegs Non-Cannabis Intellectual Property so its use becomes non-infringing or otherwise lawful; or (c) discontinue using the infringing portion of the CannaRegs Non-Cannabis Intellectual Property. MassRoots shall have no liability for any claim of infringement of a patent, trademark, copyright, trade secret copyright or other intellectual property right or trade secret misappropriation, based on the use of the CannaRegs Non-Cannabis Intellectual Property under this Agreement to the extent that the CannaRegs Non-Cannabis Intellectual Property is held by CannaRegs immediately prior to the Merger. This Section 6 states Company’s exclusive remedy and MassRoots’ sole liability for the CannaRegs Non-Cannabis Intellectual Property, that is held by CannaRegs immediately prior to the Merger, infringing on the intellectual property rights of any third party enforceable in the United States parties 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 constituting 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 misappropriation 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 trade secrets 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentthird parties.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: License Agreement (MassRoots, Inc.)
Infringement. 8.1 The Parties shall promptly notify each other of any suspected infringement of any Licensed Patents.
i. During the Term, COMPANY shall, at its expense, have the right to enforce any Licensed Patents against such infringer and may defend any declaratory judgment action brought against it alleging the invalidity of a Licensed Patent. COMPANY agrees to defend EMORY against any counterclaim brought against it in such action. EMORY shall cooperate with COMPANY in such effort, at COMPANY'S expense, including being joined as a party to such action, if necessary. COMPANY shall reimburse EMORY for any costs incurred, including reasonable attorneys’ fees, as part of any action brought by COMPANY.
ii. COMPANY shall not enter into any settlement agreement, voluntary dismissal, consent judgment or other voluntary final disposition in any action regarding the Licensed Patents, including without the express written consent of EMORY. Any amounts received for punitive or exemplary damages shall be shared equally between EMORY and COMPANY and any other amounts received, including compensatory damages or damages based on a loss of revenues which exceed the out-of-pocket costs and expenses incurred by COMPANY, shall be deemed to be the proceeds of Sales of Licensed Products in the fiscal quarter received.
8.2 If COMPANY fails, within one hundred twenty (a120) The Vendor agrees days after receiving notice of a potential infringement, to institute an action against such infringer or notifies EMORY that it does not plan to institute such action, then EMORY shall defend, indemnify and hold harmless, have the right to do so at its own expense, . COMPANY shall cooperate with EMORY in such effort including being joined as a party to such action if necessary. EMORY shall be entitled to retain all suits damages or costs awarded in such action. Should either EMORY or COMPANY be a party to a suit under the provisions of this Article 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 thereafter elect to coverabandon such suit, the Products or any component thereof. The Vendor agrees that it abandoning party shall pay all sums, including without limitation, reasonable attorneys' fees and give timely notice to the 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 party who may, at its own costdiscretion, participate in the investigation, trial and defense continue prosecution 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentsuit.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: License Agreement
Infringement. (a) 7.1. The Vendor parties shall inform each other promptly, in writing, of any alleged infringement of the Patent Rights by a third party, and of any available evidence thereof. * Confidential Treatment Requested
7.2. During the term of this Agreement, LICENSEE shall have the right, subject only to approval not unreasonably withheld of RESEARCH FOUNDATION, but shall not be obligated, to prosecute at its own expense any such infringements of the Patent Rights and, in furtherance of such right, RESEARCH FOUNDATION hereby agrees that LICENSEE may join RESEARCH FOUNDATION as a party plaintiff in any such suit, without expense to RESEARCH FOUNDATION. The total cost of any such infringement action commenced or defended solely by LICENSEE shall be borne by LICENSEE and any recovery realized from such infringement action, after reimbursing LICENSEE for its costs and expenses in prosecuting the infringement, shall be treated as if it were a royalty received by LICENSEE from a sublicensee for Net Sales of Licensed Product and the provisions of Section 4.1(b) shall defendapply.
7.3. If within [...***...] months after notifying an alleged infringer of any alleged infringement, indemnify LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and hold harmlessshall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE shall notify RESEARCH FOUNDATION at any time 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 a declaratory judgment action alleging invalidity or noninfringement of any of the Patent Rights shall be brought against RESEARCH FOUNDATION, LICENSEE at its option, shall have the right within [...***...] after commencement of such action, to intervene and take over the sole defense of the action at its own expense, all suits and claims against .
7.5. In any infringement suit as either party may institute to enforce 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 Patent Rights pursuant to this Contract (collectively, "Intellectual Property Rights"), covering, or alleged to coverAgreement, the Products or any component thereof. The Vendor agrees that it shall pay all sumsother party hereto shall, including without limitationat the request and expense of the party initiating such suit, 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 investigationand, 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 extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the party entitled like.
7.6. RESEARCH FOUNDATION warrants and represents that it has the lawful right to indemnification becomes aware grant the license provided in this Agreement and that it has not granted rights or licenses in derogation of any fact, condition or event which may give rise to Losses for which indemnification may be sought under this Agreement. RESEARCH FOUNDATION agrees that during the term of this Agreement, provided, however, no delay on the part of the Owner in notifying the Vendor shall relieve the Vendor from or 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 license granted hereunder, written notice thereof RESEARCH FOUNDATION shall be given to the Vendor as promptly as practicable (and in not enter into 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 other agreements that conflict with the written consent rights or obligations provided hereunder, including any rights and obligations that survive termination 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 requiredthis Agreement. 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.* Confidential Treatment Requested
Appears in 1 contract
Infringement. (a) 7.1 The Vendor agrees LICENSOR and the LICENSEE shall notify one another as soon as they become aware of any infringement of the AGREEMENT PATENTS by a THIRD PARTY. They shall supply one another with all items available to them in order to examine the nature and extent of this.
7.2 If one of the Parties believes that it the observed infringement is liable significantly to disrupt the LICENSEE’S use of the AGREEMENT PATENTS, they shall defendapproach the other Party in order to discuss the most appropriate measures in order to bring the infringement to an end.
7.3 If the Parties decide, indemnify by joint agreement, that they shall initiate legal proceedings against the THIRD PARTY they shall determine if these legal proceedings should be initiate jointly. The proceedings shall be dealt with jointly. For any issues pertaining to the protection of the AGREEMENT PATENTS, the LICENSOR shall be nominated as the “leader” and hold harmlessshall act following consultation with the LICENSEE and shall take account of any reasonable comments made by the latter. For any matters pertaining to the protection of the LICENSEE’S commercial interests, in particular the assessment of their damages, the latter shall be nominated as “leader” and shall act following consultation with the LICENSOR and shall take account of any reasonable comments made by the latter. The Parties to the proceedings shall ascertain the fees to be paid between them in advance. The indemnities that may be awarded by the courts to both parties to the AGREEMENT shall be shared between them in the same proportion as their respective external costs incurred in the course of these legal proceedings 11 PATENT LICENSE AGREEMENT n°C-00061901
7.4 If the LICENSEE would like to initiate legal proceedings and the LICENSOR does not wish to, the LICENSEE may, after having given formal notice to the LICENSOR for which no response has been received, pursue action at its own expense, all suits initiative 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 thereofits own name. The Vendor agrees that it fees for such proceedings shall pay all sumsbe payable by the sole LICENSEE. The awards, including without limitationany possible damages of a punitive nature, reasonable attorneys' fees and other costs incurred at Vendor's written request or authorization, which, in defense of, shall be irrevocably acquired 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; providedLICENSEE. It is, however, agreed that after deducting external costs incurred by the Owner mayLICENSEE for successfully win the legal proceedings, at its own costthe indemnities, participate to the exclusion of indemnities of a punitive nature, allocated to LICENSEE shall be included in the investigation, trial NET INCOME and defense shall be subject to payment 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") royalty 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, LICENSOR 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and applicable rate in accordance with this Agreement AGREEMENT. It is furthermore agreed that the LICENSOR reserves the right to intervene at their cost and for any final judgment (subject risk.
7.5 If the LICENSOR wishes to any right of appeal), initiate legal proceedings and the Vendor agrees LICENSEE does not wish to, the LICENSOR may then pursue matters at its own initiative and in its own name. The fees for such proceedings shall be payable by the sole LICENSOR. The awards, including any possible damages of a punitive nature, shall be irrevocably and wholly acquired by the LICENSOR. This provision does not however prevent the LICENSEE from taking part in proceedings, at its expense, in order to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentobtain compensation rightly due for damages.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided 7.6 If an action by the Vendor are used LICENSEE in combination accordance with other products furnished by third parties Article 7.4 above must be declared to be inadmissible because of the plaintiffs inability to act or if it can reasonably be anticipated that the LICENSEE plans to take in accordance with Article 7.4 above, is declared inadmissible for this reason, the LICENSOR shall then provide the LICENSEE upon request and where any such combination was not installedin a timely manner, recommended or approved all powers required for them to act in the name and on behalf of the LICENSOR. The costs pertaining to this action shall be payable by the VendorLICENSEE. The indemnities that may be allocated at the end of the proceedings shall be split as set out in Article 7.4 above.
7.7 The Parties jointly undertake to supply all documents, powers of attorney and signatures that may be required in order to carry out their actions successfully in accordance with the terms of this Article. 12 PATENT LICENSE AGREEMENT n°C-00061901
Appears in 1 contract
Infringement. (a) The Vendor agrees 12.1 In the event 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 infringes or attempts to infringe any rights acquired by the United States or in any other territory where Vendor has approved Licensee hereunder during the deployment or use of Products under this Contract (collectively, "Intellectual Property Rights"), covering, or alleged to cover, Term the Products or any component thereof. The Vendor agrees that it Licensee 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 inform FAPL of such infringement or violation, provided attempted infringement as soon as the relevant facts are known to it. If FAPL decides (in its absolute discretion) that proceedings shall be commenced the Licensee shall at the request of FAPL and at the Licensee's own expense give full co-operation and provide all information and assistance to FAPL as FAPL may reasonably consider necessary. If FAPL decides not to commence proceedings the Licensee shall not have any right to do so in its own 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 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 Owner use of the Property infringes any rights of another party the Licensee shall cooperate immediately give to FAPL full particulars in all reasonable respects writing thereof and shall make no comment or admission to any third party in respect thereof. FAPL will in consultation with the Vendor 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 its attorneys provide all information and assistance to 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 investigation, trial Licensed Articles infringes any rights of another party FAPL shall immediately give to the Licensee full particulars in writing thereof and defense 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 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 any time thereafter until the expiry of all relevant copyrights any party which becomes aware of the same shall inform the other of such lawsuit infringement or action 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 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 appeal arising 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; provided, however,
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 any other Person alleges that the Owner may, at its own cost, participate use of the Materials which are the subject of joint copyright hereunder infringes any rights of another party that party shall immediately give to the other full particulars in the investigation, trial writing thereof and defense of such lawsuit shall make no comment or action and admission to any appeal arising therefromthird party in respect thereof. The parties shall cooperate 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 notifications dispute between the parties as to insurers. If a claim for Losses (a "Claim") is any action to be made by a taken neither party entitled shall make any admission or compromise any proceedings arising therefrom or fail to indemnification hereunder against the Vendor, the party claiming take any step to defend any such indemnification shall give allegation and/or proceedings arising therefrom without first giving written notice (a "Claim Notice") to the Vendor other party of their intention to do so such notice to be given in sufficient time to give the notified party the opportunity to take such action as soon as practicable after it may reasonably consider appropriate to restrain such admission compromise or failure to act. For the party entitled to indemnification becomes aware avoidance of any fact, condition or event which may give rise to Losses for which indemnification may doubt the contents of this clause shall 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 without prejudice 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 Licensee's 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected FAPL pursuant to clause 9.1 and in accordance with this Agreement and for any final judgment (subject indemnity given by FAPL pursuant to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.clause 10.1.12
Appears in 1 contract
Sources: Licensing Agreement (Topps Co Inc)
Infringement. (a) The Vendor agrees that it shall defend19.1. Subject to the limitations set forth in this Section, indemnify National will indemnify, defend and hold harmlessDSP harmless against any claim, at its own expensesuit or proceeding brought against DSP, and against all suits damages, losses, liabilities, and claims against the Owner for infringement or violation of any patentcosts (including, 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 fees) arising out of or authorization, which, in defense of, by final judgment or decree, or in settlement resulting from a claim that the exercise of any right or license granted to DSP under this Agreement (including, without limitation, the licensing of the Licensed Technology by DSP under Section 3 and the use of the Licensed Technology by DSP under Section 5) constitutes an infringement of any intellectual property right enforceable in [*]. IN NO EVENT SHALL NATIONAL'S LIABILITY UNDER THIS SECTION 19.1 WITH RESPECT TO THIRD PARTY CLAIMS OF PATENT INFRINGEMENT EXCEED THE TOTAL AMOUNT OF FEES PAID BY DSP TO NATIONAL UNDER THIS AGREEMENT.
19.2. Subject to the limitations set forth in this Section, National will defend any claim, suit or proceeding brought against any DSP Sublicensee and pay damages and costs awarded against such DSP Sublicensee, if based on a 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 exercise 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 rights granted 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected DSP Sublicensee by DSP pursuant to this Agreement and in accordance with the terms of this Agreement constitutes an infringement of any intellectual property right enforceable in [*]. IN NO EVENT SHALL NATIONAL'S LIABILITY UNDER THIS SECTION 19.2 WITH RESPECT TO THIRD PARTY CLAIMS OF PATENT INFRINGEMENT EXCEED THE TOTAL AMOUNT OF FEES PAID BY A DSP SUBLICENSEE TO DSP AND REMITTED TO NATIONAL PURSUANT TO THIS AGREEMENT. The Parties agree to each DSP Sublicensee shall be an intended third party beneficiary of National's obligations herein. In addition, upon DSP's written request, National agrees to provide confirmation to potential DSP Sublicensees of National's obligations to DSP Sublicensees under this section 19.2.
19.3. National's obligations under this Section 19.0 are conditioned upon receiving prompt written notice from DSP and/or the DSP Sublicensee, as applicable, and being given full and complete authority, information and assistance (at National's expense) for defense of same. National will pay damages and costs therein awarded against DSP or the DSP Sublicensee, as applicable, but will not be responsible for any final judgment (subject compromise made without its written consent. In providing such defense, or in the event that the use or sale of any Compliant Product incorporating, embodying or based upon the Licensed Technology is held to any right of appeal), constitute infringement and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason use or sale of such settlement or judgment.Compliant Product is enjoined, National shall, at its sole discretion, [*] ------------------- [*] Omitted pursuant to a confidential treatment request. The material has been filed separately with the Securities and Exchange Commission. [*]
(b) The Vendor19.4. National's obligation under this subsection shall defense and indemnity obligations herein do not extend to any claim, suit or proceeding based upon an infringement or alleged infringements infringement of an intellectual property right by: (i) a manufacturing process of DSP or violations that arise because a DSP Sublicensee; (ii) any modification of the Products provided Licensed Technology not made by National; or (iii) the Vendor are used use of the Licensed Technology or any derivatives arising out of the use of the Licensed Technology, in combination with other products furnished by third parties and where any equipment, technology or software not purchased or licensed from National, provided that such combination was claims would not installedhave occurred but for such process, recommended combination, modification or approved by the Vendorenhancement.
Appears in 1 contract
Infringement. If any Services, Work Product and/or Vendor Proprietary Information becomes, or in Vendor’s reasonable opinion is likely to become, the subject of any claim or action for infringement, then Vendor shall have the right at its discretion and expense either to: (a) The procure for Customer the right to continue to use and exploit such Services, Work Product and/or 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 Proprietary Information in the United States manner as contemplated in this Agreement; or in any other territory where (b) modify such Services, Work Product and/or Vendor has approved the deployment or use of Products under this Contract (collectively, "Intellectual Property Rights"), covering, or alleged Proprietary Information 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 violationrender them non-infringing, provided that the Owner shall cooperate in all reasonable respects with the Vendor and its attorneys in the investigationsuch modification does not adversely affect Customer’s use or exploitation thereof, 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 insurersCustomer rights as contemplated hereunder. If a claim for Losses (a "Claim") is neither of these remedies are reasonably available to be made by a party entitled to indemnification hereunder against the Vendor, Vendor may require Customer to cease using the party claiming such indemnification shall give written notice (infringing Services, Work Product and/or Vendor PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED SEPARATELY WITH THE SECRETARY OF THE COMMISSION PURSUANT TO AN APPLICATION FOR CONFIDENTIAL TREATMENT UNDER RULE 24B-2 OF THE SECURITIES EXCHANGE ACT; [***] DENOTES OMISSIONS Proprietary Information and Vendor will issue Customer a "Claim Notice") to pro-rated refund based on a 5 year amortization schedule for the infringing Services, Work Product and/or 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 Proprietary Information. Vendor shall relieve the Vendor from have no liability for 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, infringement claim based upon: (i) to defend such lawsuit any alteration or actionmodification of any Services, Work Product and/or Vendor Proprietary Information not provided by Vendor, if the infringement would not have occurred but for the unauthorized alteration or modification by Customer provided any authorization must be expressly provided in writing by Vendor; (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 unauthorized use by Customer of the Owner (which may not be unreasonably withheld)Services, 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 Work Product and/or 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used Proprietary Information in combination with other products furnished programs or data not intended by third parties and where Vendor to be used with the Services, Work Product and/or Vendor Proprietary Information(s), as the case may be, if the infringement would not have occurred but for such unauthorized use in combination with such programs or data; provided any such combination was authorization must be expressly provided in writing by Vendor; (iii) Vendor’s compliance with Customer’s designs, specifications or instructions; or (iv) any Customer provided intellectual property if the infringement would not installed, recommended or approved by have occurred but for the VendorCustomer intellectual property.
Appears in 1 contract
Sources: Master Professional Services Agreement (Virtusa Corp)
Infringement. (a) The Vendor 7.1. Each party shall inform the other 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, TEPHA shall have the right, but shall not be obligated, to prosecute at its own expense all infringements of the PATENT * CONFIDENTIAL TREATMENT REQUESTED RIGHTS in the FIELD OF USE and, in furtherance of such right, METABOLIX hereby agrees that it TEPHA may join METABOLIX as a party plaintiff in any such suit, without expense to METABOLIX. The total cost of any such infringement action commenced solely by TEPHA shall defendbe borne by TEPHA. In the event that TEPHA shall have exercised its right to bring an action, indemnify TEPHA shall be responsible for defending against any counterclaims alleging invalidity or unenforceability of a PATENT RIGHT and hold harmlessfor prosecuting the action through to settlement or other final disposition. In the event that TEPHA shall undertake the enforcement of the PATENT RIGHTS in the FIELD OF USE by litigation, TEPHA may withhold up to * of the Running Royalties otherwise thereafter due to METABOLIX under Section 4.1.4 and apply the same toward reimbursement of up to * of TEPHA'S expenses, including reasonable attorneys' fees, in connection therewith.
7.3. If within six (6) months after having been notified of any alleged infringement, TEPHA 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 TEPHA shall notify METABOLIX at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events, only, METABOLIX shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the PATENTS RIGHTS in the FIELD of USE. In furtherance of such right, TEPHA hereby agrees that METABOLIX may include TEPHA as a party plaintiff in any such suit, without expense to TEPHA. The total cost of any such infringement action commenced or defended solely by METABOLIX shall be borne by METABOLIX, and METABOLIX shall be responsible for defending against any counterclaims alleging invalidity or unenforceability of a PATENT RIGHT.
7.4. Any recovery of damages by the prosecuting party for any such suit shall be applied first in satisfaction of any unreimbursed expenses and legal fees of such party relating to the suit, and next toward reimbursement of METABOLIX for any royalties past due or withheld and applied pursuant to Paragraph 7.2, if applicable. * CONFIDENTIAL TREATMENT REQUESTED The balance remaining from any such recovery shall be divided with * to the non-prosecuting party and any remaining balance to the prosecuting party.
7.5. In the event of the institution of any suit by a third party against METABOLIX, TEPHA or its sublicensees for patent infringment involving the PATENT RIGHTS in the FIELD OF USE, the party sued shall promptly notify the other party in writing. TEPHA shall have the right, but not the obligation, to defend such suit at its own expense. If TEPHA shall elect not to defend, TEPHA shall promptly notify METABOLIX. METABOLIX shall have the right, but not the obligation, to defend such suit at its expense.
7.6. If TEPHA shall exercise its rights pursuant to Section 7.5 to defend the PATENT RIGHTS, then * of TEPHA'S Running Royalty obligation in Section 4.1.4 during the pendency of defense in the proceeding shall be held in an interest-bearing escrow account by TEPHA until a final decision shall be rendered by a court or administrative tribunal of competent jurisdiction from which no appeal can be or is taken provided that:
7.6.1. If the enforceability of all suits and material claims against in such PATENT RIGHT claiming the Owner for infringement LICENSED PRODUCT or violation of any patent, trademark, copyright, trade secret PROCESS is upheld by a court or other intellectual property rights legal or administrative tribunal from which no appeal is or can be taken, then the amount of Running Royalties withheld during the period of escrow, plus all accrued interest, shall be promptly paid to METABOLIX; or
7.6.2. If one or more claims in such PATENT RIGHT covering the LICENSED PRODUCT or PROCESS shall be held to be invalid or otherwise unenforceable by a court or other legal or administrative tribunal in any third party enforceable country from which no appeal is or can be taken or the scope thereof is modified and, as a result such PATENT RIGHT no longer offers substantial protection to a LICENSED PRODUCT or PROCESS in such country, then the amount of Running Royalties withheld during the period of escrow shall not be owed to METABOLIX; TEPHA shall be entitled to all payments and accrued interest in the United States escrow account; and the Running * CONFIDENTIAL TREATMENT REQUESTED Royalties otherwise payable shall be abated in their entirety with respect to NET SALES of LICENSED PRODUCTS covered only by such PATENT RIGHT in the country in which such claims were so held invalid or in unenforceable or so modified.
7.7. In any other territory where Vendor has approved suit as either party may institute to enforce or defend the deployment or use of Products under PATENT RIGHTS pursuant to this Contract (collectively, "Intellectual Property Rights"), covering, or alleged to coverAgreement, the Products or any component thereof. The Vendor agrees that it shall pay all sumsother party hereto shall, including without limitationat the request and expense of the party initiating such suit, 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 and, to the Vendor extent possible, have its employees testify when requested and its attorneys make available relevant records, papers, information, samples, specimens and the like. The parties shall keep one another informed of the status of and of their respective activities regarding any litigation or settlement thereof concerning the PATENT RIGHTS in the investigation, trial and defense FIELD of such lawsuit USE or action and any appeal arising therefromLICENSED PRODUCTS or PROCESSES ; provided, however, that the Owner may, at its own cost, participate in the investigation, trial and defense no settlement or consent judgement or other voluntary final disposition of such lawsuit any suit defended 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 brought by a party entitled pursuant to indemnification hereunder against this Article 7 may be entered into without the Vendorconsent of the other party, the party claiming such indemnification shall give written notice (a "Claim Notice") consent not to be unreasonably withheld or delayed. As to the Vendor as soon as practicable after MIT PATENT RIGHTS, no settlement, consent judgement or other voluntary final disposition of the party entitled to indemnification becomes aware of any fact, condition or event which may give rise to Losses for which indemnification suit may be sought under entered into without the consent of MIT which consent shall not unreasonably be withheld. TEPHA shall indemnify MIT against any order for costs that may be made against MIT in proceedings commenced and defended solely by TEPHA.
7.8. TEPHA, during the period of 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 sole 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 defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement the terms and conditions herein to sublicense any alleged infringer for any final judgment (subject to any right future use of appeal), and the Vendor agrees to indemnify and hold harmless PATENT RIGHTS in the Owner from and against any Losses by reason of such settlement or judgmentFIELD OF USE.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: License Agreement (Metabolix, Inc.)
Infringement. (a) The Vendor agrees that it A. Company and University agree to notify each other promptly of each infringement or possible infringement of the licensed Patent Rights or subsequently issued patent of which either party becomes aware. With respect to such Patent Rights or subsequently issued patent under which Company is exclusively licensed pursuant to this Agreement, Company or its sublicensee shall defend, indemnify have the right to prosecute in its own name and hold harmless, at its own expense, all suits any infringement of such Patent Rights or subsequently issued patent. Before Company or its sublicensee commences an action with respect to any such infringement, Company shall contact University to obtain University’s view concerning any potential effects such an action may bring and claims against shall report such views to the Owner appropriate sublicensees. University shall have a continuing right, but not an obligation, to intervene in any suit for patent infringement involving the Patent Rights. Neither Company nor its sublicensee shall take any action to compel University to initiate a suit or violation to join any suit for patent infringement except if part of any patent, trademark, copyright, trade secret or other intellectual property rights an action alleging breach of any third party enforceable University’s obligation contained in the United States [ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. following sentence. Company or its sublicensee may request that University join in such suit if necessary to avoid dismissal of the suit, and University shall join in such suit if necessary to avoid dismissal. Neither Company (nor its sublicensee) nor any other territory where Vendor has approved attorney engaged by Company (or its sublicensee) shall prosecute the deployment or use infringement in the name of Products under this Contract (collectivelythe University, "Intellectual Property Rights"), coveringthe State of Oregon, or alleged any agency of the State of Oregon, nor purport to coveract as legal representative of the University, the Products State of Oregon or any component thereofof its agencies, without the prior written consent of the Oregon Attorney General, which shall not be unreasonably withheld . 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 University may, at its election, assume its own cost, participate defense and settlement in the investigationevent the University determines that Company or its sublicensee is prohibited from representing the University or is not adequately protecting its interests.
B. If Company or its sublicensee elects to commence an action as described above and University is a legal party to such action, trial University shall have the right to assign to Company all of University’s rights, title and defense interest in licensed Patent Rights (subject to all University’s obligations to the government and others having rights in such licensed Patent Rights). In that event, such assignment shall be irrevocable and such action by Company on that patent shall thereafter be brought or continued in the name of Company. Notwithstanding any such assignment to Company by University, University shall cooperate fully with Company in connection with any such action. Regardless of any licensed Patent Rights assigned to Company by this clause, Company shall be required to continue to meet its obligations to University under this Agreement as if licensed Patent Rights were still licensed in the name of University.
C. If Company or its sublicensee elects to commence an action described above and University is a legal party to such action, University may, but shall not be obligated to, join the action as a co-plaintiff. Upon so doing, University shall jointly control the action with Company or its sublicensee.
D. Company shall reimburse University for any legal expenses and costs, including attorney fees (“litigation costs”), it reasonably incurs as part of an action brought by Company or its sublicensee, irrespective of whether University shall become a party to such action. Company shall reimburse University for litigation costs within thirty (30) days of receipt of University’s invoices.
E. If Company or its sublicensee elects to commence an action as described above, Company may offset up to [ * ] of the litigation costs of such lawsuit or action and against up to [ * ] of each payment of royalty fees described in Sections V.A due to University. In the event that such[ * ] of such litigation costs exceed the amount of royalties withheld by Company for any appeal arising therefrom. The parties shall cooperate with each other calendar year, Company may, to that extent, reduce the royalties due to University from Company in succeeding calendar years, but never by more than [ * ] of the royalty due in any notifications to insurers. If a claim for Losses (a "Claim") is to be made by a party entitled to indemnification hereunder against one calendar year.
F. No settlement, consent judgment or voluntary final disposition of the Vendorsuit, the party claiming such indemnification shall give written notice (a "Claim Notice") which imposes any obligations or restrictions on University or grants any rights 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 Patent Rights may be sought under this Agreement, provided, however, no delay on entered into without the part consent 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 ClaimUniversity, which compromise or settlement consent shall be made only with the written consent of the Owner (which may not be unreasonably withheld). [ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, unless MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. G. Recoveries or reimbursements from such compromise or settlement includes an unconditional release action shall first be applied to reimburse Company and University for their respective litigation costs. For purposes of this Section X.G, Company’s litigation costs shall consist of litigation costs incurred by Company, plus litigation costs incurred by University and reimbursed by Company pursuant to Section X.D, less the amount of litigation costs recovered by Company by withholding royalties pursuant to Section X.E. For purposes of this Section X.G, University’s litigation costs shall consist of any claims against litigation costs incurred by University but not reimbursed by Company pursuant to Section X.D. To the Owner in which event extent recoveries or reimbursements from such written consent of action are less than the Owner parties’ aggregate litigation costs, such recoveries and reimbursements shall not be required. If apportioned pro rata based on 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 percentage that each party’s litigation costs bear to the Vendor) have the right total litigation costs of both parties, and then to undertake, at the Vendor's cost and expense, the defense, compromise reimburse University for royalties withheld pursuant to Section X.E. Any remaining recoveries 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 defense, compromise or settlement. The Vendor reimbursements shall be liable for any settlement of any action effected pursuant shared [ * ] to Company and in accordance with this Agreement and for any final judgment (subject [ * ] to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentUniversity.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: Exclusive License Agreement (Kosan Biosciences Inc)
Infringement. 11.2.1 Par and Advancis shall inform each other promptly in writing of any alleged or suspected infringement by a Third Party of any of Advancis Patent Rights, Advancis Know-How or Program Developments, and of any available evidence thereof.
11.2.2 Subject to Sections 11.2.3 and 11.2.4, Advancis may, at its sole option and expense, prosecute the infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments. 29 --------------------------------------------------------------------------------
11.2.3 In the event that a Third Party infringes Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis by manufacture, sale or use of a Product in the Territory (a) a "PRODUCT INFRINGEMENT"), then the Parties shall discuss whether or not to institute an infringement action with respect to such Product Infringement. If the Parties agree to institute such a suit, then Advancis shall institute and control such suit including the settlement or compromise thereof. Par shall, at the request of Advancis, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Advancis may join Par as a party, and Par shall execute all papers and perform such acts as may be reasonably required. The Vendor agrees cost and expense of such suit shall be shared by the Parties equally. Any royalties, payments, damages, expense, fees or other awards (collectively, "DAMAGES"), received by Advancis and/or Par as a result of such suit, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit and then any remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages.
11.2.4 In the event that it only Advancis does not agree to institute a suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, Par may, at its option and expense prosecute such infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, provided that Par can demonstrate through any industry recognized survey that such sales of Product by the alleged or suspected infringer in the Territory exceeds [***] of the sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall defendnot prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, indemnify and hold harmlessif agreement cannot be reached, such [***] will be determined in accordance with the dispute resolution process set forth in Section 17.2.2 herein. In any such infringement suit Par may institute to enforce Advancis Patent Rights, Advancis Know-How or Program Developments owned by Advancis, Advancis shall, at the request and expense of Par, provide reasonable cooperation and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, Samples, specimens and the like. Par may join Advancis as a party, and Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Par. Par shall bear all the cost and expense of such suit and Par shall retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise Par shall not have the right to settle or compromise such action or take any steps that adversely affect the scope, validity, enforceability or ownership of Advancis Patent Rights or Advancis Know-How without the written consent of Advancis.
11.2.5 In the event that only Par does not agree to institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of being notified of such alleged or suspected infringement, then Advancis shall have the right to institute such an infringement suit at its cost and expense and to retain all payment, costs and damages received as a result thereof, whether by judgment, settlement compromise or otherwise.
11.2.6 In the event that a declaratory judgment action alleging invalidity or non-infringement of any Advancis Patent Rights, Advancis Know-How or Program Developments shall be brought against Advancis and/or Par, Advancis, [***] 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 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. 30 -------------------------------------------------------------------------------- at its option, shall have the right, within [***] after commencement of such action, to take over the sole defense of the action at its own expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, all suits Par shall be free to proceed and claims against solely control such defense. To the Owner extent that any Damages become payable to any Third Party as a result of such action, whether through judgment or settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement or violation suit not otherwise reimbursed and then any remainder shall be shared by the Parties equally, with such share of any patentthe Damages to be paid to the other party, trademarkas applicable, copyright, trade secret or other intellectual property rights as soon as practicable upon receipt of any the Damages.
11.2.7 In the event that a third party enforceable in institutes any suit against Par and/or Advancis for patent infringement involving 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 coverProducts, the Products or any component thereofParty sued shall promptly notify the other Party in writing. The Vendor agrees that it Advancis 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 assume 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; suit, provided, however, that if Par is also a defendant in such action and Par shall have reasonably concluded that there may be legal defenses available to it that are different from or additional to those available to Advancis, Par shall have the Owner mayright to select separate counsel to participate in such legal defenses on Par's behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at its own costthe other's request, participate in provide to it reasonable assistance and cooperation with respect to any such suit. To the investigation, trial and defense extent that any Damages become payable to any third party as a result of such lawsuit action, whether through judgment or action settlement, the Parties shall bear such Damages equally, and shall contribute such share as promptly as practicable. Any Damages received by Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be used to reimburse each Party for its expenses associated with such infringement suit not otherwise reimbursed and then any appeal arising therefrom. The parties remainder shall be shared by the Parties equally, with such share of the Damages to be paid to the other party, as applicable, as soon as practicable upon receipt of the Damages.
11.2.8 If either Party becomes aware of a patent or patent application that, when issued, might provide a basis for a Third Party argument that its valid rights are being infringed by the manufacture, use or sale of the Products hereunder, then such Party shall promptly inform the other Party of such patent or patent application, and the Parties shall cooperate with each other in any notifications to insurers. If so that each Party can determine whether valid rights of a claim for Losses (a "Claim") is third party are likely to be made infringed by the manufacture, use or sale of the Products hereunder.
11.2.9 If either Party believes that a license from a third party entitled is necessary to indemnification hereunder against avoid infringement of patents of the Vendorthird party, the party claiming Executive Committee shall: 1) determine whether or not to seek such indemnification shall give written notice (a "Claim Notice"license, 2) appoint a negotiator to negotiate the Vendor terms of such a license, 3) determine whether or not to enter into such a license as soon as practicable after negotiated by the party entitled to indemnification becomes aware negotiator, and 4) determine how the expenses 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 such a license shall be given to borne by 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 requiredParties. If the Vendor fails Executive Committee cannot agree with regard to assume any responsibility set forth in the defense of preceding sentence, 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor issue shall be liable for any settlement of any action effected pursuant to and determined by arbitration in accordance with this Agreement and for any final judgment (subject to any right of appeal)Section 17.2.2. [***] 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 UNDER THE SECURITIES EXCHANGE ACT OF 1934, and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.AS AMENDED. 31 --------------------------------------------------------------------------------
Appears in 1 contract
Sources: Development and Commercialization Agreement (Par Pharmaceutical Companies, Inc.)
Infringement. (a) 7.1 If any of the Patents shall be declared to be infringing on another patent, declared invalid or revoked by a patent office, court or tribunal of competent jurisdiction, all Royalties shall cease to be payable in respect of the Patent or Patents held infringing, invalid or revoked as from the date of such declaration or revocation but, if the decision of the court or tribunal making such declaration or revocation shall be reversed on appeal, the Royalties shall become payable from the date of such reversal together with all Royalties which would have been payable but for the adverse decision.
7.2 The Vendor agrees that parties shall promptly inform each other of any infringement or suspected infringement of any of the Patents of which they become aware.
7.3 Transense may, but shall not be obliged to institute suit against a third party for infringement of the Patents or unlawful use of any portion of the Confidential Information within one month from a request to do so by SmarTire and, if it does commence such suit, it shall defendpursue the same with reasonable dispatch. If Transense does not institute such suit within such period, indemnify SmarTire may, but shall not be obliged to institute such suit in the name of Transense.
7.4 If Transense institutes and hold prosecutes to judgement any suit provided for in paragraph 7.3 hereof (and whether or not requested to do so by SmarTire), all recovery of damages in such lawsuits shall be payable to Transense unless otherwise agreed to in writing between the parties hereto.
7.5 If SmarTire institutes a suit for infringement of the Patents or unlawful use of the Confidential Information, all recovery of damages in such lawsuits shall be payable to SmarTire unless otherwise agreed to in writing between the parties hereto.
7.6 If both Transense and SmarTire jointly institute and prosecute to judgement any proceedings for unlawful use of the trade secrets herein above referred to, the parties hereto shall bear the cost of such lawsuit equally and all recovery of damages shall be payable equally to the parties hereto unless otherwise agreed to in writing.
7.7 Transense shall fully and effectively indemnify, defend and save harmless, at its own expenseSmarTire from all cost, all suits damage, loss or expense suffered or incurred by SmarTire (including reasonable legal fees and claims disbursements invoiced to SmarTire), every action, suit or proceeding or claim instituted against the Owner SmarTire for infringement or violation of any the patent, trademark, copyright, trade secret secrets or other intellectual property rights of any third party enforceable in party, where such action, suit or proceeding or claim relates to SmarTire's use, manufacture and/or sale of 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, Technology as incorporated into the Products or any component thereof. The Vendor agrees that it as contemplated herein.
7.8 Transense 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 have control 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 mayas specified in Clause 7.7. SmarTire shall assist Transense, at its own Transense's sole 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) suit or action by providing information and witnesses as needed. SmarTire shall have the right to undertakebe represented by its own counsel at its expense.
7.9 Transense may not settle any lawsuit without the consent of SmarTire, at the Vendor's cost and expenseif by such settlement SmarTire becomes obliged to make any monetary payment, the defenseto transfer any property or interest in property, 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 defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (become subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentan injunction.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Infringement. (a) The Vendor agrees Section 11.01. SATT Aquitaine and SOPHiA GENETICS shall keep each other fully and rapidly informed of any infringement of which they may be aware by a third party in relation to the Software. SOPHiA GENETICS must promptly inform SATT Aquitaine of any complaints and infringement actions that may be initiated against SOPHiA GENETICS on the basis of the Software.
Section 11.02. In the event that infringement proceedings are brought against SOPHiA GENETICS and/or its Commercial Intermediaries and/or Affiliates during the operation of the Software, SATT Aquitaine shall provide SOPHiA GENETICS with the information at its disposal with a view to the defence of SOPHiA GENETICS or its Commercial Intermediaries and/or Affiliates. In the event that SOPHiA GENETICS were to be convicted as a result of such infringement proceedings, SOPHiA GENETICS shall exonerate SATT Aquitaine and the Co-Owners. SOPHiA GENETICS shall refrain from impleading SATT Aquitaine and/or the Co-Owners and may not claim therefrom any compensation, nor reimbursement of any amounts already paid to SATT Aquitaine nor any reduction of amounts outstanding at the time of the ruling of the final court decision. SOPHiA GENETICS shall ensure that its Commercial Intermediaries and Affiliates shall be bound by the same terms as those defined herein.
Section 11.03. In the event of an infringement of all or part of the Software by a third party, SATT Aquitaine may initiate legal proceedings against the infringing third party at its own expense, it being understood that they shall defend, indemnify have full and hold harmlessirrevocable entitlement to any compensation and damages awarded by the court. This stipulation shall not prevent SOPHiA GENETICS from intervening in the proceeding, at its own expense, all suits to obtain compensation for its own specific damages. SOPHiA GENETICS shall have full and claims against the Owner for infringement or violation of irrevocable entitlement to 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 compensation 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 damages awarded thereto as a result of such infringement proceedings.
Section 11.04. Notwithstanding the termination or violation, provided that the Owner shall cooperate in all reasonable respects with the Vendor and its attorneys in the investigation, trial and defense expiry 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 provisions of the Owner this Article 11 shall remain 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentforce.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: Software Sub Licence Agreement (SOPHiA GENETICS SA)
Infringement. (a) 13.1 The Vendor agrees that it shall defend, indemnify and hold harmless, at its own expense, all suits and claims against the Owner for Parties agree to give each other prompt written notice of any infringement or violation other similar action in or affecting the Territory by a Third Party 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 AMIH Marks known to them.
13.2 In 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 event of such infringement or violationother similar action, provided that ADSC has the Owner shall cooperate in all reasonable respects with obligation to protect any of the Vendor and its attorneys Non-United States Marks which ADSC has been using in the investigationpreceding 12 month period and the United States Marks in the Territory and may decide whether or not any action is necessary for such protection and what such action might be, taking into account the interests of both Parties. ADSC has the right to act in its own name or if necessary in the name of AMIH. For the term of this Agreement AMIH hereby gives ADSC a power of attorney in the form attached hereto as Schedule 3 to act on its behalf if any action in or out of court in connection with such actions is necessary. ADSC will select counsel, to which AMIH has no reasonable objection and AMIH will provide reasonable assistance, including by providing information, documents and things in response to discovery requests, by providing at mutually convenient times witnesses for discovery, depositions and trial testimony, and defense by permitting ADSC to cause AMIH to be named as a party plaintiff or co- plaintiff in U.S. litigation. All expenses, including any expenses incurred by AMIH to provide such assistance, shall be borne by ADSC and ADSC shall be entitled to any amounts awarded to ADSC or AMIH. ADSC shall not enter into any settlement 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 actions without the written consent of the Owner (AMIH, which may consent shall not be unreasonably withheld).
13.3 If any action or proceeding is brought or asserted by ADSC, unless under the authority granted to it under Article 13.2, ADSC will promptly notify AMIH in writing. AMIH may assume and direct the action or proceeding only provided that ADSC initiates no action or takes no action in such compromise action or proceeding. Upon assumption of the action or proceeding by AMIH, all expenses shall be borne by AMIH and AMIH shall be entitled to any amounts awarded to ADSC or AMIH. AMIH shall not enter into any settlement includes an unconditional release of any claims against such actions without the Owner in which event such written consent of the Owner ADSC, which consent 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentunreasonably withheld.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Infringement. (a) The Vendor agrees that it If any of the IXSYS PATENTS under which MEDIMMUNE is licensed hereunder is infringed by the sale by a THIRD PARTY of a PRODUCT, subject to the provisions of the IXSYS LICENSE AGREEMENTS, MEDIMMUNE shall defend, indemnify have the right and hold harmlessoption but not the obligation to bring an action for such infringement, at its own sole 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 such THIRD PARTY in the United States or in any other territory where Vendor has approved the deployment or use name 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 IXSYS and/or in the investigation, trial and defense name of such lawsuit or action and any appeal arising therefrom; provided, however, that the Owner may, at its own cost, participate MEDIMMUNE and/or in the investigationname of a licensor of IXSYS, trial as the case may be, and defense of such lawsuit to join IXSYS 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 its licensor as 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, plaintiff 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress MEDIMMUNE shall promptly notify IXSYS of any such defense, compromise or settlement. The Vendor infringement and shall be liable for any settlement keep IXSYS informed as to the prosecution of any action effected pursuant to and in accordance with this Agreement and for any such infringement. No settlement, consent judgment or other voluntary final judgment (subject to any right disposition of appeal)the suit which adversely affects IXSYS PATENTS may be entered into without the consent of IXSYS, and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentwhich consent shall not unreasonably be withheld.
(b) In the event that MEDIMMUNE shall undertake the enforcement under Section 7.1(a) of the IXSYS PATENTS by litigation, subject to the provisions of the IXSYS LICENSE AGREEMENTS, any recovery *** CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION. of damages by MEDIMMUNE for any such suit shall be applied first pro rata in satisfaction of any unreimbursed out of pocket expenses and legal fees of MEDIMMUNE regarding such suit. The Vendor's obligation balance remaining from any such recovery shall be divided between MEDIMMUNE and IXSYS, as follows (i) for that portion, if any, based on lost profits, IXSYS shall recover the royalty IXSYS would have received under this subsection Agreement if such sales had been made by MEDIMMUNE; and (ii) for any other recovery, IXSYS shall receive *** of the remaining amount.
7.2 In the event that MEDIMMUNE elects not extend to alleged infringements or violations pursue an action for infringement, upon written notice to IXSYS by MEDIMMUNE that arise because an unlicensed THIRD PARTY is an infringer of a VALID PATENT CLAIM of IXSYS PATENTS licensed to MEDIMMUNE, IXSYS shall have the Products provided right and option, but not the obligation at its cost and expense to initiate infringement litigation and to retain any recovered damages.
7.3 In any infringement suit either party may institute to enforce the IXSYS PATENTS pursuant to this Agreement, the other party hereto shall, at the request of the party initiating such suit, reasonably cooperate and, to the extent reasonably possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like. All reasonable out-of-pocket costs incurred in connection with rendering cooperation requested hereunder shall be paid by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendorparty requesting cooperation.
Appears in 1 contract
Sources: License Agreement (Applied Molecular Evolution Inc)
Infringement. 8.1 LICENSEE or its sublicensee(s) (subject to any applicable sublicensing agreement) has the right to prosecute in their own name and at their own expense any infringement of the PATENT RIGHTS, so long as the license is exclusive when the legal action is commenced. OSU agrees to notify LICENSEE promptly of each infringement of the PATENT RIGHTS of which OSU becomes aware. Before LICENSEE or its sublicensees commences an action for infringement, LICENSEE or sublicensee shall notify OSU and carefully consider the views of OSU and the public interest.
8.2 Where joinder is a matter of discretion, OSU agrees to join, subject to the approval of the Ohio Attorney General, as a party plaintiff in any lawsuit initiated by LICENSEE, if requested by LICENSEE. If required by law to obtain standing, OSU shall join or otherwise permit any action or proceeding to be brought on OSU’s behalf and in its name and cooperate with LICENSEE in all aspects of any such action or proceeding brought under this Article, with all costs, attorney fees and expenses reasonably and actually incurred to be paid by LICENSEE.
8.3 If LICENSEE undertakes to enforce and/or defend the PATENT RIGHTS by litigation, LICENSEE may withhold up to fifty percent (50%) of the payments otherwise thereafter due during the course of such litigation to OSU under Article 3. LICENSEE may apply the amounts withheld to reimburse up to half of LICENSEE’s litigation expenses, including reasonable attorneys’ fees. Any recovery under this Section of damages for infringement by a third party shall be distributed as follows: (a) The Vendor agrees each of OSU and LICENSEE shall be reimbursed for any otherwise unreimbursed legal fees and other out-of pocket expenses incurred in the action; (b) OSU shall be reimbursed for any payments under Article 3 that it are past due or were withheld pursuant to this Article; and (c) the remaining balance being divided between OSU and LICENSEE by, in the case where the recovery is based on LICENSEE’s lost profits, determining the amount of NET SALES that were relied upon for purposes of calculating such lost profits and calculating the amounts that would have otherwise been paid to OSU under this Agreement had such NET SALES been earned by LICENSEE (after taking into account the amounts allocated under clauses (a) and (b) above, provided, however, that in no event shall defendthe amount payable from any such recovery exceed fifty percent (50%) of any such lost profits, indemnify with all amounts remaining from any such recovery being paid to or otherwise retained by LICENSEE. LICENSEE shall during the term of this Agreement have the sole right subject to the terms and hold harmlessconditions 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 a sublicense, after reimbursement of any legal expenses incurred by LICENSEE and OSU, shall be treated as SUBLICENSE REVENUES for purposes of this Agreement.
8.4 No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without OSU’s consent, which shall not be unreasonably withheld, unless and to the extent that such settlement is in the form of a sublicense pursuant to the terms and conditions of this Agreement.
8.5 If LICENSEE and its sublicensee(s) elect not to exercise their right to prosecute or defend an infringement of the PATENT RIGHTS, OSU may do so at its own expense, controlling such action and retaining all suits and claims against recoveries; in the Owner for infringement or violation case where any such action is undertaken by OSU due to LICENSEE being unable to do so (e.g., in the case where LICENSEE is unable to obtain standing), then any recoveries shall be allocated in accordance with Section 8.3 above.
8.6 If a declaratory judgment action alleging invalidity of any patentof the PATENT RIGHTS is brought against LICENSEE or OSU, 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 maythen OSU, at its own costsole option, 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 intervene 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 take over the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentat its own expense.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: Exclusive License Agreement (Roughneck Supplies Inc.)
Infringement. (a) The Vendor agrees that 7.1 Each party to this Agreement shall promptly notify the other party in writing of any alleged infringement and of any available evidence of infringement by a third party of any patents within the Patent Rights of which it becomes aware.
7.2 During the term of this Agreement, LICENSEE shall defendhave the right, indemnify and hold harmlessbut shall not be obligated, to prosecute at its own expenseexpense any such infringements of the Patent Rights and, all suits and claims against the Owner for infringement or violation in furtherance of any patentsuch right, trademark, copyright, trade secret or other intellectual property rights of any third LICENSEE hereby agrees that ▇▇▇▇▇ ▇▇▇▇▇▇▇ may join LICENSEE as a party enforceable in the United States or plaintiff in any other territory where Vendor has approved the deployment or use of Products under this Contract (collectivelysuch suit, "Intellectual Property Rights")without expense to ▇▇▇▇▇ ▇▇▇▇▇▇▇, 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 such right to bring an infringement action shall remain in effect only for so long as the Owner maylicense granted herein remains exclusive. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of ▇▇▇▇▇ ▇▇▇▇▇▇▇, which consent shall not unreasonably be withheld. LICENSEE shall indemnify ▇▇▇▇▇ ▇▇▇▇▇▇▇ against any order for costs or other expenses that may be made against ▇▇▇▇▇ ▇▇▇▇▇▇▇ in such proceedings. The total cost of any such infringement action commenced or defended solely by LICENSEE shall be borne by LICENSEE, and LICENSEE shall keep any recovery damages for past infringement derived therefrom, after payments to ▇▇▇▇▇ ▇▇▇▇▇▇▇ of the royalty rate set forth in Paragraph 4.1(c)(i) applied to the sum of the recovery, damages or any other amount received in any form of disputation and/or in settlement of any infringement or alleged infringement of the Patent Rights remaining after LICENSEE has reimbursed itself for all costs, including legal costs, associated with the prosecution.
7.3 If within six (6) months after having been notified of any alleged infringement, LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting any infringement action, or if LICENSEE shall notify ▇▇▇▇▇ ▇▇▇▇▇▇▇ at any time prior thereto of its intention not to bring suit against any alleged infringer, then, ▇▇▇▇▇ ▇▇▇▇▇▇▇ shall have the right, but shall not be obligated to prosecute at its own cost, participate in the investigation, trial and defense of such lawsuit or action and expense 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 infringement 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 expensePatent Rights, and (iii) ▇▇▇▇▇ ▇▇▇▇▇▇▇ may, for such purposes, use the name of LICENSEE as party plaintiff without expense to compromise LICENSEE, and ▇▇▇▇▇ ▇▇▇▇▇▇▇ shall keep any recovery 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. damages derived therefrom.
7.4 In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the Owner assumes Patent Rights shall be brought against 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 Claimaction at their own expense.
7.5 In any infringement suit that any party hereto may institute to enforce the Patent Rights pursuant to this Agreement, the Owner will keep other party hereto shall, at the Vendor reasonably informed request and expense of the progress 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.
7.6 LICENSEE, during the Exclusive Period of any such defensethis Agreement, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and have the sole right in accordance with this Agreement the terms and for conditions herein to sublicense any final judgment (subject alleged infringer under the Patent Rights to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner avoid future infringements. Amounts received from and against any Losses by reason of such settlement or judgment.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installedsublicensee constituting retroactive royalties shall be considered amounts received in settlement and accounted for under Paragraph 7.2 above. Otherwise, recommended or approved by the Vendoramounts received from such sublicensee shall be treated in accordance with Paragraph 4.1(c) above.
Appears in 1 contract
Infringement. (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 of a claim or suit against ASSOCIATE alleging (a) the Owner assumes PRODUCT(S) as sold by NECAM infringes any patent issued by or copyright registered in the defense country in which the PRODUCT(S) was sold to ASSOCIATE, NECAM shall defend ASSOCIATE to the extent the claim or suit concerns such infringement, provided ASSOCIATE gives NECAM prompt notice of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such claim or suit and continuous cooperation in such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.
(b) The VendorIn any claim or suit against ASSOCIATE that is defended by NECAM pursuant to paragraph 1, NECAM shall control the defense, shall pay all litigation costs, including reasonable attorney's obligation fees incurred by NECAM in such defense, and shall indemnify ASSOCIATE for all damages awarded by a court or settlement payments approved by ▇▇▇▇▇.
(c) If, in any claim or suit against ASSOCIATE that is defended by NECAM pursuant to paragraph 1, as a result of a court order not subject to further appeal or a settlement approved by NECAM, ASSOCIATE is enjoined or otherwise prevented from using the PRODUCT(S) sold by NECAM, NECAM, at its option, may (a) procure for ASSOCIATE the right to continue using the PRODUCT(S), (b) replace or modify the PRODUCT(S) to avoid infringement, or (c) repossess the PRODUCT(S) in exchange for a refund of the depreciated value of the PRODUCT(S). NECAM's option selected under this subsection paragraph shall be ASSOCIATE'S sole remedy for any prospective effects of any court order or settlement.
(d) NECAM's total cumulative liability under paragraphs 2 and 3 shall be limited to the price paid to NECAM by ASSOCIATE for the PRODUCT(S).
(e) Notwithstanding any other provision of this Article, NECAM shall not extend be obligated to defend and shall not be liable for costs or damages awarded in any claim or suit for infringement in which (a) the PRODUCT(S) was made by NECAM pursuant to specifications supplied by ASSOCIATE, or (b) the alleged infringements or violations that arise because infringement is based on use by ASSOCIATE, without NECAM's permission, of the Products provided PRODUCT(S) as sold by the Vendor are used NECAM in combination with other products furnished another item not sold by third parties and NECAM, where any such the alleged infringement arises from the combination was not installed, recommended or approved from practice of a method made possible by the Vendorcombination, or (c) the alleged infringement is based on the PRODUCT(S) as modified by ASSOCIATE without NECAM's permission.
Appears in 1 contract
Infringement. (a) The Vendor agrees that it 13.1 ECHOMAIL shall defend, indemnify and hold harmlessharmless CUSTOMER from all costs, at its own expenseexpenses, all damages, suits and claims against other proceedings incurred by CUSTOMER, its officers, directors, employees or agents in connection with any claim that the Owner for infringement or violation of Licensed Software infringes any patent, trademark, copyright, trade secret or other intellectual property proprietary 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 violationparty, 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"a) 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 CUSTOMER promptly informs ECHOMAIL 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 (iiib) CUSTOMER furnishes to compromise or settle such Claim, which compromise or settlement shall be made only with the written consent of the Owner (ECHOMAIL all information and assistance in connection therewith 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 reasonably requested by ECHOMAIL from time to time. ECHOMAIL 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 sole right to undertakesettle, at the Vendor's cost and expensedefend, the defense, compromise or settlement of otherwise handle any such Claim on behalf of and for the account and risk of the Vendorclaim. In the event the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress use of any Licensed Software is enjoined, ECHOMAIL shall, at its option, either (a) procure for CUSTOMER the right to continue to use such defenseLicensed Software, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.
(b) The Vendor's obligation replace or modify the same to make it non-infringing, or (c) terminate the license to such Licensed Software and provide a pro rata refund to CUSTOMER of all amounts paid by CUSTOMER for the allegedly infringing Licensed Software to ECHOMAIL hereunder, based upon a five (5) year life of such Licensed Software.
13.2 ECHOMAIL’S obligations under this subsection Section 13.0 shall be only for the benefit of CUSTOMER. ECHOMAIL shall not extend be obligated to alleged infringements defend or violations that arise because to be liable under this Section 13.0 to the Products extent the infringement asserted arises out of (a) compliance with specification originating with CUSTOMER, (b) use or combination of Licensed Software with items not provided by ECHOMAIL to the Vendor are used in extent such infringement would not have occurred but for such use or combination with such other products items; (c) use of other than the latest unmodified version of Licensed Software if such infringement would have been avoided by the use of such later version; or (d) modification of Licensed Software other than by ECHOMAIL.
13.3 This Section 13.0 states the exclusive remedy of CUSTOMER and the entire liability of ECHOMAIL with respect to infringement of any patent, copyright, or other proprietary rights of third parties by items furnished by third parties and where any such combination was not installed, recommended or approved by the VendorECHOMAIL ▇▇▇▇▇▇▇▇▇.
Appears in 1 contract
Infringement. 4.2 If LEUKON or its SUBLICENSEE elects to commence an action as described above, LEUKON may reduce the royalty due to CBR earned under the patent subject to suit by * the amount of the expenses and costs of such action, including attorneys' fees, but in no event shall any royalty be reduced by more than *. In the event that such expenses and costs exceed the amount of royalties withheld by LEUKON for any calendar year, LEUKON may to that extent reduce the royalties due to CBR from LEUKON in succeeding calendar years.
4.3 Recoveries or reimbursements from such action shall first be applied to reimburse LEUKON for litigation costs not paid from royalties (aif any), and then to reimburse CBR for royalties withheld. Any remaining recoveries or reimbursements shall be divided between the parties as follows.
(i) The Vendor agrees If the amount is lost profits, LEUKON shall receive an amount equal to the damages the court determines LEUKON has suffered as a result of the infringement less the amount of any royalties that would have been due CBR on sales of PRODUCTS lost by LEUKON as a result of the infringement had LEUKON made such sales; and
(ii) CBR shall receive an amount equal to the royalties it shall defendwould have received if such sales had been made by LEUKON; or
(b) As to awards other than lost profits, indemnify seventy-five percent (75%) to LEUKON and hold harmlesstwenty-five percent (25%) to CBR.
4.4 In the event that LEUKON and its SUBLICENSEE, if any, elect not to exercise their right to prosecute an infringement of the PATENT RIGHTS pursuant to the above paragraphs or do not bring an infringement lawsuit within six months notice from CBR of infringement, CBR may do so 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 controlling 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 retaining all recoveries 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. .
4.5 In the event the Owner assumes the defense that litigation against LEUKON is initiated by a third-party charging LEUKON with infringement of a patent of the Claim, the Owner will keep the Vendor reasonably informed third party as a result of the progress manufacture, use or sale by LEUKON of PRODUCT, LEUKON shall promptly notify CBR in writing thereof. LEUKON'S costs as to any such defense, compromise or settlement. The Vendor defense shall be liable for any settlement of any action effected pursuant fully creditable against running royalties due and payable to and in accordance with this Agreement and for any final judgment (subject to any right of appealCBR under Paragraph 3.1(a), and the Vendor agrees to indemnify and hold harmless the Owner from and against but in no event shall any Losses royalty be reduced by reason of such settlement or judgmentmore than *.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: License Agreement (Leukosite Inc)
Infringement. During the Tenn of this Agreement and any renewal or extensions thereof:
(a) The Vendor agrees that it the Licensee shall defend, indemnify and hold harmless, at its own expense, all suits and claims against promptly notify the Owner for infringement or violation Licensor of any patentand all infringements, trademark, copyright, trade secret illegal use 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 misuse (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 "ClaimInfringements") is to be made by a party entitled to indemnification hereunder against of the VendorLicenced Patents, the party claiming such indemnification shall give written notice (a "Claim Notice") Copyright Works, Trade ▇▇▇▇ or Technical Information as same relates to the Vendor as soon as practicable after the party entitled Licenced Products which come 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentattention.
(b) The Vendorthe Licensee shall promptly deal with such Infringements in the Territory, in which case the Licensee shall be entitled to commence action to protect its interest in the Licenced Patents, Copyright Works, Trade ▇▇▇▇ or Technical Information, obtain judgment, and to settle or compromise any such actions so long as same does not affect the validity of the Licenced Patents and the Licensee's obligation obligations under this subsection Agreement. In the event that the Infringement includes any unauthorized production and sale of Licenced Products or Parts by a third party , any compensation resulting therefrom shall not extend to alleged infringements or violations that arise because be applied as follows: firstly, the Products provided legal costs incurred by the Vendor are used Licensee in combination the action; and secondly, the residue shall be apportioned between the Licensor and Licensee on a pro rata basis having regard to the profits and royalties that would otherwise have been made or payable to the parties, as the case may be, on the distribution and sale of the Licenced Products and Parts as if same had been distributed and sold by the Licensee and not the infringing party .
(c) The Licensor agrees to provide the Licensee with other products furnished such information and assistance as is necessary to permit the Licensee to deal with Infringements pursuant to paragraph (b) above.
(d) Notwithstanding Section 11.01(b) hereof, in the event the Licensor and the Licensee agree to jointly deal with such Infringement, any compensation resulting from the joint action shall first be applied in payment of the legal costs incurred by third the parties and where any such combination was not installed, recommended or approved the balance shall be shared by the Vendorparties in accordance with the apportionment referred to in Section 11.01(b) above.
(e) The Licensor agrees to indemnify and same harmless the Licensee for any and all costs incurred by the Licensee should the Licensor be in breach of its covenant set out in section 6.01(c) of this Agreement.
Appears in 1 contract
Infringement. (a) The Vendor agrees that it A. Licensee and CMCC shall defendeach inform the 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, indemnify and hold harmlessCMCC shall have the right, but shall not be obligated, to prosecute at its own expenseexpense any infringement of the Patent Rights and, all suits and claims against the Owner for infringement or violation 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. The total cost of any patentsuch infringement action commenced or defended solely by CMCC shall be borne by CMCC. Any recovery of damages by CMCC for such suit shall be applied first in satisfaction of any unreimbursed expenses and legal fees of CMCC hereunder. CMCC shall keep any recovery or damages for past infringement derived therefrom, trademarkexcept recovery that is awarded with respect to lost sales of Licensed Products, copyrightwhich amount of recovery will be paid to Licensee, trade secret less any amount of royalty that would have been due to CMCC if such amount were Net Sales made by Licensee, its Affiliates or Sublicensees. CMCC agrees not to enter into any settlement, consent judgment or other intellectual property rights voluntary final disposition of the suit referenced above without first consulting Licensee.
C. If within three (3) months after having been notified of any third party enforceable alleged infringement, CMCC shall have been unsuccessful in persuading 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"), coveringalleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if CMCC shall notify Licensee of its intention not to bring suit against any alleged infringer then, Licensee shall have the right, but shall not be obligated, to coverprosecute at its own expense any infringement of the Patent Rights, 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 such right to bring such an infringement action shall remain in effect only for so long as the Owner maylicense granted hereunder remains exclusive. No settlement, at its own cost, participate in consent judgment or other voluntary final disposition of 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 suit may be sought under this Agreement, provided, however, no delay on entered into without the part consent 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 ClaimCMCC, which compromise or settlement consent 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 . Licensee 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 indemnify CMCC 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 defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.M.
Appears in 1 contract
Infringement. Section 8.1 CONTROL DEVICES is empowered, at its sole option:
(a) The Vendor agrees that it shall defendTo bring suit in its own name or, indemnify and hold harmlessif required by law, jointly with HEGYI, at its CONTROL DEVICE▇' ▇▇n expense and on CONTROL DEVICES' own expensebehalf, for infringement of the Licensed Patents;
(b) In any such suit, to enjoin infringement and to collect for CONTROL DEVICES' benefit all suits damages, profits, and claims awards of whatever nature recoverable for such infringement; and
(c) To settle any claim or suit for infringement of the Licensed Patents. Notwithstanding any other provision of this License Agreement, in any such suit CONTROL DEVICES is entitled to recover CONTROL DEVICES' expenses before HEGYI is entitled to any ▇▇▇▇lty payments. HEGYI shall be entitled ▇▇ ▇▇yalty payments for such infringement but such payments shall be limited to twenty-five percent (25%) of any excess of CONTROL DEVICES' recoveries over CONTROL DEVICES' expenses.
Section 8.2 In the event HEGYI shall bring to the ▇▇▇▇ntion of CONTROL DEVICES any unlicensed infringement of the Licensed Patents and shall furnish CONTROL DEVICES with a written opinion by a registered patent attorney that such infringement exists, and CONTROL DEVICES shall not, within three (3) months:
(a) secure cessation of the infringement; or
(b) enter suit against the Owner infringer; or
(c) provide evidence of the pendency of a bona fide negotiation for infringement or violation the acceptance by the infringer of any patenta sublicense under the Licensed Patents; then HEGYI shall thereafter h▇▇▇ ▇he right, trademarkat his sole option, copyright, trade secret or other intellectual property rights of any third party enforceable in to terminate 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, exclusive license granted herein 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 notifying CONTROL DEVICES of such infringement or violation, provided that the Owner shall cooperate termination 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 therefromwriting; provided, however, that CONTROL DEVICES shall not be obligated to enter suit against more than one infringer at a time. Upon termination of CONTROL DEVICES' exclusive license, CONTROL DEVICES shall retain a license on the Owner maysame terms as set forth in this License Agreement except that (1) the license shall be non-exclusive and HEGYI shall have the rig▇▇ ▇▇ license third parties under the Licensed Patents, (2) CONTROL DEVICES' license shall be limited to making and selling Royalty Products for customers to whom CONTROL DEVICES is contractually obligated to sell Royalty Products as of the date of termination or to whom CONTROL DEVICES has previously Sold commercial quantities of Royalty Products, and (3) CONTROL DEVICES shall not thereafter be able to grant any further sublicenses. Upon such termination, HEGYI may at its own costhis option ▇▇▇▇ suit for the infringement, participate in the investigation, trial and defense of such lawsuit or action and any appeal arising therefromsuch suit shall be HEGYI's own expense, and ▇▇▇▇▇ shall collect for ▇▇▇ ▇enefit all damages, profits, and awards of whatever nature which are recoverable for such infringement. The parties shall Provided that CONTROL DEVICES has no legitimate reason to refrain from cooperation, CONTROL DEVICES agrees to cooperate with each other HEGYI in any notifications such suit by (1) ▇▇▇igning to insurers. If a HEGYI CONTROL DEVICES' d▇▇▇▇▇ 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") past damages incurred up to the Vendor time of termination, (2) providing HEGYI with information a▇▇ ▇▇cuments reasonably needed by HEGYI to prosecute such ▇▇▇▇▇it, and (3) making CONTROL DEVICES employees reasonably available to HEGYI as soon as practicable after the party entitled witnesses (or o▇▇▇▇ similar uses) up to indemnification becomes aware a maximum 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 workdays. CONTROL DEVICES shall participate in any settlement, verdict, or finding in favor of HEGYI as follows:
(▇) ▇ctual costs other than legal fees incurred by HEGYI and CONTROL DEVICE▇ ▇▇▇ll be returned to both parties in full, or prorated equally if costs cannot be reimbursed in full, then
(2) the service of the citation or summons). The Vendor remainder shall be entitleddivided in proportion to the time spent by each party, if it so elects, except that HEGYI's time shall be mu▇▇▇▇▇▇▇d by two (i2) to defend such lawsuit or action, (ii) to employ and engage attorneys of its own choice to handle and defend reflect 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 higher 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 defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmenthis time.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Infringement. (a) The Vendor agrees that it If any of the IXSYS PATENTS under which MEDIMMUNE is licensed hereunder is infringed by the sale by a THIRD PARTY of a PRODUCT, subject to the provisions of the IXSYS LICENSE AGREEMENTS, MEDIMMUNE shall defend, indemnify have the right and hold harmlessoption but not the obligation to bring an action for such infringement, at its own sole 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 such THIRD PARTY in the United States or in any other territory where Vendor has approved the deployment or use name 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 IXSYS and/or in the investigation, trial and defense name of such lawsuit or action and any appeal arising therefrom; provided, however, that the Owner may, at its own cost, participate MEDIMMUNE and/or in the investigationname of a licensor of IXSYS, trial as the case may be, and defense of such lawsuit to join IXSYS 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 its licensor as 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, plaintiff 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress MEDIMMUNE shall promptly notify IXSYS of any such defense, compromise or settlement. The Vendor infringement and shall be liable for any settlement keep IXSYS informed as to the prosecution of any action effected pursuant to and in accordance with this Agreement and for any such infringement. No settlement, consent judgment or other voluntary final judgment (subject to any right disposition of appeal)the suit which adversely affects IXSYS PATENTS may be entered into without the consent of IXSYS, and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentwhich consent shall not unreasonably be withheld.
(b) In the event that MEDIMMUNE shall undertake the enforcement under Section 7.1(a) of the IXSYS PATENTS by litigation, subject to the provisions of the IXSYS LICENSE AGREEMENTS, any recovery of damages by MEDIMMUNE for any such suit shall be applied first pro rata in satisfaction of any unreimbursed out of pocket expenses and legal fees of MEDIMMUNE regarding such suit. The Vendor's obligation balance remaining from any such recovery shall be divided between MEDIMMUNE and IXSYS, as follows
(i) for that portion, if any, based on lost profits, IXSYS shall recover the royalty IXSYS would have received under this subsection Agreement if such sales had been made by MEDIMMUNE; and (ii) for any other recovery, IXSYS shall receive (CONFIDENTIAL TREATMENT REQUESTED) of the remaining amount.
7.2 In the event that MEDIMMUNE elects not extend to alleged infringements or violations pursue an action for infringement, upon written notice to IXSYS by MEDIMMUNE that arise because an unlicensed THIRD PARTY is an infringer of a VALID PATENT CLAIM of IXSYS PATENTS licensed to MEDIMMUNE, IXSYS shall have the Products provided right and option, but not the obligation at its cost and expense to initiate infringement litigation and to retain any recovered damages.
7.3 In any infringement suit either party may institute to enforce the IXSYS PATENTS pursuant to this Agreement, the other party hereto shall, at the request of the party initiating such suit, reasonably cooperate and, to the extent reasonably possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like. All reasonable out-of-pocket costs incurred in connection with rendering cooperation requested hereunder shall be paid by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendorparty requesting cooperation.
Appears in 1 contract
Infringement. (a) The Vendor 7.1 Each party shall promptly notify the other 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, BIOS shall have the right, but shall not be obligated, to bring any legal action for infringement or for defending any counterclaim of invalidity or action of a third party for declaratory judgment of non-infringement or interference relating to such PATENT RIGHTS. In furtherance of such right, VGI hereby agrees that it BIOS may include VGI as a party plaintiff in any such suit, and VGI agrees to fully cooperate with BIOS in the prosecution of such infringements. If BIOS decides not to exercise such rights to bring legal action within three (3) months of VGI giving notice thereof to BIOS, VGI shall defendbe entitled to do so in its own right if legally permissible, indemnify provided, however, that BIOS through counsel of its own selection, shall oversee such legal action and hold harmlessbe provided the opportunity to approve all actions which are case dispositive. All fees, costs and expenses of any such infringement action shall be borne by the party bringing the action and such party shall obtain any recovery or damages, if any, whether by judgment, award, decree or settlement, including interest for past infringement. The excess of such recoveries, damages and interest over VGI's out of pocket expenses in connection with the prosecution or defense of such actions shall be included in VGI's NET SALES under this Agreement for the benefit of BIOS. VGI may settle any such actions solely at its own expense, all suits expense and claims against the Owner for infringement or violation through counsel 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 therefromown selection; provided, however, that the Owner may, BIOS shall be entitled in each instance to participate through counsel of its selection and at its own costexpense in any such settlement and to approve the terms of such settlement, participate in such approval not to be unreasonably withheld.
7.3 In the investigation, trial and event that BIOS is involved with the enforcement and/or defense of such lawsuit or action the PATENT RIGHTS by litigation, VGI may not withhold any payments otherwise deemed earned and due to BIOS under Article 4 hereunder.
7.4 In any appeal arising therefrom. The parties shall cooperate with each other in any notifications patent infringement suit that BIOS may institute to insurers. If a claim for Losses (a "Claim") is enforce the PATENT RIGHTS pursuant 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 sameVGI shall, at the Vendor's costrequest of BIOS, risk and expensecooperate in all reasonable respects and, 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) extent reasonably possible, have the right to undertakeits employees testify when requested and make available relevant records, at the Vendor's cost and expensepapers, the defenseinformation, 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 Claimsamples, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal)specimens, and the Vendor agrees to indemnify and hold harmless like during the Owner from and against any Losses by reason term of such settlement or judgmentthis Agreement.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: License Agreement (Genaissance Pharmaceuticals Inc)
Infringement. (a) The Vendor agrees that it A. LICENSEE and CMCC shall each inform the 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 License Agreement, LICENSEE shall have the right, but not the obligation, to prosecute and/or defend, indemnify and hold harmless, at its own expenseexpense and utilizing counsel of its choice, all suits and claims against the Owner for any infringement or violation of any patentof, 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 coverand/or challenge to, 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 therefromPatent Rights; provided, howeverhowever that CMCC shall have the right to approve LICENSEE's choice of counsel, such approval not to be unreasonably withheld. In furtherance of such right, CMCC hereby agrees that LICENSEE may join CMCC as a party in any such suit, without expense to CMCC. No settlement, consent,,, judgment or other voluntary final disposition of any such suit may be entered into without the Owner mayconsent of CMCC which consent shall not unreasonably be withheld. LICENSEE shall indemnify CMCC against any order for costs that may be made against CMCC in any such suit.
C. In the event that LICENSEE shall undertake the enforcement and/or defense of the Patent Rights, as provided in Paragraph 7.2, LICENSEE may withhold up to fifty percent (50%) of the royalties otherwise thereafter due CMCC in Article *** and apply such amount toward reimbursement of LICENSEE's expenses, including attorneys' fees, in connection therewith. Any recovery of damages by LICENSEE, in 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 CMCC for any royalties past due or withheld and applied pursuant to this paragraph. Any balance remaining from any such recovery shall be apportioned 50% to LICENSEE and 50% to CMCC.
D. If within six (6) months after receiving notice of any alleged infringement, LICENSEE shall have been unsuccessful in persuading the alleged infringement to desist, or shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE shall notify CMCC, at any time prior thereto, of its intention not to bring suit against the alleged infringer, then, and in those events only, CMCC shall have the right, but not the obligation, to prosecute, at its own costexpense and utilizing counsel of its choice, participate in the investigation, trial any cost of any such infringement action commenced solely by CMCC shall be borne by CMCC and defense of such lawsuit CMCC shall keep any recovery or action and any appeal arising damages for past infringement derived therefrom. The parties CMCC shall cooperate with each other indemnify LICENSEE against any order for costs that may be made against LICENSEE in any notifications such suit.
E. In any suit to insurers. If a claim for Losses (a "Claim") is enforce and/or defend the Patent Rights pursuant to be made by a party entitled to indemnification hereunder against the Vendorthis License Agreement, the party claiming not in control of 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 samesuit shall, at the Vendor's costrequest and expense of the controlling party, risk cooperate in all respects and, to the extent possible, have its employees testify when requested and expensemake available relevant records, papers, information, samples, specimens, and (iii) to compromise or settle such Claimthe like.
F. LICENSEE during the period of this License Agreement, which compromise or settlement shall be made only with the written consent of the Owner (which may not be unreasonably withheld)have the- sole right, 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement the terms and conditions herein, to sublicense any alleged infringer for any final judgment (subject to any right future use of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentPatent Rights.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: Exclusive License Agreement (Boston Life Sciences Inc /De)
Infringement. (a) The Vendor 8.1 LICENSEE and UKRF shall promptly inform the other in writing of any alleged infringement of which it shall have notice by a third party of any patents within the Patent Rights and provide such other with any available information relating to such alleged infringement.
8.2 During the term of this Agreement, UKRF shall have the right, but shall not be obligated, to prosecute at its own expense any such infringement of the Patent Rights and, in the furtherance of such right, LICENSEE hereby agrees that it UKRF may join LICENSEE as a party plaintiff in any such suit, without expense to LICENSEE. The total cost of any such infringement action commenced or defended solely by UKRF shall defendbe borne by UKRF, indemnify and hold harmlessUKRF shall keep any recovery or damages for past infringement derived therefrom.
8.3 If within l20 days after having been notified of any alleged infringement, UKRF shall have been unsuccessful in persuading the alleged infringer to desist from the infringing activities and shall not have brought and shall not be diligently prosecuting an infringement action, or if UKRF shall notify LICENSEE at any time prior thereto of its intention not to bring suit against the alleged infringer, then, and in those events only, LICENSEE shall have the right, but shall not be obligated, to prosecute at its own expense such infringement of the Patent Rights, and LICENSEE may, for such purposes, use the name of UKRF as party plaintiff.
8.4 In the 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 royalties otherwise due UKRF hereunder and apply the same toward reimbursement of its expenses, including reasonable attorneys' fees, in connection therewith. Any recovery of damages by LICENSEE for any such suit shall be applied first in satisfaction of any un-reimbursed expenses and legal fees of LICENSEE relating to the suit, and next toward reimbursement of UKRF for any royalties past due or withheld and applied pursuant to this Article 8. The balance remaining from any such recovery shall be retained by LICENSEE and shall constitute Net Sales hereunder.
8.5 In the event that a declaratory judgment action alleging invalidity or non- infringement of any of the Patent Rights shall be brought against LICENSEE, UKRF, 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.
8.6 In any infringement suit 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 all suits respects and, to the extent reasonable, have its employees testify when requested and claims make available relevant records, papers, information, samples, specimens, and the like, and the party maintaining the litigation shall reimburse the other party against any order for costs that may be made against such other party in such proceedings. Should UKRF or Licensee commence a suit under the Owner foregoing provisions and thereafter elect to abandon the same, the abandoning party shall give timely, written notice to the other party, which, at its option, may chose to continue the prosecution of such suit, with the expenses and recovery being allocated as provided in Section 8.2, 8.3 or 8.4 hereof. [*]=CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETED ASTERISKS HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
8.7 LICENSEE, during the exclusive period of this Agreement, shall have the sole right in accordance with the terms and conditions herein to sublicense any alleged infringer under the Patent Rights for infringement future infringements.
8.8 In any patent litigation pursuant to this Article 8, the party maintaining the litigation shall consult with the other party on material aspects of the litigation and shall select counsel to which the other party has no reasonable objection. No settlement, consent judgment or violation other voluntary final disposition of any patentsuch litigation may be entered into without the consent of the other party, trademarkwhich consent shall not unreasonably be withheld or delayed.
8.9 If, copyrightduring the term of this Agreement, trade secret or other intellectual property rights of any third party enforceable (other than an Affiliate of a party) claims that LICENSEE'S making, using or selling of Licensed Products hereunder infringes on a third-party patent based upon claims that dominate claims in the United States or in any other territory where Vendor has approved Licensed Patent Rights, within 120 days after notice by LICENSEE, UKRF shall either (i) procure for LICENSEE the deployment or use of Products rights to exercise all rights licensed under this Contract (collectively, "Intellectual Property Rights"), coveringAgreement without any additional payment therefor by LICENSEE, or alleged to cover, the Products or any component thereof. The Vendor agrees (ii) advise LICENSEE that it elects not to procure such rights itself. If UKRF does not procure such rights within such 120-day period after notice of such claim by LICENSEE, LICENSEE shall pay all sumshave the right, including without limitationbut not the obligation, reasonable attorneys' fees to procure such rights itself and other costs incurred at Vendor's written request or authorization, which, in defense of, by final judgment or decree, or in settlement offset one-half of any suit or claim to which royalty payments hereunder by the Vendor agrees, may be assessed against, or incurred by, the Owner on account of amount paid by LICENSEE for such infringement or violationthird-party rights, 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 offset 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 provision shall not be required. If used to reduce the Vendor fails royalty payment in any period by more than [*] of Net Sales, and any amount remaining 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of be offset from any such defense, compromise or settlement. The Vendor period shall be liable carried forward until offset against royalties for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentfuture periods.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: License Agreement (Control Delivery Systems Inc/Ma)
Infringement. (a) 7.1 The Vendor agrees that it parties shall defendinform each other promptly, indemnify in writing, of any alleged infringement of the Patent Rights by a third party, and hold harmlessof any available evidence thereof.
7.2 During the term of this Agreement, LICENSEE shall have the right, subject only to approval not unreasonably withheld of RESEARCH FOUNDATION, but shall not be obligated, to prosecute at its own expenseexpense any such infringements of the Patent Rights and, all suits and claims against the Owner for infringement or violation in furtherance of such right, RESEARCH FOUNDATION hereby agrees that LICENSEE may join RESEARCH FOUNDATION as a party plaintiff in any such suit, without expense to RESEARCH FOUNDATION. The total cost of any patentsuch infringement action except as provided in paragraph 7.4 hereof, trademarkcommenced or defended solely by LICENSEE shall be borne by LICENSEE and LICENSEE 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, copyrightLICENSEE 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, trade secret or if LICENSEE shall notify RESEARCH FOUNDATION at any time 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 intellectual property rights 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 LICENSEE shall undertake the enforcement and/or defense of the Patent Rights by litigation, LICENSEE may withhold up to [***] percent ([***]%) of the royalties otherwise thereafter due RESEARCH FOUNDATION hereunder and apply the same toward reimbursement of up to [***] percent ([***]%) of its expenses, including reasonable attorneys’ fees, in connection therewith. Any recovery by LICENSEE of damages for past infringement in any such suit shall be applied first In satisfaction of any third unreimbursed expenses and legal fees of LICENSEE relating to the suit, and next toward reimbursement of RESEARCH FOUNDATION for any royalties past due or withheld and applied pursuant to this Article VII. LICENSEE shall keep the balance remaining from any such recovery.
7.5 In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the Patent Rights shall be brought against RESEARCH FOUNDATION, LICENSEE 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 except as provided in paragraph 7.4.
7.6 In any infringement suit as either party enforceable in may institute to enforce the United States or in any other territory where Vendor has approved the deployment or use of Products under Patent Rights pursuant to this Contract (collectively, "Intellectual Property Rights"), covering, or alleged to coverAgreement, the Products or any component thereof. The Vendor agrees that it shall pay all sumsother party hereto shall, including without limitationat the request and expense of the party initiating such suit, 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 investigationand, 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 extent possible, have Its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the party entitled like.
7.7 RESEARCH FOUNDATION warrants and represents that it has the lawful right to indemnification becomes aware grant the license provided in this agreement and that ft has not granted rights or licenses in derogation of any fact, condition or event which may give rise to Losses for which indemnification may be sought under this Agreement. RESEARCH FOUNDATION agrees that during the term of this Agreement, provided, however, no delay on the part of the Owner in notifying the Vendor shall relieve the Vendor from or 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 license granted hereunder, written notice thereof RESEARCH FOUNDATION shall be given to the Vendor as promptly as practicable (and in not enter into 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 other agreements that conflict with the written consent rights or obligations provided hereunder, including any rights and obligations provided hereunder, including any rights and obligations that survive termination 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentAgreement.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Infringement. (a) The Vendor agrees 6.1 In the event that JASPER or SAC determines that a third party is making, using or selling a product that may infringe on PRODUCTS or TECHNOLOGY, it shall defend, indemnify and hold harmlesswill promptly notify the other party in writing. JASPER may, at its sole option, bring suit at its sole cost and expense against such alleged infringer. In the event JASPER decides to bring suit, it shall give prompt written notice to SAC of that fact. All recoveries in such suit shall inure to the benefit of JASPER, except that SAC shall have the right to elect to pay up to fifty percent (50%) of the litigation costs and receive a percentage of any recovery equal to the percentage of litigation costs paid. SAC must make such election within ninety (90) days of its receipt of notice that JASPER has decided to bring suit. SAC shall also have the right to choose to be represented by separate counsel in any such suit. If JASPER elects not to bring a suit against the alleged infringer, it shall promptly notify SAC of that fact and SAC shall have the right to commence such action at its own cost and expense, all suits and claims against in which case any recoveries shall inure to the Owner for infringement or violation benefit 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 therefromSAC; provided, however, that JASPER shall have the Owner may, at its own cost, participate in the investigation, trial reciprocal right of contribution 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 expenserecovery, 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 elect 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. separate counsel.
6.2 In the event that JASPER, SAC or any AFFILIATE is sued by a third party charging patent infringement for the Owner assumes manufacture, use or sale of PRODUCT or TECHNOLOGY, all PARTIES shall promptly be notified. JASPER shall promptly undertake the defense of the Claimsame at its sole and exclusive cost, and SAC, to the extent the same is appropriate, shall use its best efforts to remove from TECHNOLOGY any element thereof deemed to be infringing.
6.3 If any PARTY or any AFFILIATE is required to pay a royalty to other than a PARTY as a result of a final judgment or settlement in order to make and/or sell PRODUCTS or TECHNOLOGY, then in that event, the Owner will keep the Vendor reasonably informed amount of the progress of any such defense, compromise or settlement. The Vendor same shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and deemed a credit against any Losses royalty owed by reason of such settlement or judgmentone PARTY to another PARTY hereunder.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: Licensing and Marketing Agreement (Sac Technologies Inc)
Infringement. (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 If either 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 factinfringement or threatened infringement of any Patents, condition or event which may give rise to Losses for which indemnification may be sought under this Agreementthe party having such knowledge will promptly notify the other party thereof, 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 prejudicedgiving all available details. If CIMA determines that any lawsuit or enforcement action is filed against rights under any party entitled to the benefit of indemnity hereunderPatents are being infringed by an unlicensed third party, 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 CIMA has been asserted will (upon delivering notice to such effect to the Vendor) have the right to undertakeinitiate patent infringement litigation in its own name, or in the name of IPR if necessary, as reasonably necessary against such third party. Such litigation will be under the sole direction of CIMA and at the VendorCIMA's cost and expense, but IPR agrees to perform all actions that CIMA's legal counsel determines to be reasonably necessary in the defense, compromise or settlement of such Claim on behalf of and for the account and risk conduct of the Vendorlitigation. In IPR may join such proceeding at its own election and own expense (including the event the Owner assumes the defense expense of the Claimlegal counsel). CIMA will receive any relief obtained by such litigation, the Owner including all monetary awards. CIMA will keep the Vendor reasonably IPR informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to litigation and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentrelated matters.
(b) The Vendor[...***...].
(c) If any third party brings, or threatens to bring, an action against CIMA, IPR or IPR's obligation Affiliates, sublicensees or distributors for patent infringement involving the manufacture, use, sale, distribution or marketing of the Product, which action relates solely to the OraSolv-Registered Trademark-Technology, then the party sued will notify the other party to this Agreement of such action, in writing. CIMA will indemnify, defend and hold harmless IPR and its directors, officers, employees, agents, Affiliates, and third parties performing services for IPR, from and against any such claim, provided that it is given full and complete authority, information and reasonable assistance in the defense of such claim. IPR may join such proceeding at its own expense (including the expense of legal counsel) with the prior written consent of CIMA, which consent will not be unreasonably withheld. If IPR or an IPR Affiliate or sublicensee are obligated to pay royalties or make further payments to such third party in order to make, have made, make for others, use, import, offer for sale, sell or otherwise distribute the Product as a result of such action, such payments will be creditable against the amount of royalties payable to CIMA with respect to that country in accordance with Section 3.4(a) above.
(d) If any third party brings, or threatens to bring, an action against CIMA, IPR or IPR's Affiliates, sublicensees or distributors for patent infringement involving the manufacture, use, sale, distribution or marketing of the Product, which action relates to zolmitriptan, then the party sued will notify other party to this Agreement of such action, in writing. IPR will indemnify, defend and hold harmless CIMA and its directors, officers, employees, agents, Affiliates, and third parties performing services for CIMA, from and against any such claim, provided that it is given full and complete authority, information and reasonable assistance in the defense of such claim. CIMA may, in its sole discretion, require that IPR, or the appropriate IPR Affiliate or sublicensee, cease commercialization of the Product in any country in which such a claim has arisen.
(e) If the manufacture, use, sale, offer for sale or import of the Product in a Major Country would, but for the license granted to IPR under this subsection shall not extend Agreement, infringe a Patent included in the OraSolv-Registered Trademark-Technology, and if all claims of such Patents in such country subsequently become invalid, [...***...
(f) To the extent permitted by applicable law, CIMA has the right to alleged infringements terminate the license granted hereunder with respect to any country if IPR, its Affiliates or violations that arise because any individual or entity acting on their behalf attempts to challenge the Products provided by validity of any of the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the VendorPatents.
Appears in 1 contract
Sources: License Agreement (Cima Labs Inc)
Infringement. (a) The Vendor agrees that 7.1 Each party to this Agreement shall promptly notify the other party in writing of any alleged infringement and of any available evidence of infringement by a third party of any patents within the Patent Rights of which it becomes aware.
7.2 During the term of this Agreement, LICENSEE shall defendhave the right, indemnify and hold harmlessbut shall not be obligated, to prosecute at its own expenseexpense any such infringements of the Patent Rights and, all suits and claims in furtherance of such right, LICENSEE hereby agrees that JOHN▇ ▇▇▇K▇▇▇ ▇▇▇ join LICENSEE as a party plaintiff in any such suit, without expense to JOHN▇ ▇▇▇K▇▇▇, ▇▇ovided, 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 JOHN▇ ▇▇▇K▇▇▇, ▇▇ich consent shall not unreasonably be withheld. LICENSEE shall indemnify JOHN▇ ▇▇▇K▇▇▇ ▇▇▇inst any order for costs or other expenses that may be made against the Owner for infringement or violation JOHN▇ ▇▇▇K▇▇▇ ▇▇ such proceedings. The total cost of any patentsuch infringement action commenced or defended solely by LICENSEE shall be borne by LICENSEE, trademarkand LICENSEE shall keep any recovery damages for past infringement derived therefrom, copyrightafter payments to JOHN▇ ▇▇▇K▇▇▇ ▇▇ the royalty rate set forth in Paragraph 4.1(c)(i) applied to the sum of the recovery, trade secret damages or any other intellectual property rights of any third party enforceable in the United States or amount received in any other territory where Vendor has approved the deployment or use form 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 disputation and/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 violationalleged infringement of the Patent Rights remaining after LICENSEE has reimbursed itself for all costs, provided that the Owner shall cooperate in all reasonable respects including legal costs, associated 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. prosecution.
7.3 If a claim for Losses within six (a "Claim"6) 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 months after the party entitled to indemnification becomes aware having been notified 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. alleged infringement,
7.4 In the event that a declaratory judgment action alleging invalidity or noninfringement of any of the Owner assumes Patent Rights shall be brought against LICENSEE, JOHN▇ ▇▇▇K▇▇▇ ▇▇ its option, shall have the right, within thirty (30) days after commencement of such action, to intervene and participate in the defense of the Claimaction at their own expense.
7.5 In any infringement suit that any party hereto may institute to enforce the Patent Rights pursuant to this Agreement, the Owner will keep other party hereto shall, at the Vendor reasonably informed request and expense of the progress 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.
7.6 LICENSEE, during the Exclusive Period of any such defensethis Agreement, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and have the sole right in accordance with this Agreement the terms and for conditions herein to sublicense any final judgment (subject alleged infringer under the Patent Rights to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner avoid future infringements. Amounts received from and against any Losses by reason of such settlement or judgment.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed* constituting retroactive royalties shall be considered amounts received in settlement and accounted for under Paragraph 7.2 above. Otherwise, recommended or approved by amounts received from such sublicensee shall be treated in accordance with Paragraph * Certain information on this page has been omitted and filed separately with the VendorCommission. Confidential treatment has been requested with respect to the omitted portions.
Appears in 1 contract
Infringement. (a) The Vendor agrees that it 8.1 Neither THOMSON, nor Alcatel nor any one of the Alcatel Subsidiaries shall defend, indemnify and hold harmless, at its own expense, all suits and claims against be liable to Wavecom or to the Owner Wavecom Subsidiaries for any infringement or violation alleged infringement of any a patent, trademark, copyright, trade secret patent application or other intellectual property rights of any right held by a third party enforceable in resulting from the United States or in any other territory where Vendor has approved the deployment manufacture, sale or use of the Licensed Products under this Contract (collectively, "Intellectual Property Rights"), covering, by or alleged to cover, for Wavecom or the Products Wavecom Subsidiaries.
8.2 If Wavecom 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 Wavecom Subsidiaries become aware of any factinfringement whatsoever by third parties of one or several Licensed Patents, condition or event which may give rise Wavecom shall have to Losses for which indemnification inform THOMSON of that fact by means of a written notice, it being understood and accepted that THOMSON shall decide, in its sole judgement, as to whether it is opportune to adopt measures to remedy the said infringement and the nature of such measures.
8.3 No provision of the present Contract may be sought under this Agreement, provided, however, no delay construed:
(a) as imposing any obligation on a Party or on Alcatel or on the part Alcatel Subsidiaries to file proceedings or actions for infringement of Licensed Patents by virtue of these presents or to become a defendant in any proceedings or action filed by a third party disputing or affecting the validity of one 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 said Licensed Patents 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.; or
(b) The Vendor's obligation under as granting, in any way whatsoever, a license or the right to copy or to imitate the appearance, commercial presentation and/or design of a product of THOMSON, Alcatel, and/or the Alcatel Subsidiaries; or
(c) as granting, in any way whatsoever, any license whatsoever relating to the rights granted pursuant to Article 2 of this subsection shall Contract to manufacture, use, sell or dispose in any other way of a product or device other than the Licensed Products; or
(d) as granting, in any way whatsoever, a license in relation to the patent applications or patents (whether or not extend they cover the Licensed Products, in toto or in part) filed in the name of THOMSON itself or of the THOMSON Subsidiaries.
8.4 Notwithstanding Articles 8.2 and 8.3 (a) above, Alcatel and Thomson undertake to alleged infringements actively pursue their policy regarding granting licenses vis-à-vis third parties that do not hold patent rights necessary for the design and/or manufacture and/or marketing of their own GSM/GPRS products, competing with the Licensed Products or violations that arise because the Products provided GSM Equipment covered by the Vendor are used in combination with other products furnished by third parties and where any such combination was Licensed Patents, insofar as that does not installed, recommended or approved by risk impairing the Vendorinterests of Thomson and/or of Alcatel.
Appears in 1 contract
Sources: Patent License Contract (Wavecom Sa)
Infringement. (a) The Vendor agrees that it GENENTECH shall defend, indemnify and hold harmlesshave the first right (but not the obligation), at its own expense, all suits and claims against to take appropriate action to enforce Patent Rights or Extended License Patent Rights licensed exclusively to GENENTECH hereunder in the Owner for infringement or violation event of any patentactual or suspected infringement of such rights. GENENTECH may, trademarkin its sole judgment, copyrightinstitute suit against any such infringer or alleged infringer and control and defend and settle such suit in a manner consistent with the terms and provisions hereof. if GENENTECH has not commenced reasonable action to enforce such Patent Rights and Extended License Patent Rights, 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 case of Products under this Contract (collectively, "Intellectual Property Rights"), coveringsignificant infringement, or alleged has ceased to coverpursue such action within one hundred twenty (120) days after written notice from CURAGEN of the infringement, the Products or any component mutually acceptable extension thereof. The Vendor agrees , which notice includes all of CURAGEN’s then available supporting evidence and a request by CURAGEN that it action should be taken against such alleged infringer, CURAGEN 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 have the Vendor agrees, may be assessed against, or incurred by, right (but not 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 mayobligation), at its own costexpense, participate in to bring suit against such infringement. Any amount recovered, whether by judgment or settlement, shall first be applied to reimburse the investigation, trial costs 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 expenses (a "Claim"including attorneys’ fees) 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 (Party bringing suit, and then solely to reimburse the extentcosts and expenses (including attorneys’ fees), if any, of the other Party and then to reimburse CURAGEN for any royalties withheld by GENENTECH as provided in Section 5.3(b) the Vendor is thereby materially prejudiced. If any lawsuit or enforcement action is filed against any party entitled to the benefit of indemnity hereunderbelow, written notice thereof which shall be given to the Vendor paid with interest as promptly as practicable (and specified in any event within fifteen (15) calendar days after the service of the citation or summons)Section 3.11. 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.[*************************************************************************************************** ****************************************************************************]
(b) The Vendor's obligation under In the event that GENENTECH brings any suit in any country as permitted in Section 5.3(a) above with respect to a Material Infringement as defined in (c) below, GENENTECH shall be entitled to reduce royalties payable to CURAGEN hereunder with respect to Licensed Products substantially similar to the product alleged to be infringing the Patent Right(s) or Extended License Patent Right(s) which are the subject of the suit in such country and for so long as a Material Infringement exists, by [***************] of the amounts otherwise due hereunder with respect to such Licensed Products in such country.
(c) For purposes of this subsection Section 5.3, a Material Infringement shall not extend be deemed to alleged infringements exist with respect to a Licensed Product on a country-by-country basis when sales by a third party of allegedly infringing products in such country reach a level of [******] or violations that arise because more of the Products provided by combined sales of such allegedly infringing product(s) and sales of the Vendor are used Licensed Product in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendorcountry.
Appears in 1 contract
Infringement. (a) The Vendor agrees that it If a third party makes, uses or sells a product for use in a HUMAN XENOGRAFT SYSTEM which competes with XENOGRAFT PRODUCT licensed to NOVARTIS hereunder and such third party product infringes any of the BTI PATENT RIGHTS under which NOVARTIS is licensed, NOVARTIS shall defend, indemnify have the right and hold harmlessoption but not the obligation to bring an action for infringement, at its own sole expense, all suits against such third party in the name of BTI and/or in the name of NOVARTIS, and claims against to join BTI as a party plaintiff if required. NOVARTIS shall promptly notify BTI of any such infringement and shall keep BTI informed as to the Owner prosecution of any action for such infringement and shall not institute any infringement action without providing BTI with thirty (30) days prior written notice. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of BTI, which consent shall not unreasonably be withheld. Any recovery of damages by NOVARTIS for any such suit shall be applied first in satisfaction of expenses and legal fees of NOVARTIS relating to the suit. The balance remaining from any such recovery shall be divided between NOVARTIS and BTI, such that BTI receives the lesser of 30% of such recovery or the royalty BTI would have received under this Agreement if such sales had been made by NOVARTIS.
15.2 In the event that NOVARTIS elects not to pursue an action for infringement pursuant to Section 15.1, or violation of any patent, trademark, copyright, trade secret or other intellectual property rights of any does not do so within sixty (60) days after written notice by BTI that an unlicensed third party enforceable in is an infringer of a BTI PATENT RIGHT licensed to NOVARTIS, BTI shall have the United States or in right and option, but not the obligation at its cost and expense to initiate infringement litigation and to retain any other territory where Vendor has approved recovered damages.
15.3 In any infringement suit either party may institute to enforce the deployment or use of Products under BTI PATENT RIGHTS pursuant to this Contract (collectively, "Intellectual Property Rights"), covering, or alleged to coverAgreement, the Products or any component thereof. The Vendor agrees that it shall pay all sumsother party hereto shall, including without limitationat the request of the party initiating such suit, 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 respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like. All reasonable respects out-of-pocket costs of the other party incurred in connection with rendering such cooperation shall be paid by the Vendor and its attorneys requesting party.
(a) If a third party makes, uses or sells a product for use in the investigationFIELD which competes with BTI OTHER PRODUCT licensed to BTI and such third party product infringes any of the NOVARTIS PATENT RIGHTS and/or NOVARTIS COLLABORATION PATENT RIGHTS under which BTI is licensed, trial with prior written notice to NOVARTIS, and defense of such lawsuit or if NOVARTIS does not institute action within sixty (60) days, BTI shall have the right and any appeal arising therefrom; provided, however, that option but not the Owner mayobligation to bring an action for infringement, at its own costsole expense, participate against such third party in the investigationname of NOVARTIS and/or in the name of BTI, trial and defense to join NOVARTIS as a party plaintiff if required. BTI shall promptly notify NOVARTIS of any such infringement and shall keep NOVARTIS informed as to the prosecution of any action for such infringement and shall not institute any infringement action without providing NOVARTIS with thirty (30) days prior written notice. No settlement, consent judgment or other voluntary final disposition of Confidential Materials omitted and filed separately with the Securities and Exchange Commission. Asterisks denote omissions. the suit may be entered into without the consent of NOVARTIS, which consent shall not unreasonably be withheld. Any recovery of damages by BTI or NOVARTIS for any such suit shall be applied first in satisfaction of expenses and legal fees paid by the party bringing the suit relating to the suit and the balance remaining from any such recovery shall be divided between BTI and NOVARTIS, such that NOVARTIS, receives the lesser of the royalty NOVARTIS would have received under this Agreement if such sales had been made by BTI or ***** ********** of such lawsuit or action and remaining amount.
15.5 In any appeal arising therefrom. The parties shall cooperate with each other in any notifications infringement suit either party may institute to insurers. If a claim for Losses (a "Claim") is enforce patents pursuant 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 other 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 samehereto shall, at the Vendor's costrequest of the party initiating such suit, risk cooperate in all respects and, to the extent possible, have its employees testify when requested and expensemake available relevant records, papers, information, samples, specimens, and (iii) to compromise or settle the like. All reasonable out-of-pocket costs of the other party incurred in connection with rendering such Claim, which compromise or settlement cooperation shall be made only with paid by 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 Vendorrequesting party. In the event the Owner assumes the defense of the Claimaddition, the Owner will such party shall keep the Vendor reasonably informed of the progress other party advised of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentlitigation.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: Collaboration and License Agreement (Biotransplant Inc)
Infringement. Novirio shall promptly inform TherapX and Dr. Schinazi and TherapX and Dr. Schinazi will promptly notify Novir▇▇ ▇▇ ▇▇▇ ▇▇spected infringem▇▇▇ ▇▇ ▇▇▇ ▇icensed Patents. During the term of this Agreement, TherapX and Dr. Schinazi and Novirio ▇▇▇▇▇ ▇▇▇e the right to institute an action for infringement of the Licensed Patents against such third party in accordance with the following:
(a) The Vendor agrees that it If UAB, TherapX and Dr. Schinazi and Novirio, agree to institute suit jointly, the suit ▇▇▇▇▇ ▇▇ ▇▇▇ught in all their names and the out-of-pocket costs thereof shall defendbe borne equally. Any recovery or settlement received by TherapX and Dr. Schinazi and/or Novirio for punitive or exemplary damages shall ▇▇ ▇▇▇▇▇▇ ▇▇ually, 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 recovery or use settlement received, including compensatory damages or damages based on a loss of Products under this Contract (collectivelyrevenues, "Intellectual Property Rights")shall be paid to Novirio, covering, or alleged to cover, the Products or any component thereof. The Vendor agrees that it and Novirio shall pay all sums, including without limitation, reasonable attorneys' fees to TherapX and other costs incurred at Vendor's written request or authorization, which, Dr. Schinazi an amount representing the royalty which would have bee▇ ▇▇▇▇ ▇▇ ▇▇virio on such amount 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 accordance with the Vendor and its attorneys in the investigation, trial and defense provisions of Article 3 had 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 therefromamount been accrued by Novirio as Sales. The parties shall cooperate with each other agree upon the manner in any notifications to insurerswhich 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. 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 The fees 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 counsel shall be given to paid by 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 respective parties 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.represented;
(b) The Vendor's obligation under this subsection In the absence of agreement to institute a suit jointly, UAB may, as provided in the Primary License, institute suit, and, at its option, name TherapX and Dr. Schinazi as plaintiffs. UAB shall bear the entire cost of such l▇▇▇▇▇▇▇▇▇ ▇▇d 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 TherapX and Dr. Schinazi that it has decided not extend to alleged infringements join in or violations that arise because institute a suit, ▇▇ ▇▇▇▇▇▇▇▇ in (a) or (b) above, TherapX and Dr. Schinazi may institute suit and, at its option, name the Products provided by Primary ▇▇▇▇▇▇▇▇ ▇▇d/or Novirio as plaintiff. TherapX and Dr. Schinazi shall bear the Vendor are used entire cost of such litigation, includin▇ ▇▇▇▇▇▇▇▇▇ any counterclaims brought against UAB or Novirio and paying any judgments rendered against UAB or Novirio, and TherapX and Dr. Schinazi shall be entitled to retain the entire amount of any re▇▇▇▇▇▇ ▇▇ ▇▇ttlement.
(d) In the absence of agreement to institute suit jointly and if UAB and TherapX and Dr. Schinazi have decided not to join in combination with other products furnished by third parties or institute a suit, as pro▇▇▇▇▇ ▇▇ (▇) - (c) above, Novirio may institute suit and where at its option name UAB and/or TherapX and Dr. Schinazi as plaintiffs. Novirio shall bear the enter cost of suc▇ ▇▇▇▇▇▇▇▇▇▇, including defending any such combination was not installedconsiderations brought against UAB or TherapX and Dr. Schinazi and paying any judgments rendered against UAB or Therap▇ ▇▇▇ ▇▇. ▇▇hinazi, recommended and Novirio shall be entitled to retain the entire amo▇▇▇ ▇▇ ▇▇▇ ▇ecovery or approved by the Vendorsettlement.
Appears in 1 contract
Infringement. (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 Vendor7.1. In the event that LICENSEE (including any Affiliate or sublicensee) or UFRFI receives a notice of claim, threat, or suit by a third party alleging, that the Owner assumes manufacture, use or sale of the Licensed Technology infringes or is dominated by intellectual property rights owned or controlled by such third party, then the party receiving the notice shall promptly notify the other party to this Agreement in writing of such claim, threat or suit.
7.2. If notice of a claim, threat, or suit of the type described in Paragraph 7.1 herein is received by any party, LICENSEE shall consult with UFRFI regarding resolution of such claim, threat, or suit and may not reject UFRFI’S advice without reasonable justification thereof regarding negotiations with the Third Party, selection and supervision of counsel, filing of lawsuits or other proceedings, and settlement of the claim, threat, or suit. All costs and expenses, including attorneys’ fees, incurred in the course of resolving such claim threat, or suit shall be charged to LICENSEE. During the prosection of such legal action, LICENSEE shall be permitted to deduct the reasonable fees and expenses of the legal action from the royalties payable to UTRFI under the Article IV of this Agreement, up to [***] percent ([***]%) of said royalties. If LICENSEE prevails in such legal action such obligations by LICENSEE to pay royalties to UFRFI shall be fully and retroactively restored. Any monies except that excess which is attributable to trebled damages or award of attorneys’ fees, recovered by LICENSEE as a result of such legal action shall be treated as sales pursuant to Paragraph 4.1 for payment of royalties, after having deducted all previously undeducted expenses reasonably connected with the litigation. If the resolution of a claim, threat or suit of the type described in this Paragraph 7.2 results in the payment of royalties or other compensation to LICENSEE, this obligation by LICENSEE to pay royalties to UFRFI shall be fully and retroactively restored. Then, the remaining royalty or other compensation paid to LICENSEE shall be treated as sales pursuant to Paragraph 4.1 for payment of royalties, after having deducted all previously undeducted expenses reasonably connected with the litigation and resolution. UFRFI and University of Florida personnel shall fully cooperate with LICENSEE in the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress and resolution of any such defenseclaim, compromise threat or settlement. The Vendor suit, However, LICENSEE shall be liable compensate UFRFI and University of Florida personnel for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment their actual out-of-pocket expenses (subject to any right of appeale.g., travel), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: License Agreement (Diversa Corp)
Infringement. (a) The Vendor agrees that it shall defend, indemnify and hold harmless, at its own expense, all suits and claims against 10.1 Each party will promptly inform the Owner for infringement or violation other in writing of any patent, trademark, copyright, trade secret alleged infringement by a third party or other intellectual property rights unauthorized party of any third of the patents comprising the Licensed Patents, and provide such other party enforceable in the United States with any available evidence of infringement. Chondrial will not settle or in compromise any other territory where Vendor has approved the deployment claim or use of Products under this Contract (collectivelyaction, "Intellectual Property Rights")including, 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 any declaratory judgment action alleging invalidity or authorization, whichnoninfringement of any of the Licensed Patents, in defense ofa manner that imposes any restrictions, by final judgment limitations, responsibilities or decree, or in settlement of any suit or claim to which the Vendor agrees, may be assessed against, or incurred by, the Owner obligations 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 WFUHS without WFUHS’s express 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 Claimconsent, which compromise or settlement shall be made only with the written consent of the Owner (which may not be unreasonably withheld), unless it being understood that such compromise or settlement includes an unconditional release of decision shall take into account Chondrial’s overall marketing and commercialization plan to the extent communicated to Licensors.
10.2 During the Term, Chondrial will have the first right, but not the obligation, to prosecute at its own expense any claims against the Owner in which event such written consent infringements of the Owner shall not be required. If the Vendor fails to assume the defense Licensed Patents and, in furtherance of such Claim within fifteen (15) calendar days after receipt of prosecution, Chondrial may join WFUHS as a party plaintiff in any such suit, without expense to WFUHS. Similarly, during the Claim NoticeTerm, the Owner against which such Claim has been asserted Chondrial will (upon delivering notice to such effect to the Vendor) have the right to undertakedefend at its own expense any declaratory judgment action alleging invalidity or non-infringement of any of the Licensed Patents, and, in furtherance thereof, Chondrial may join WFUHS as a party in any such suit, without expense to WFUHS. The total cost of any such action commenced or defended solely by Chondrial will be borne by Chondrial. Any recovery of damages by Chondrial as a result of such action shall be applied first in satisfaction of any reasonable unreimbursed expenses and attorneys’ fees of Chondrial relating to the action. The balance remaining from any such recovery shall be distributed to Chondrial, provided that Chondrial will pay to WFUHS such royalties as would otherwise be applicable under Section 3.1 hereof for that portion of Chondrial’s recovery attributable to lost Net Sales.
10.3 If, within One Hundred Eighty (180) days after having been notified in writing of any alleged infringement, Chondrial has been unsuccessful in persuading the alleged infringer to desist, or has not brought, or otherwise is not diligently prosecuting, an infringement action, or if Chondrial notifies WFUHS at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, WFUHS will have the right, but not the obligation, to prosecute at its own expense any infringement of the Licensed Patents. Settlement, consent judgment or other voluntary final disposition of the suit may be entered into by WFUHS without the consent of Chondrial, provided, however that WFUHS will not settle or compromise any claim or action, including without limitation any declaratory judgment action alleging invalidity or noninfringement of any of the Licensed Patents, in a manner that imposes any monetary obligations on Chondrial, without Chondrial’s express written consent. The total cost of any such infringement action commenced or defended solely by WFUHS will be borne by WFUHS and WFUHS will keep any recovery or damages, for past infringement or otherwise, derived therefrom.
10.4 Without limiting the effect of any other provision hereof, in the event an action for infringement or any declaratory judgment action alleging invalidity or noninfringement of any of the Licensed Patents, is brought arising from the practice of the Licensed Patents, Chondrial (and/or its relevant Affiliate or Sublicensee) will have the right to defend such action and will be solely responsible for all attorneys’ fees, costs of defense, and liability arising out of that action, and Chondrial will keep any recovery and damages derived therefrom or from any counterclaims asserted therein.
10.5 In the event that a declaratory judgment action alleging invalidity or non-infringement of any of the Licensed Patents is brought, and Chondrial (and/or its relevant Affiliate or Sublicensee) declines to defend the same or otherwise is not diligently defending such action in the reasonable opinion of WFUHS counsel, 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 whereupon WFUHS will keep any recovery and damages derived therefrom or from any counterclaims asserted therein.
10.6 In any infringement suit brought or declaratory judgment action defended by either party to protect any of the Licensed Patents pursuant to this Agreement, the other party will, at the Vendor's cost request and expense of the party controlling such suit and at such party’s expense, cooperate in all respects and, to the defenseextent possible, compromise have its employees testify when requested and make available relevant records, papers, information, samples, specimens and the like.
10.7 Without limiting the foregoing provisions regarding infringement in Sections 10.1-10.6, in the event any party receives any notice during the Term relating to the development of or settlement of such Claim on behalf of and application for a “biosimilar” for which a Licensed Product is the account and risk “reference product” (within the meaning of the Vendor. In Biologics Act), it shall promptly notify the event the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor other parties and they shall be liable for any settlement of any action effected pursuant to and in accordance conduct good faith negotiations with this Agreement and for any final judgment (subject respect to any right and all responses thereto, including without limitation the sharing of appeal), and information regarding the Vendor agrees to indemnify and hold harmless Licensed Patents and/or the Owner from and against any Losses by reason of Licensed Products with the applicant for such settlement or judgmentbiosimilar.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Infringement. (a) The Vendor agrees 5.1 LICENSEE and OWNER shall each inform the other promptly in writing if either of them become aware of any alleged infringement of Patent Rights by a third party.
5.2 OWNER shall have the right, in his discretion, to elect to prosecute any claims arising from the infringement of the Patent Rights. In the event that it shall defend, indemnify and hold harmless, at its own expense, all suits and claims against the Owner OWNER chooses not to prosecute any claim for infringement within thirty (30) days of when he becomes aware of such infringement, or violation of if the OWNER fails to diligently pursue any patentinfringement action, trademarkLICENSEE shall have the right to pursue the infringement action. In such event, copyrightLICENSEE shall have the right, trade secret if OWNER is a legally indispensable party, to bring such suit or other intellectual property rights of any third party enforceable action in the United States name of OWNER. OWNER shall have the right to join any such suit 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 action brought by LICENSEE.
5.3 LICENSEE shall pay all sums, including without limitation, reasonable attorneys' fees and other costs incurred at Vendor's written request by OWNER or authorizationLICENSEE in an infringement action, whichincluding any action described in Section 5.6.
5.4 LICENSEE shall be entitled to retain all amounts received by either OWNER or LICENSEE from any infringement action if this Agreement has not been terminated.
5.5 LICENSEE shall not enter into any settlement, in defense of, by final consent judgment or decree, or in settlement other voluntary final disposition of any suit infringement action without the prior written consent of OWNER, which consent shall not be unreasonably withheld or claim delayed.
5.6 In the event that any person commences an action alleging the invalidity or non-infringement of any of the Patent Rights against LICENSEE, LICENSEE shall promptly notify OWNER, and the parties shall consult concerning the action 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 maytaken. OWNER, at its own costoption, participate in shall have the investigation, trial and defense right within thirty (30) days after commencement of such lawsuit or action to intervene 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 Noticeaction, the Owner against which such Claim has been asserted will (upon delivering notice to such effect to the Vendor) with counsel selected by OWNER. LICENSEE shall 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 join in the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defensesuit or action by OWNER. In such event, compromise or settlement. The Vendor shall be liable for OWNER will confer with LICENSEE prior to making any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such decision regarding settlement or judgmentother significant decisions regarding the action and no such decision will be made without LICENSEE's consent, which consent will not be unreasonably withheld or delayed.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: License Agreement (Astralis LTD)
Infringement. (a) The Vendor agrees that If either Party learns of an infringement or threatened infringement of the LGLS Patents or GLAXO Patents in the Territory in the Field it shall defend, indemnify promptly notify the other Party and hold harmless, at its own expense, shall provide the latter Party with all suits and claims against information reasonably available to 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 notifying Party evidencing such infringement or violationthreatened infringement. Thereafter, provided that the Owner Parties shall in good faith consult and cooperate in all reasonable respects with abating such infringement or threatened infringement. GS shall have the Vendor right, but not the obligation, to bring, defend and its attorneys maintain any appropriate suit or action for abatement of the infringement or threatened infringement of the LGLS or GLAXO Patents in the investigation, trial Territory and defense of such lawsuit or action and any appeal arising therefrom; provided, however, that in the Owner mayField, 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 insurersGS’s sole expense. If a claim for Losses (a "Claim") is GS requests LGLS to be made by join GS as a party entitled to indemnification hereunder against the Vendor, the party claiming in 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 suit or action, (ii) to employ LGLS shall execute all papers and engage attorneys of its own choice to handle and defend the sameperform such other acts as may be reasonably requested by GS, at the Vendor's cost, risk and GS’s expense, and (iii) to compromise or settle such Claim, which compromise or settlement . LGLS 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 undertakeparticipate in any such suit or action using independent counsel, at the Vendor's cost and its sole expense, the defense, compromise or settlement . Any amount recovered by GS as a result of such Claim on behalf suit or action shall first be applied to reimburse each of the Parties, pro rata, for any costs or expenses incurred in bringing, defending and maintaining any such action. The balance (the “Net Recovery”) shall be for the account sole benefit of GS. The Net Recovery shall be considered “Net Sales” with respect to the calendar quarter in which payment to GS was received, and risk royalties shall accordingly be paid on the amount of the Vendor. In Net Recovery exclusively at the event the Owner assumes the defense of the Claimrate(s) specified in Section 10.3, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlementbelow. The Vendor Net Recovery shall be liable considered “Net Sales” for any settlement purposes of any action effected pursuant to and calculating annual Net Sales in accordance with this Agreement Milestones 3 and 4 and in Section 10.2, below. If GS fails to initiate suit or action within 90 days after first notice of infringement or threatened infringement of the LGLS Patents or the GLAXO Patents, or if having initiated such suit or action it thereafter diligently fails to prosecute such suit or action, LGLS shall have the right, but not the obligation, to bring, defend and maintain any appropriate suit or action for abatement of the infringement or threatened infringement, at LGLS’s sole expense. If LGLS requests GS to join LGLS as a party in such suit or action, GS shall execute all papers and perform such other acts as may be reasonably requested by LGLS, at LGLS’s expense. GS shall have the right to participate in any such suit or action using independent counsel, at its sole expense. Any amount recovered by LGLS as a result of such suit or action shall first be applied to reimburse each of the Parties, pro rata, for any final judgment (subject costs or expenses incurred in bringing, defending and maintaining any such action. The balance shall be divided equally between the Parties. The amount of any recovery, net of the amounts necessary to any right reimburse the Parties as provided above shall be considered “Net Sales” for purposes of appeal)calculating annual Net Sales in accordance with Milestones 3 and 4 and in Section 10.2, and below. If such recovery is apportioned by the Vendor agrees court such that portions thereof are attributed to indemnify and hold harmless infringing activity in different calendar years, or if such apportionment of the Owner from and against any Losses by reason recovery can otherwise be readily ascertained, then such apportionment shall govern as to the calendar year(s) in which Net Sales shall be deemed to have occurred for purposes of such settlement Milestones. Otherwise, the amount of such recovery shall be apportioned equally over the number of calendar years in which infringement was found to have occurred (or judgmentin the event of a settlement, over the number of calendar years in which it was alleged to have occurred).
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: License and Option Agreement (Oscient Pharmaceuticals Corp)
Infringement. (a11.1 A party receiving knowledge of infringement of a Licensed Patent(s) The Vendor agrees that it shall defendnotify the other party promptly. LTI shall have the right, indemnify in its sole discretion, and hold harmless, at its own sole expense, all suits and claims against with counsel of its selection, to prosecute any patent infringement action or to defend any counterclaim of invalidity or action for declaratory judgment or interference. LTI shall have full control over the Owner for infringement or violation conduct 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 proceedings and any appeal arising therefrom; provided, however, that recoveries therefore shall inure to its sole benefit. In 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 LTI fails to assume the defense initiate and pursue such legal action within a period of such Claim within fifteen one hundred twenty (15120) calendar days after receipt of the Claim Noticenotice thereof, the Owner against which such Claim has been asserted will (upon delivering notice to such effect to the Vendor) Vical shall have the right to undertakeinitiate legal action and shall in that event bear all costs and all recoveries therefore shall inure to its benefit.
11.2 If one party institutes or carries on a legal proceeding to enforce a Licensed Patent(s) against an alleged infringer, at the Vendor's cost and expenseor to defend a Licensed Patent(s) in a declaratory judgment action, the defenseother party shall fully cooperate with, compromise and supply all assistance reasonably requested by the party instituting and carrying on or settlement of defending such Claim on behalf of and for the account and risk of the Vendorproceeding. *** Confidential Treatment Requested
11.3 In the event the Owner assumes the defense LTI is sued by a third party for patent infringement allegedly resulting from LTI’s manufacture, use or sale of Licensed Product(s), LTI shall promptly notify Vical. LTI shall, at its option, have full control of selection of counsel and conduct of the Claim, suit. Should LTI decide to defend it shall do so with the Owner will keep full cooperation of Vical. From a date not less than six months following the Vendor reasonably informed date of institution of the progress suit LTI may place applicable royalties in an escrow account. Should LTI be deemed not infringing a third party’s patent(s) by a court of any such defensecompetent jurisdiction, compromise or settlement. The Vendor then all amounts paid into said escrow account shall be liable paid to Vical. Should LTI decide not to defend it shall provide Vical with timely notice thereof. Should Vical defend LTI’s actions under this Agreement then LTI shall cooperate fully with Vical. Should LTI be deemed infringing a third party’s patent(s) and enjoined from exercising its rights under this Agreement by a court of competent jurisdiction, then LTI shall have the right to terminate this Agreement with respect to the infringing patent claims and retain any royalties placed in the escrow account.
11.4 In the event a party receiving knowledge of infringement of a Licensed Patent(s) promptly notifies the other party as required by Article 11.1 and thereafter neither party shall prosecute an infringer of a Licensed Patent(s) and the infringer’s activities are allowed to continue without challenge for any settlement a period of any action effected up to six (6) months from the date of first notice, or in the event LTI is permanently enjoined by a court of competent jurisdiction from exercising its rights granted hereunder pursuant to an infringement action brought by a third party, then LTI shall have the right to terminate this Agreement upon thirty (30) days written notice to Vical and in accordance with this Agreement and for any final judgment (subject to any right the terms of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentArticle 12.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: License Agreement (Vical Inc)
Infringement. (a) The Vendor 9.1 LICENSEE and PRINCETON shall promptly inform the other in writing of any alleged infringement of which it shall have notice by a third party of any patents within the Patent Rights and provide such other with any available evidence of infringement.
9.2 During the term of this Agreement, LICENSEE shall have the right, but shall not be obligated, to prosecute at its own expense any such infringements of the Patent Rights and, in furtherance of such right, PRINCETON hereby agrees that it LICENSEE may join PRINCETON as a party plaintiff in any such suit, without expense to PRINCETON. The total cost of any such infringement action commenced or defended solely by LICENSEE shall defendbe borne by LICENSEE, and LICENSEE shall keep any recovery or damages for past infringement derived therefrom. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of PRINCETON, which consent shall not unreasonably be withheld. LICENSEE shall indemnify PRINCETON against any order for costs that may be made against PRINCETON in such proceedings.
9.3 If within six (6) months after having been notified of any alleged infringement, LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and hold harmlessshall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE shall notify PRINCETON at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, PRINCETON shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Patent Rights, and PRINCETON may, for such purposes, join LICENSEE as party plaintiff.
9.4 In the 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 royalties otherwise thereafter due PRINCETON hereunder and apply the same toward reimbursement of its expenses, including reasonable attorneys' fees, in connection therewith. 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 PRINCETON for any royalties past due or withheld and applied pursuant to this Article IX. The balance remaining from any such recovery shall be divided equally between LICENSEE and PRINCETON.
9.5 In the event that a declaratory judgement action alleging invalidity or non-infringement of any of the Patent Rights shall be brought against LICENSEE, and LICENSEE is not diligently defending such action, PRINCETON, at its option, shall have the right, within ninety (90) days after commencement of such action, to intervene and take over the sole defense of the action at its own expense, all suits and claims against .
9.6 In any infringement suit as either party may institute to enforce 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 Patent Rights pursuant to this Contract (collectively, "Intellectual Property Rights"), covering, or alleged to coverAgreement, the Products or any component thereof. The Vendor agrees that it shall pay all sumsother party hereto shall, including without limitationat the request and expense of the party initiating such suit, 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 investigationand, 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 extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the party entitled to indemnification becomes aware like.
9.7 LICENSEE, during the exclusive period 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 sole 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 defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement the terms and conditions herein to sublicense any alleged infringer under the Patent Rights for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentfuture infringements.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: License Agreement (Intercardia Inc)
Infringement. (a) The Vendor agrees that 9.1 LICENSEE and PRINCETON shall promptly inform the other in writing of any alleged infringement of which it shall defendhave notice by a third party or any patents within the Patent Rights and provide such other with any available evidence of infringement.
9.2 During the term of this Agreement, indemnify and hold harmlessLICENSEE shall have the right, but shall not be obligated, to prosecute at its own expenseexpense any such infringements of the Patent Rights and, all suits and claims against the Owner for infringement or violation in furtherance of such rights, PRINCETON hereby agrees that LICENSEE may join PRINCETON as a party plaintiff in any such suit, without expense to PRINCETON. The total cost of any patentsuch infringement action commenced or defended solely by LICENSEE shall be borne by LICENSEE, trademarkand LICENSEE shall keep any recovery or damages for past infringement derived therefrom, copyrightexcept for that portion to be paid to PRINCETON pursuant to Article IV hereof. Princeton shall make the inventors available and cooperate in the litigation. No settlement, trade secret consent judgment or other intellectual property rights voluntary final disposition of the suit may be entered into without the consent of PRINCETON, which consent shall not unreasonably be withheld. LICENSEE shall indemnify PRINCETON against any order for costs that may be made against PRINCETON in such proceedings.
9.3 If within eighteen (18) months after having been notified of any third party enforceable alleged infringement, LICENSEE shall have been unsuccessful in persuading 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"), coveringalleged infringer to desist and shall not have brought and shall not be diligently prosecuting an infringement action, or if LICENSEE shall notify PRINCETON at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, PRINCETON shall have the right, but shall not be obligated, to coverprosecute at its own expense any infringement of the Patent Rights, and PRINCETON may, for such purposes, use the Products or any component thereof. The Vendor agrees name of LICENSEE as party plaintiff.
9.4 In the event that it LICENSEE shall pay all sumsundertake 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 PRINCETON hereunder and apply the same toward reimbursement of its expenses, including without limitation, reasonable attorneys' fees and other costs incurred at Vendor's written request or authorization, whichfees, in defense ofconnection therewith. Any recovery of damages by LICENSEE for any such suit shall be applied first in satisfaction with any unreimbursed expenses and legal fees of LICENSEE relating to the suit, by final judgment and next toward reimbursement of PRINCETON for any royalties past due or decree, or in settlement of withheld and applied pursuant to this Article IX.
9.5 In any infringement suit or claim that either party may institute to which enforce the Vendor agrees, may be assessed against, or incurred byPatent Rights pursuant to this Agreement, the Owner on account other party shall, at the request and expense of the party initiating such infringement or violationsuit, provided that the Owner shall cooperate in all reasonable respects with the Vendor and its attorneys in the investigationand, 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 extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the party entitled to indemnification becomes aware like.
9.6 LICENSEE, during the exclusive period 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 sole 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 defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement the terms and for conditions herein to sublicense any final judgment (subject to any right of appeal), and alleged infringer under the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentPatent Rights.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Infringement. (a) The Vendor agrees that it MWCC shall defend, indemnify and hold harmless, at its own expense, all suits and claims against the Owner for infringement or violation notify MW promptly of any patentinfringements, trademark, copyright, trade secret imitations 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 unauthorized use of Products under this Contract the Licensed Marks by any credit provider(s) (collectively, "Intellectual Property RightsInfringements")) of which MWCC becomes aware. MW shall take such steps as it deems reasonable in the circumstances to ▇▇▇▇▇ such Infringements. Except as provided below, coveringMW shall have the sole right, or alleged at its expense, to cover, the Products or bring 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 action on account of such infringement or violationany infringements, 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 MWCC shall cooperate with each MW as MW may request (and at MW's expense), in connection with any such action reasonably brought by MW. MW may settle infringements at its sole discretion (but shall use best efforts not to settle in a manner that conflicts with MWCC's rights hereunder, and may retain any and all resulting damages and/or other in any notifications to insurerscompensation paid by the infringer(s). If a claim for Losses MW does not undertake appropriate steps to ▇▇▇▇▇ an Infringement within ninety (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 (1590) calendar days after notice thereof from MWCC, MWCC may prosecute the service same, at its expense, provided that no settlement shall be made without the prior written approval of MW. MWCC shall advise MW periodically of the citation or summons)status of such action and promptly of any material developments. The Vendor MW reserves the right to participate at any time in such proceedings. In the event that any damage, settlement and/or compensation are paid in connection with any such action brought by MWCC, MWCC shall first retain an amount reimbursing its expenses, any remaining amount shall be entitleddivided equally between MW and MWCC.
(b) MW shall have the sole right, if it so electsat its expense, (i) to defend and settle any action that may be commenced against MW or MWCC alleging that use of the Licensed Marks infringe any rights of others. In such lawsuit or actionevent, (ii) MWCC shall, at the reasonable direction of MW, promptly discontinue its use of the Licensed Marks alleged to employ and engage attorneys infringe rights of others. If MW does not give notice to MWCC of its own choice intent to handle and defend or settle such action against MWCC or affecting MWCC's use of the Licensed Marks within ninety (90) calendar days after notice thereof from MWCC, MWCC may defend the same, at the Vendor's cost, risk and its expense, and (iii) to compromise or settle such Claim, which compromise or provided that no settlement shall be made only with without the prior written consent approval of MW. MWCC shall advise MW periodically of the Owner (which may not be unreasonably withheld), unless status of such compromise or settlement includes an unconditional release action and promptly of any claims against the Owner in which event such written consent of the Owner shall not be requiredmaterial developments. 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 MW reserves the right to undertake, participate at the Vendorany time in such proceedings. It is understood that nothing in this Section 5.16(6)(b) is intended to limit or otherwise modify MW'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 defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgment.
(b) The Vendor's indemnification obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the VendorSECTION 5.16(7)(a) hereof.
Appears in 1 contract
Sources: Account Purchase Agreement (Montgomery Ward Holding Corp)
Infringement. 11.1 In the event that there is infringement within the Field by a third party of any patent licensed to JJMI hereunder, JJMI shall notify SHP in writing to that effect, including with such written notice, evidence establishing a prima facia case of infringement by such third party. During the one hundred twenty (a120) The Vendor agrees that it day period after notice to SHP by JJMI, SHP will have the right, but not the obligation to bring suit against the alleged infringer. SHP shall defendbear the expenses of any suit brought by it, indemnify shall retain all damages or other monies awarded or received in settlement of such suit. JJMI will cooperate with SHP in any such suit and hold harmless, shall have the right to consult with SHP and be represented by its own counsel at its own expense. If, after the expiration of said one hundred twenty (120) days from the date of such notice, SHP has not brought suit against a third party infringer, then JJMI shall have the right after such one hundred twenty (120) day notice period, but not the obligation, to bring suit against such infringer and join SHP as a party plaintiff provided that JJMI shall bear all suits and claims against the Owner expenses of such suit. SHP will cooperate with JJMI in any suit for infringement or violation of any patent, trademark, copyright, trade secret or other intellectual property rights of any the Licensed Patent brought by JJMI against a 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 and 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, consult with JJMI and to participate in and be represented by independent counsel in such litigation at the Vendor's cost and its own expense, the defense, compromise or settlement . JJMI shall incur no liability to SHP as a consequence of such Claim on behalf litigation or any unfavorable decision resulting therefrom, including any decision holding SHP's patent(s) invalid or unenforceable. Damages awarded or received in settlement shall be paid to JJMI in satisfaction of all expenses of such suit; any remainder shall be shared fifty percent (50%) to JJMI and for the account and risk fifty percent (50%) to SHP.
11.2 SHP warrants that it is presently aware of no patents or patent applications owned by a third party which would present any issue of infringement by reason of the Vendormanufacture, use or sale of the Referenced ** Products. In the event JJMI is charged with such infringement by a third party, JJMI shall have the Owner assumes right to defend against such charge of infringement, and during the defense period in which such litigation is pending, JJMI shall have the right to apply Fifty Percent (50%) of the Claim, the Owner will keep the Vendor reasonably informed royalties due SHP on sales of the progress allegedly infringing Licensed Product against its litigation expenses. JJMI shall reimburse SHP for all royalties diverted to litigation expenses to the extent --------------- The "**" marks the location of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected information that has been omitted and filed separately with the Securities and Exchange Commission pursuant to and a request for confidential treatment. funds are recovered in accordance such litigation. If, as a result of judgment in the litigation or settlement with this Agreement and for any final judgment a third party without litigation, JJMI is required to pay royalties or other monies to such third party, JJMI may thereafter deduct from the amount of royalties due SHP on unit sales of the Licensed Product charged to infringe, an amount which is the lesser of all sums paid by JJMI to such third party, or Fifty Percent (subject 50%) of all royalty payments otherwise payable to any right of appeal), and SHP on the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason Net Sales of such settlement or judgmentLicensed Product. Notwithstanding anything else in this Article 11, in no event shall JJMI pay less than 50% of the royalties due SHP on sales.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: Development and License Agreement (Specialized Health Products International Inc)
Infringement. (a) The Vendor agrees that it If any of the patents under which OSIRIS is licensed or sublicensed hereunder is infringed by the sale by a THIRD PARTY of a THERAPEUTIC PRODUCT or DIAGNOSTIC PRODUCT, subject to the provisions of the BIOWHITTAKER AGREEMENT with respect to sublicensed patents, OSIRIS shall defend, indemnify have the first right and hold harmlessoption but not the obligation to bring an action for such infringement, at its own sole 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 such THIRD PARTY in the United States or in any other territory where Vendor has approved the deployment or use name 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 OSIRIS and/or in the investigation, trial and defense name of such lawsuit or action and any appeal arising therefrom; provided, however, that the Owner may, at its own cost, participate BIOWHITTAKER and/or in the investigationname of a licensor of BIOWHITTAKER, trial as the case may be, and defense of such lawsuit to join BIOWHITTAKER 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 its licensor as 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, plaintiff 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress OSIRIS shall promptly notify BIOWHITTAKER of any such defense, compromise or settlement. The Vendor infringement and shall be liable for any settlement keep BIOWHITTAKER informed as to the prosecution of any action effected pursuant for such infringement. No settlement, consent judgment or other voluntary final disposition of the suit which adversely affects a patent licensed or sublicensed to and in accordance with this Agreement and for any final judgment (subject to any right OSIRIS hereunder may be entered into without the consent of appeal)BIOWHITTAKER, and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentwhich consent shall not unreasonably be withheld.
(b) The Vendor's In the event that OSIRIS shall undertake enforcement under Section 8.1(a), any recovery of damages by OSIRIS for any such suit shall be applied first in satisfaction of any out of pocket expenses and legal fees of OSIRIS regarding such suit, and BIOWHITTAKER shall receive ten percent (10%) of the remaining amount.
8.2 In the event that OSIRIS elects not to pursue an action for infringement under Section 8.1, upon written notice to OSIRIS by BIOWHITTAKER, BIOWHITTAKER shall have the right and option, but not the obligation at its cost and expense to initiate infringement litigation and to retain any recovered damages.
(a) If any of the patents under this subsection which BIOWHITTAKER is licensed or sublicensed hereunder is infringed by the sale by a THIRD PARTY of a MSC PRODUCT in the BIOWHITTAKER FIELD, subject to the provisions of the OSIRIS AGREEMENTS with respect to sublicensed patents, BIOWHITTAKER shall have the right and option but not the obligation to bring an action for such infringement, at its sole expense, against such THIRD PARTY in the name of BIOWHITTAKER and/or in the name of OSIRIS and/or in the name of a licensor of OSIRIS, as the case may be, and to join OSIRIS or its licensor as a party plaintiff if required. BIOWHITTAKER shall promptly notify OSIRIS of any such infringement and shall keep OSIRIS informed as to the prosecution of any action for such infringement. No settlement, consent judgment or other voluntary final disposition of any suit that is brought which adversely affects a patent licensed or sublicensed to BIOWHITTAKER hereunder may be entered into without the consent of OSIRIS, which consent shall not extend to alleged infringements or violations that arise because the Products provided unreasonably be withheld.
(b) If, after permission, BIOWHITTAKER shall undertake enforcement under Section 8.3(a), any recovery of damages by the Vendor are used in combination with other products furnished by third parties and where BIOWHITTAKER for any such combination was suit shall be applied first in satisfaction of any out of pocket expenses and legal fees of BIOWHITTAKER regarding such suit, and OSIRIS shall receive ten percent (10%) of the remaining amount.
8.4 If, after permission is granted, BIOWHITTAKER elects not installedto pursue an action for infringement under Section 8.3, recommended or approved upon written notice to BIOWHITTAKER by OSIRIS, OSIRIS shall have the Vendorright and option, but not the obligation at its cost and expense to initiate infringement litigation and to retain any recovered damages.
8.5 In any infringement suit either PARTY may institute to enforce a patent pursuant to this Agreement, the other PARTY hereto shall, at the request of the PARTY initiating such suit, reasonably cooperate and, to the extent reasonably possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the
Appears in 1 contract
Sources: Marketing, Collaboration and License Agreement (Osiris Therapeutics, Inc.)
Infringement. (a) Each Party shall promptly notify in writing the other Party during the term of this Agreement of any: (i) known infringement or suspected infringement of any of the Patent Rights; or (ii) unauthorized use or misappropriation of the Licensed Technology 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. Within ninety (90) days after Migami becomes, or is made aware of any of the foregoing, Migami shall decide whether or not to initiate an infringement or other appropriate action and shall notify MKL of its decision in writing. The Vendor agrees failure of Migami to inform MKL of Migami'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 it Migami notifies MKL of its intent to initiate an infringement or other appropriate action within the 90-day period provided in Section (a) 7.2(a), provided such infringement is continuing, Migami shall defendinitiate such an infringement or other appropriate action within thirty (30) days of the end of such 90-day period. If such infringement is within the Territory, indemnify and hold harmlessMKL shall be entitled to join Migami as a party to such suit, but MKL shall be under no obligation to participate except to the extent that such participation is required as a result of being a named party to the suit or being involved in the commercialization of any Patent Rights and/or Licensed Technology at issue. If MKL chooses to participate, MKL shall have the right to be represented by its own counsel at its own expense. Migami shall not settle any such suit involving rights of MKL or make an admission of liability on behalf of MKL without obtaining the prior written consent of MKL, all suits and claims against which consent shall not be unreasonably withheld. In the Owner for infringement or violation event Migami initiates proceedings pursuant to this Section 7.2(c), Migami shall be entitled to one hundred percent (100%) of any patentand all amounts recovered in such suit, trademarkwhether through judgment, copyright, trade secret settlement 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 sumsotherwise, including without limitation, reasonable attorneys' fees any punitive damages that may be awarded, up to the amount of Migami's costs of suit and other costs incurred at Vendor's written request attorneys fees, Migami and MKL shall each be entitled to fifty percent (50%) of all amounts recovered in such suit, whether through judgment, settlement or authorizationotherwise, whichincluding without limitation, any punitive damages that may be awarded, in defense of, by final judgment or decreeexcess of Migami's costs of suit as long as such recovery stems from infringement within the Territory.
(c) In the event that Migami 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 settlement of any suit or claim to which the Vendor agrees, may be assessed againstSection 7.2(a), or incurred by, the Owner on account does not initiate such an infringement or other appropriate action within thirty (30) days of such infringement or violation90-day period as provided in Section 7.2(b), provided that MKL shall have 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 mayright, at its own costexpense, to initiate an infringement or other appropriate action, and shall be entitled to join Migami as a party to such suit, but Migami shall be under no obligation to participate except to the extent that such participation is required as a result of its being named a party to the suit or being the owner of any Patent Rights and/or Licensed Technology at issue. Notwithstanding the foregoing, in the investigation, trial event that Migami is engaged at the end of said 90-day period in negotiations for the settlement of the said patent infringement which has been the subject of notice from MKL to Migami and defense has advised MKL in writing 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 Vendornegotiations, the party claiming such indemnification shall give written notice (a "Claim Notice") above mentioned right and option of MKL 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 bring suit 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 exercised only with the written consent of the Owner (Migami which may will 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 Migami chooses to assume the defense of such Claim within fifteen (15) calendar days after receipt of the Claim Noticeparticipate in any suit initiated by MKL, the Owner against which such Claim has been asserted will (upon delivering notice to such effect to the Vendor) Migami shall have the right to undertake, be represented in any such suit by its own counsel at the Vendor's cost and its own expense, the defense, compromise or settlement . MKL shall not settle any such suit involving rights of such Claim Migami nor make any admission of liability on behalf of and for Migami without obtaining the account and risk prior written consent of the VendorMigami, which consent shall not be unreasonably withheld. In the event the Owner assumes the defense of the ClaimMKL initiates proceedings pursuant to Section 7.2(c), the Owner will keep the Vendor reasonably informed of the progress Migami and MKL shall be entitled to one hundred percent (100%) of any and all amounts recovered in such defensesuit, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal)whether through judgment, and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or otherwise, including without limitation, any punitive damages that may be awarded, up to the amount of their respective costs of suit and attorneys fees. In any such action, Migami and MKL shall each be entitled to fifty percent (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 their aggregate costs of suit and attorneys fees as long as such recovery stems from infringement within the Territory.
(bd) The VendorNothing herein contained shall be construed to require either party to expend money in litigation or in the enforcing of Patent Rights and/or Licensed Technology rights unless it so elects and in the event a party proceeds with litigation in the name of the other party in any cause in which such other party is not voluntarily a party, as evidence by written notice, such party shall and agrees to hold the other party harmless from any and all liabilities arising thereunder, including, but not limited to, attorney's obligation under this subsection shall not extend to alleged infringements or violations that arise because fees, court costs, and damages arising out of the Products provided by counterclaims, cross-claims and the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendorlike.
Appears in 1 contract
Sources: Sublicense Agreement (Migami, Inc.)
Infringement. (a) The Vendor agrees that it Company shall defendhave the first right to enforce any patent within PATENT RIGHTS against any infringement or alleged infringement thereof, indemnify and hold harmlessshall at all times keep JHU informed as to the status thereof. Before Company commences an action with respect to any infringement of such patents, Company shall give careful consideration to the views of JHU and to potential effects on the public interest in making its decision whether or not to ▇▇▇. Thereafter, Company may, at its own expense, all suits institute suit against any such infringer or alleged infringer and claims against control and defend such suit in a manner consistent with the Owner for infringement terms and provisions hereof and recover any damages, awards or violation 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, 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, patent within PATENT RIGHTS may be assessed against, or incurred by, entered into without 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 prior written consent of the Owner (JHU, which may consent shall not be unreasonably withheld). This right to ▇▇▇ for infringement shall not be used in an arbitrary or capricious manner. JHU shall reasonably cooperate in any such litigation at Company’s expense. Company may delegate its right to enforce the PATENT RIGHTS under this Section 4.3 to AFFILIATED COMPANIES or SUBLICENSEES, unless provided that such compromise AFFILIATED COMPANIES and SUBLICENSEES agree to comply with the applicable terms of this Section 4.3. If within [*] days following a request by JHU that Company take action to ▇▇▇▇▇ any commercially significant infringing activity, such infringing activity has not been abated and if Company has not brought suit against the infringer or settlement includes an unconditional release begun negotiations regarding the terms under which Company would grant a sublicense to the infringer, then JHU may, in its sole judgment and at its own expense, take steps to enforce any patent and control, settle, and 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. However, no settlement, consent judgment or other voluntary final disposition of the suit that concedes the invalidity or unenforceability of any claims against patent within PATENT RIGHTS may be entered into without the Owner in which event such prior written consent of the Owner Company, which consent 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentunreasonably withheld.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Infringement. 7.1 GENERAL will protect its interests in LICENSED PATENTS from infringement and prosecute infringement when, in its judgment, such action may be reasonably necessary, proper and justified. LICENSEE (aor its SUBLICENSEE) The Vendor agrees shall also have the right to bring and litigate in its own name (or jointly in the names of LICENSEE and the GENERAL, if required by law) such suits for infringement of LICENSED PATENTS as LICENSEE or its SUBLICENSEE sees fit in its discretion.
7.2 If GENERAL shall have supplied LICENSEE with written evidence demonstrating to LICENSEE's reasonable satisfaction prima facie infringement of a claim of a LICENSED PATENT by a third party, GENERAL may by notice request LICENSEE to take steps to protect the LICENSED PATENT. LICENSEE shall notify GENERAL within three (3) months of the receipt of such notice whether LICENSEE intends to prosecute the alleged infringement. If LICENSEE notifies GENERAL that it intends to so prosecute, LICENSEE shall, within three (3) months of its notice to GENERAL either (i) cause infringement to terminate or (ii) initiate legal proceedings against the infringer. In the event LICENSEE notifies GENERAL that LICENSEE does not intend to prosecute said infringement or fails to initiate legal proceedings within said three month period, GENERAL may, upon notice to LICENSEE, initiate legal proceedings against the infringer at GENERAL's expense and in LICENSEE's name if so required by law. No settlement, consent judgment or other voluntary final disposition of the suit which invalidates or restricts the claims of such PATENT RIGHTS may be entered into without the consent of GENERAL, which consent shall defendnot be unreasonably withheld. COMPANY shall indemnify GENERAL against any order for payment that may be made against GENERAL in such proceedings, indemnify so long as such order does not result from any malfeasance by GENERAL.
7.4 For the purpose of the proceedings referred to in this Article 7, the GENERAL and hold harmless, LICENSEE 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 counsel in such proceedings but 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, said 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 expenses to be made off-set against any damages received 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 the Owner assumes the defense of the Claim, the Owner will keep the Vendor reasonably informed of the progress of any such defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and bringing suit in accordance with this Agreement and for any final judgment (subject to any right of appeal), and the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such settlement or judgmentforegoing paragraph 7.3.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because 7.5 Confidential information omitted and filed separately with the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the VendorCommission.
Appears in 1 contract
Infringement. (a) The Vendor 7.1. Each party shall inform the other 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, TEPHA shall have the right, but shall not be obligated, to prosecute at its own expense all infringements of the PATENT RIGHTS in the FIELD OF USE and, in furtherance of such right, METABOLIX * CONFIDENTIAL TREATMENT REQUESTED hereby agrees that it TEPHA may join METABOLIX as a party plaintiff in any such suit, without expense to METABOLIX. The total cost of any such infringement action commenced solely by TEPHA shall defendbe borne by TEPHA. In the event that TEPHA shall have exercised its right to bring an action, indemnify TEPHA shall be responsible for defending against any counterclaims alleging invalidity or unenforceability of a PATENT RIGHT and hold harmlessfor prosecuting the action through to settlement or other final disposition. *.
7.3. If within six (6) months after having been notified of any alleged infringement, TEPHA 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 TEPHA shall notify METABOLIX at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events, only, METABOLIX shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the PATENTS RIGHTS in the FIELD of USE. In furtherance of such right, TEPHA hereby agrees that METABOLIX may include TEPHA as a party plaintiff in any such suit, without expense to TEPHA. The total cost of any such infringement action commenced or defended solely by METABOLIX shall be borne by METABOLIX, and METABOLIX shall be responsible for defending against any counterclaims alleging invalidity or unenforceability of a PATENT RIGHT.
7.4. Any recovery of damages by the prosecuting party for any such suit shall be applied first in satisfaction of any unreimbursed expenses and legal fees of such party relating to the suit, and next toward reimbursement of METABOLIX for any royalties past due or withheld and applied pursuant to Paragraph 7.2, if applicable. *.
7.5. In the event of the institution of any suit by a third party against METABOLIX, TEPHA or its sublicensees for patent infringment involving the PATENT RIGHTS in the FIELD OF USE, the party sued shall promptly notify the other party in writing. TEPHA shall have the right, but not the obligation, to defend such suit at its own expense. If TEPHA shall elect not to defend, TEPHA shall * CONFIDENTIAL TREATMENT REQUESTED promptly notify METABOLIX. METABOLIX shall have the right, but not the obligation, to defend such suit at its expense.
7.6. If TEPHA shall exercise its rights pursuant to Section 7.5 to defend the PATENT RIGHTS, *:
7.6.1. If the enforceability of all suits and material claims against in such PATENT RIGHT claiming the Owner for infringement LICENSED PRODUCT or violation of any patent, trademark, copyright, trade secret PROCESS is upheld by a court or other intellectual property rights of any third party enforceable legal or administrative tribunal from which no appeal is or can be taken, * or
7.6.2. If one or more claims in such PATENT RIGHT covering the United States LICENSED PRODUCT or PROCESS shall be held to be invalid or otherwise unenforceable by a court or other legal or administrative tribunal in any other territory where Vendor has approved country from which no appeal is or can be taken or the deployment scope thereof is modified and, as a result such PATENT RIGHT no longer offers substantial protection to a LICENSED PRODUCT or use of Products under PROCESS in such country, *.
7.7. In any suit as either party may institute to enforce or defend the PATENT RIGHTS pursuant to this Contract (collectively, "Intellectual Property Rights"), covering, or alleged to coverAgreement, the Products or any component thereof. The Vendor agrees that it shall pay all sumsother party hereto shall, including without limitationat the request and expense of the party initiating such suit, 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 and, to the Vendor extent possible, have its employees testify when requested and its attorneys make available relevant records, papers, information, samples, specimens and the like. The parties shall keep one another informed of the status of and of their respective activities regarding any litigation or settlement thereof concerning the PATENT RIGHTS in the investigation, trial and defense FIELD of such lawsuit USE or action and any appeal arising therefromLICENSED PRODUCTS or PROCESSES ; provided, however, that the Owner may, at its own cost, participate in the investigation, trial and defense no settlement or consent judgement or other voluntary final disposition of such lawsuit any suit defended 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 brought by a party entitled pursuant to indemnification hereunder against this Article 7 may be entered into without the Vendorconsent of the other party, the party claiming such indemnification shall give written notice (a "Claim Notice") consent not to be unreasonably withheld or delayed. As to the Vendor as soon as practicable after MIT PATENT RIGHTS, no settlement, consent judgement or other voluntary final disposition of the party entitled to indemnification becomes aware of any fact, condition or event which may give rise to Losses for which indemnification suit may be sought under entered into without the consent of MIT which consent shall not unreasonably be withheld. TEPHA shall indemnify MIT against any order for * CONFIDENTIAL TREATMENT REQUESTED costs that may be made against MIT in proceedings commenced and defended solely by TEPHA.
7.8. TEPHA, during the period of 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 sole 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 defense, compromise or settlement. The Vendor shall be liable for any settlement of any action effected pursuant to and in accordance with this Agreement the terms and conditions herein to sublicense any alleged infringer for any final judgment (subject to any right future use of appeal), and the Vendor agrees to indemnify and hold harmless PATENT RIGHTS in the Owner from and against any Losses by reason of such settlement or judgmentFIELD OF USE.
(b) The Vendor's obligation under this subsection shall not extend to alleged infringements or violations that arise because the Products provided by the Vendor are used in combination with other products furnished by third parties and where any such combination was not installed, recommended or approved by the Vendor.
Appears in 1 contract
Sources: License Agreement (Metabolix, Inc.)