Infringement. 8.1 Each party shall promptly give written notice to the other party of: (i) 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 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 have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE shall have the right to participate at its own expense in any action brought by Avalon. 8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Licensed Technology shall be divided between the LICENSEE and Avalon as mutually agreed.
Appears in 1 contract
Infringement. 8.1 Each party 5.1 LICENSEE and OWNER shall promptly give written notice to each inform the other party of: (i) promptly in writing if either of them become aware of any suspected alleged infringement of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment action Patent Rights by a third party alleging the invalidity, unenforceability, or noninfril). gement of the Licensed Technologyparty.
8.2 LICENSEE 5.2 OWNER shall have the first right (but not the obligation) right, in his discretion, to notify an entity or individual of using the Trade Secrets and initiate legal proceedings elect to ▇▇▇▇▇ prosecute any claims arising from the infringement of a Licensed Technology within LICENSEE'S Field of Usethe Patent Rights. Avalon agrees 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 In the event that OWNER chooses not to institute such an action to enforce the Licensed Technology against prosecute any claim for infringement within LICENSEE's Field of Use within ninety thirty (9030) days after receipt of written notice from Avalon when he becomes aware of Avalon's intention to bring suit for such infringement, Aval on shall have or if the right (but not the obligation) at its own expense OWNER fails to take those steps on behalf of itself and LICENSEEdiligently pursue any infringement action, provided that LICENSEE shall have the right to participate at its own expense pursue the infringement action. In such event, LICENSEE shall have the right, if OWNER is a legally indispensable party, to bring such suit or action in the name of OWNER. OWNER shall have the right to join any such suit or action brought by AvalonLICENSEE.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology received by 5.3 LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, pay all reasonable attorneys' fees and court costs. If Avalon leads proceedings other costs incurred by OWNER or LICENSEE in an infringement action, including any action described in Section 5.6.
5.4 LICENSEE shall be entitled to ▇▇▇▇▇ and remedy infringementretain 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, consent judgment or other voluntary final disposition of any monetary recovery from infringement action without the prior written consent of OWNER, which consent shall not be unreasonably withheld or delayed.
5.6 In the event that any person commences an action alleging the invalidity or non-infringement of Licensed Technology any of the Patent Rights against LICENSEE, LICENSEE shall promptly notify OWNER, and the parties shall consult concerning the action to be first applied to reimburse Avalon's unreimbursed expenses taken. OWNER, at its option, shall have the right within thirty (30) days after commencement of such proceedingsaction to intervene and assume the defense of the action, with counsel selected by OWNER. LICENSEE shall have the right to join in the defense of any such suit or action by OWNER. In such event, OWNER will confer with LICENSEE prior to making any decision regarding settlement or other significant decisions regarding the action and then no such decision will be made without LICENSEE's unreimbursed expenses of such proceedingsconsent, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Licensed Technology shall which consent will not be divided between the LICENSEE and Avalon as mutually agreedunreasonably withheld or delayed.
Appears in 1 contract
Sources: License Agreement (Astralis LTD)
Infringement. 8.1 Each 11.1 A party shall promptly give written notice to the other party of: (i) any suspected receiving knowledge of infringement of a Licensed Technology; (iiPatent(s) shall notify the threat of or filing of any declaratory judgment action by a third other party alleging the invalidity, unenforceability, or noninfril)promptly. gement of the Licensed Technology.
8.2 LICENSEE LTI shall have the first right (but not right, in its sole discretion, and at its sole expense, 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 obligation) to notify an entity or individual conduct of using the Trade Secrets and initiate legal proceedings to ▇▇▇▇▇ the infringement of a Licensed Technology within LICENSEE'S Field of Use. Avalon agrees to join as a party plaintiff in any such lawsuit initiated by LICENSEE, if requested proceedings and any recoveries therefore shall inure to do so by LICENSEE, with all costs, attorneys' fees, its sole benefit. In the event LTI fails to initiate and expenses pursue such legal action within a period 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 one hundred twenty (90120) days after receipt of written notice from Avalon of Avalon's intention to bring suit for such infringementthereof, Aval on shall have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE Vical shall have the right to participate initiate 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, or to defend a Licensed Patent(s) in a declaratory judgment action, the other party shall fully cooperate with, and supply all assistance reasonably requested by the party instituting and carrying on or defending such proceeding. *** Confidential Treatment Requested
11.3 In the event 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 own expense option, have full control of selection of counsel and conduct of the suit. Should LTI decide to defend it shall do so with the full cooperation of Vical. From a date not less than six months following the date of institution of the 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 competent jurisdiction, then all amounts paid into said escrow account shall be 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 a period of 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 Avalona third party, then LTI shall have the right to terminate this Agreement upon thirty (30) days written notice to Vical and in accordance with the terms of Article 12.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Licensed Technology shall be divided between the LICENSEE and Avalon as mutually agreed.
Appears in 1 contract
Sources: License Agreement (Vical Inc)
Infringement. 8.1 Each party 9.1 LICENSEE and PRINCETON shall promptly give written notice to inform the other party of: (i) in writing of any suspected alleged infringement of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment action which it shall have notice by a third party alleging of any patents within the invalidity, unenforceability, or noninfril). gement Patent Rights and provide such other with any available evidence of the Licensed Technologyinfringement.
8.2 9.2 During the term of this Agreement, LICENSEE shall have the first right (right, but shall not be obligated, to prosecute at its own expense any such infringements of the obligation) to notify an entity or individual Patent Rights and, in furtherance of using the Trade Secrets and initiate legal proceedings to ▇▇▇▇▇ the infringement of a Licensed Technology within LICENSEE'S Field of Use. Avalon such right, PRINCETON hereby agrees to that LICENSEE may join PRINCETON as a party plaintiff in any such lawsuit initiated suit, without expense to PRINCETON. 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 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 shall not have brought and shall not be diligently prosecuting an infringement action, or if requested LICENSEE shall notify PRINCETON at any time prior thereto of its intention not to do so 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 LICENSEElitigation, with all costsLICENSEE 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 expenses legal fees of Avalon 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 paid by 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. Should , and LICENSEE elect is not to institute diligently defending such an action to enforce action, PRINCETON, at its option, shall have the Licensed Technology against infringement within LICENSEE's Field of Use right, within ninety (90) days after receipt commencement of written notice from Avalon such action, to intervene and take over the sole defense of Avalon's intention to bring suit for such infringement, Aval on shall have the right (but not the obligation) action at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE shall have the right to participate at its own expense in any action brought by Avalonexpense.
8.3 If LICENSEE leads proceedings 9.6 In any infringement suit as either party may institute to ▇▇▇▇▇ enforce the Patent Rights pursuant to this Agreement, the other party hereto shall, at the request and remedy infringementexpense of the party initiating such suit, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shallcooperate 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 same pertains like.
9.7 LICENSEE, during the exclusive period of this Agreement, shall have the sole right in accordance with the terms and conditions herein to an infringement of sublicense any alleged infringer under the Licensed Technology shall be divided between the LICENSEE and Avalon as mutually agreedPatent Rights for future infringements.
Appears in 1 contract
Sources: License Agreement (Intercardia Inc)
Infringement. 8.1 7.1 Each party shall promptly give written notice to notify the other party of: (i) in writing of any suspected alleged infringement of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment action PATENT RIGHTS by a third party alleging the invalidity, unenforceability, or noninfril). gement and of the Licensed Technologyany available evidence thereof.
8.2 LICENSEE 7.2 During the term of this Agreement, BIOS shall have the first right (right, but shall not the obligation) be obligated, to notify an entity bring any legal action for infringement or individual for defending any counterclaim of using the Trade Secrets and initiate legal proceedings to ▇▇▇▇▇ the infringement invalidity or action of a Licensed Technology within LICENSEE'S Field third party for declaratory judgment of Usenon-infringement or interference relating to such PATENT RIGHTS. Avalon In furtherance of such right, VGI hereby agrees to join that BIOS may include VGI as a party plaintiff in any such lawsuit initiated by LICENSEEsuit, if requested 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 be entitled to do so by LICENSEEin its own right if legally permissible, with provided, however, that BIOS through counsel of its own selection, shall oversee such legal action and be provided the opportunity to approve all costs, attorneys' actions which are case dispositive. All fees, costs and expenses of Avalon to any such infringement action shall be paid borne by LICENSEEthe 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. Should LICENSEE elect not to institute The excess of such an action to enforce recoveries, damages and interest over VGI's out of pocket expenses in connection with the Licensed Technology against infringement within LICENSEEprosecution or defense of such actions shall be included in VGI's Field NET SALES under this Agreement for the benefit of Use within ninety (90) days after receipt of written notice from Avalon of Avalon's intention to bring suit for BIOS. VGI may settle any such infringement, Aval on shall have the right (but not the obligation) actions solely at its own expense to take those steps on behalf and through counsel of itself and LICENSEEits own selection; provided, provided however, that LICENSEE BIOS shall have the right be entitled in each instance to participate through counsel of its selection and at its own expense in any action brought by Avalonsuch settlement and to approve the terms of such settlement, such approval not to be unreasonably withheld.
8.3 If LICENSEE leads proceedings 7.3 In the event that BIOS is involved with the enforcement and/or defense of the PATENT RIGHTS by litigation, VGI may not withhold any payments otherwise deemed earned and due to ▇▇▇▇▇ and remedy infringementBIOS under Article 4 hereunder.
7.4 In any patent infringement suit that BIOS may institute to enforce the PATENT RIGHTS pursuant to this Agreement, any monetary recovery from VGI shall, at the infringement request of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedingsBIOS, including without limitation, cooperate in all reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shallrespects and, to the extent reasonably possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the same pertains to an infringement like during the term of the Licensed Technology shall be divided between the LICENSEE and Avalon as mutually agreedthis Agreement.
Appears in 1 contract
Sources: License Agreement (Genaissance Pharmaceuticals Inc)
Infringement. 8.1 7.1 Each party PARTY shall promptly give written notice to inform the other party of: (i) PARTY promptly in writing of any suspected alleged infringement of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment action PATENT RIGHTS by a third party alleging the invalidity, unenforceability, or noninfril). gement of the Licensed Technologyand any available evidence thereof.
8.2 7.2 During the term of this Agreement, LICENSEE shall have the first right (right, but shall not be obligated to prosecute at its own expense, all 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 obligation) 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 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 notify an entity or individual of using the Trade Secrets and initiate legal proceedings to ▇▇▇▇▇ the infringement payment of a Licensed Technology 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 LICENSEE'S Field three (3) months after having been notified of Use. Avalon agrees any alleged infringement, LICENSEE is unsuccessful in persuading the alleged infringer to join desist and has not brought or is not diligently pursuing an infringement action or if LICENSEE notifies CURF at any time prior thereto of its intention not to bring suit against any alleged infringer, then, and in those events only, CURF shall have the right, but shall not be obligated,to prosecute at its own expense all infringements or misappropriations of TECHNOLOGY and CURF may, for such purposes, include LICENSEE as a party plaintiff in any such lawsuit initiated suit, without expense to LICENSEE. The total cost of such infringement action commenced or defended solely by CURF shall be borne by CURF and CURF shall keep any recovery or damages for past infringement derived therefrom.
7.4 In the event that LICENSEE shall undertake the enforcement and/or defense of the TECHNOLOGY by litigation, 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, if requested to do so by LICENSEE, with all costs, attorneys' 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 expenses legal fees of Avalon LICENSEE relating to be paid by LICENSEEsuch 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. Should LICENSEE elect not 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 such an action to enforce the Licensed Technology against infringement within LICENSEE's Field PATENT RIGHTS pursuant to this Agreement, the other PARTY hereto shall, at the request and expense of Use within ninety (90) days after receipt of written notice from Avalon of Avalon's intention to bring suit for the PARTY initiating such infringementsuit, Aval on shall have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE shall have the right to participate at its own expense cooperate in any action brought by Avalon.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shallall respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens and the same pertains like.
7.6 LICENSEE, during the exclusive period of this Agreement, shall have the sole right in accordance with the terms and conditions herein to an infringement sublicense any alleged infringer for the FIELD OF USE for future use of the Licensed Technology PATENT RIGHTS. Any upfront fees as pm1 of such a sublicense shall be divided between the LICENSEE and Avalon as mutually agreedtreated pursuant to Article 4.
Appears in 1 contract
Infringement. 8.1 Each party 9.1 Licensee shall inform Northwestern promptly give written notice to the other party of: (i) in writing of any suspected alleged infringement of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment action Patent Rights by a third party alleging and of any available evidence thereof
9.2 During the invalidityterm of this Agreement, unenforceability, or noninfril). gement of the Licensed Technology.
8.2 LICENSEE Northwestern shall have the first right (right, but shall not be obligated, to prosecute at its own expense all infringements of the obligation) to notify an entity or individual Patent Rights and, in furtherance of using the Trade Secrets and initiate legal proceedings to ▇▇▇▇▇ the infringement of a Licensed Technology within LICENSEE'S Field of Use. Avalon such right, Licensee hereby agrees to join that Northwestern may include Licensee as a party plaintiff in such suit, without expense to Licensee. The total cost of any such lawsuit initiated infringement action commenced or defended solely by LICENSEENorthwestern 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, Northwestern 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 requested Northwestern shall notify Licensee at any time prior thereto of its intention not to do bring suit against any alleged infringer, then, and in those events only, Licensee shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Patent Rights, and Licensee may, for such purposes, use the name of Northwestern as party plaintiff; provided, however, that such right to bring such infringement action shall remain in effect only for so by LICENSEElong as the license ranted herein remains exclusive. No settlement, with all costsconsent judgment or other voluntary final disposition of the suit may be entered 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 damages for past infringement derived therefrom; provided, however, that such recovery, less expenses, including reasonable attorneys' fees, shall be treated as Net Sales for the purpose 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 option, shall have the right, within thirty (30) days after it receives notice of the commencement of such action, to intervene and expenses take over the sole defense of Avalon to be paid by LICENSEE. Should LICENSEE elect not to the action at its own expense.
9.5 In any infringement suit that either Party may institute such an action to enforce the Licensed Technology against infringement within LICENSEE's Field Patent Rights pursuant to this Agreement, the other party hereto shall, at the request and expense of Use within ninety (90) days after receipt of written notice from Avalon of Avalon's intention to bring suit for the Party initiating such infringementsuit, Aval on shall have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE shall have the right to participate at its own expense cooperate in any action brought by Avalon.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shallall respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the same pertains like.
9.6 Licensee, during the term of this Agreement, shall have the sole right in accordance with the terms and conditions herein to an infringement sublicense any alleged infringer for future use of the Licensed Technology Patent Rights. Any upfront fees as part of such a sublicense shall be divided shared equally between the LICENSEE Licensee and Avalon as mutually agreedNorthwestern; other royalties shall be treated pursuant to Paragraph 5.4.
Appears in 1 contract
Sources: Asset Purchase Agreement (Immtech International Inc)
Infringement. 8.1 Each party Licensee shall inform USM promptly give written notice to the other party of: (i) in writing of any suspected alleged infringement of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment action Patent Rights by a third party alleging the invalidity, unenforceability, or noninfril). gement and of the Licensed Technologyany available evidence thereof.
8.2 LICENSEE During the term of this Agreement, USM shall have the right, but shall not be obligated, to prosecute at its own expense 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 expenses, costs, and efforts expended by USM in pursuit of the 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 such shorter time prescribed by law, USM 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 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 prosecute at its own expense any infringement of the Patent Rights, 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 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 USM, which consent shall not be unreasonably withheld. Licensee shall indemnify USM from and against all costs, expenses, judgments, or other adverse results that arise during or that result from such proceedings or the actions associated therewith.
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 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 right (but not the obligation) to notify an entity or individual of using the Trade Secrets and initiate legal proceedings to ▇receives a ▇▇▇▇ for professional services or expenses for the infringement enforcement and/or defense of a Licensed Technology within LICENSEE'S Field the Patent Rights in litigation. Any recovery of Use. Avalon agrees to join as a party plaintiff in damages by Licensee for any such lawsuit initiated by LICENSEE, if requested suit shall be applied first in satisfaction of any unreimbursed expenses and legal fees of Licensee relating to do so by LICENSEE, with all costs, attorneys' feesthe suit, and expenses of Avalon next toward reimbursement to be paid by LICENSEE. Should LICENSEE elect not USM for any royalties past due or withheld and applied pursuant 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 have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE shall have the right to participate at its own expense in any action brought by Avalon.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Licensed Technology shall be divided between the LICENSEE and Avalon as mutually agreed.this Section
Appears in 1 contract
Sources: Patent License Agreement
Infringement. 8.1 Each party shall promptly give written notice to the other party of: (i) 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 Company shall have the first right (but to enforce any patent within PATENT RIGHTS against any infringement or alleged infringement thereof, and shall 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, institute suit against any such infringer or alleged infringer and control and defend such suit in a manner consistent with the obligation) terms and provisions hereof and recover any damages, awards or settlements resulting therefrom, subject to notify Paragraph 4.5. If required by law, JHU shall permit action under this Section to be brought in its name, including being joined as party-plaintiff. However, no settlement, consent judgment or other voluntary final disposition of the suit that concedes the invalidity or unenforceability of any patent within PATENT RIGHTS may be entered into without the prior written consent of JHU, which consent shall not be unreasonably withheld. This right to ▇▇▇ for infringement shall not be used in an entity arbitrary or individual 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, provided that such AFFILIATED COMPANIES and SUBLICENSEES agree to comply with the applicable terms of using the Trade Secrets and initiate legal proceedings 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 infringement of infringer or begun negotiations regarding the terms under which Company would grant a Licensed Technology within LICENSEE'S Field of Use. Avalon agrees sublicense to join as a party plaintiff the infringer, then JHU may, in any such lawsuit initiated by LICENSEE, if requested to do so by LICENSEE, with all costs, attorneys' fees, its sole judgment 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 have the right (but not the obligation) at its own expense expense, take steps to take those steps on behalf of itself enforce any patent and LICENSEEcontrol, provided that LICENSEE shall have settle, and defend such suit in a manner consistent with the right to participate at terms and provisions hereof, and recover, for its own expense in any action brought by Avalon.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringementaccount, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedingsdamages, including without limitationawards or settlements resulting therefrom. However, reasonable attorneys' fees and court costs. If Avalon leads proceedings to ▇▇▇▇▇ and remedy infringementno settlement, any monetary recovery from the infringement of Licensed Technology shall be first applied to reimburse Avalon's unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to the extent the same pertains to an infringement consent judgment or other voluntary final disposition of the Licensed Technology suit that concedes the invalidity or unenforceability of any patent within PATENT RIGHTS may be entered into without the prior written consent of Company, which consent shall not be divided between the LICENSEE and Avalon as mutually agreedunreasonably withheld.
Appears in 1 contract
Infringement. 8.1 Each party shall promptly give written 7.1. In the event that LICENSEE (including any Affiliate or sublicensee) or UFRFI receives a notice to the other party of: (i) any suspected infringement of a Licensed Technology; (ii) the threat of claim, threat, or filing of any declaratory judgment action suit by a third party alleging alleging, that the invaliditymanufacture, unenforceability, use 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 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 have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE shall have the right to participate at its own expense in any action brought by Avalon.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to the extent the same pertains to an infringement 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 divided between charged to LICENSEE. During the prosection of such legal action, LICENSEE shall be permitted to deduct the reasonable fees and Avalon 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 mutually agreeda 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 and resolution of any such claim, threat or suit, However, LICENSEE shall compensate UFRFI and University of Florida personnel for their actual out-of-pocket expenses (e.g., travel).
Appears in 1 contract
Sources: License Agreement (Diversa Corp)
Infringement. 8.1 Each party (a) MWCC shall notify MW promptly give written notice to the other party of: (i) any suspected infringement of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment action by a third party alleging the invalidityinfringements, unenforceability, imitations or noninfril). gement unauthorized use of the Licensed Technology.
8.2 LICENSEE Marks by any credit provider(s) (collectively, "Infringements") of which MWCC becomes aware. MW shall have take such steps as it deems reasonable in the first right (but not the obligation) to notify an entity or individual of using the Trade Secrets and initiate legal proceedings circumstances to ▇▇▇▇▇ the infringement of a Licensed Technology within LICENSEE'S Field of Usesuch Infringements. Avalon agrees to join Except as a party plaintiff in any such lawsuit initiated by LICENSEEprovided below, 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 MW shall have the right sole right, at its expense, to bring any action on account of any infringements, and MWCC shall cooperate with 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 compensation paid by the obligation) at its own expense to take those infringer(s). If MW does not undertake appropriate steps on behalf of itself and LICENSEE, provided that LICENSEE shall have the right to participate at its own expense in any action brought by Avalon.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ an Infringement within ninety (90) calendar days after notice thereof from MWCC, MWCC may prosecute the 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 status of such action and remedy infringementpromptly of any material developments. 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 monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. If Avalon leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology remaining amount shall be first applied to reimburse Avalon's unreimbursed expenses of such proceedingsdivided equally between MW and MWCC.
(b) MW shall have the sole right, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shallat its expense, to the extent the same pertains to an infringement defend and settle any action that may be commenced against MW or MWCC alleging that use of the Licensed Technology Marks infringe any rights of others. In such event, MWCC shall, at the reasonable direction of MW, promptly discontinue its use of the Licensed Marks alleged to infringe rights of others. If MW does not give notice to MWCC of its intent to 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 its expense, provided that no settlement shall be divided between made without the LICENSEE prior written approval of MW. MWCC shall advise MW periodically of the status of such action and Avalon as mutually agreedpromptly of any material developments. MW reserves the right to participate at any 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 indemnification obligation under SECTION 5.16(7)(a) hereof.
Appears in 1 contract
Sources: Account Purchase Agreement (Montgomery Ward Holding Corp)
Infringement. 8.1 Each party 9.1 LICENSEE and PRINCETON shall promptly give written notice to inform the other party of: (i) in writing of any suspected alleged infringement of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment action which it shall have notice by a third party alleging or any patents within the invalidity, unenforceability, or noninfril). gement Patent Rights and provide such other with any available evidence of the Licensed Technologyinfringement.
8.2 9.2 During the term of this Agreement, LICENSEE shall have the first right (right, but shall not be obligated, to prosecute at its own expense any such infringements of the obligation) to notify an entity or individual Patent Rights and, in furtherance of using the Trade Secrets and initiate legal proceedings to ▇▇▇▇▇ the infringement of a Licensed Technology within LICENSEE'S Field of Use. Avalon such rights, PRINCETON hereby agrees to that LICENSEE may join PRINCETON as a party plaintiff in any such lawsuit initiated suit, without expense to PRINCETON. 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 infringement derived therefrom, except 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, 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 eighteen (18) 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 an infringement action, or if requested LICENSEE shall notify PRINCETON at any time prior thereto of its intention not to do so 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, use the name of LICENSEE as party plaintiff.
9.4 In the event that LICENSEE shall undertake the enforcement and/or defense of the Patent Rights by LICENSEElitigation, with all costsLICENSEE 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 with any unreimbursed expenses and expenses legal fees of Avalon LICENSEE relating to be paid by LICENSEE. Should LICENSEE elect not the suit, and next toward reimbursement of PRINCETON for any royalties past due or withheld and applied pursuant to this Article IX.
9.5 In any infringement suit that either party may institute such an action to enforce the Licensed Technology against infringement within LICENSEE's Field Patent Rights pursuant to this Agreement, the other party shall, at the request and expense of Use within ninety (90) days after receipt of written notice from Avalon of Avalon's intention to bring suit for the party initiating such infringementsuit, Aval on shall have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE shall have the right to participate at its own expense cooperate in any action brought by Avalon.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shallall respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the same pertains like.
9.6 LICENSEE, during the exclusive period of this Agreement, shall have the sole right in accordance with the terms and conditions herein to an infringement of sublicense any alleged infringer under the Licensed Technology shall be divided between the LICENSEE and Avalon as mutually agreedPatent Rights.
Appears in 1 contract
Infringement. 8.1 Each party (a) The Vendor agrees that it shall promptly give written notice to the other party of: (i) any suspected infringement of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment action by a third party alleging the invaliditydefend, unenforceabilityindemnify ------------ and hold harmless, 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 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 have the right (but not the obligation) at its own expense to take those steps on behalf expense, all suits and claims against the Owner for infringement or violation of itself and LICENSEEany patent, provided that LICENSEE shall have trademark, copyright, trade secret or other intellectual property rights of any third party enforceable in the right to participate at its own expense United States or in any action brought by Avalon.
8.3 If LICENSEE leads proceedings other territory where Vendor has approved the deployment or use of Products under this Contract (collectively, "Intellectual Property --------------------- Rights"), covering, or alleged to ▇▇▇▇▇ and remedy infringementcover, the Products or any monetary recovery from the infringement of Licensed Technology received by LICENSEE component thereof. ------ The Vendor agrees that it shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedingspay all sums, including without limitation, reasonable attorneys' fees and court costsother 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 Avalon leads proceedings 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 remedy infringementthen 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, any monetary recovery from the infringement of Licensed Technology written notice thereof shall be first applied given to reimburse Avalonthe 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 unreimbursed expenses 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 proceedingsClaim 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 then LICENSEE's unreimbursed expenses the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such proceedingssettlement 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, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to recommended or approved by the extent the same pertains to an infringement of the Licensed Technology shall be divided between the LICENSEE and Avalon as mutually agreedVendor.
Appears in 1 contract
Sources: System Equipment Purchase Agreement (Leap Wireless International Inc)
Infringement. 8.1 Each party 11.2.1 Par and Advancis shall inform each other promptly give written notice 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 "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 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 of: (i) any party, as applicable, as soon as practicable upon receipt of the Damages.
11.2.4 In the event that 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 a Licensed Technology; (ii) 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 threat of alleged or filing of any declaratory judgment action by a third party alleging suspected infringer in the invalidity, unenforceability, or noninfril). gement Territory exceeds [***] of the Licensed Technology.
8.2 LICENSEE sales in the Territory of the Product by Par during the most recently completed [***] and [***]. However, Par shall not prosecute such infringement if Advancis [***]. Such negotiation shall be conducted between the Advancis and Par designees of the Executive Committee, and if 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 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 Uselike. Avalon agrees to Par may join Advancis as a party plaintiff in any such lawsuit initiated by LICENSEE, if requested to do so by LICENSEE, with all costs, attorneys' feesparty, and expenses Advancis shall execute all papers and perform such acts as may be reasonably required, at the expense of Avalon to be paid 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 LICENSEE. Should LICENSEE elect judgment, settlement compromise or otherwise Par shall 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 have the right (but 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 the obligation) at its own expense agree to take those steps on behalf institute suit against a Product Infringement pursuant to Section 11.2.3 within [***] of itself and LICENSEEbeing notified of such alleged or suspected infringement, provided that LICENSEE then Advancis shall have the right to participate 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 expense. In the event that Advancis does not so elect to take over the sole defense of the action at its own expense, Par shall be free to proceed and solely control such defense. To the extent that any action brought by Avalon.
8.3 If LICENSEE leads proceedings 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 remedy infringement, any monetary recovery from the infringement of Licensed Technology shall contribute such share as promptly as practicable. Any Damages received by LICENSEE Advancis and/or Par as a result of such action, whether through judgment or settlement, shall first be applied used to reimburse LICENSEEeach Party for its expenses associated with such infringement suit not otherwise reimbursed 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.
11.2.7 In the event that a third party institutes any suit against Par and/or Advancis for patent infringement involving the Products, the Party sued shall promptly notify the other Party in writing. Advancis shall assume the defense of such 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 right to select separate counsel to participate in such legal defenses on Par's unreimbursed behalf. The Parties shall share the cost and expense of such defense equally. Each Party shall, at the other's request, provide to it reasonable assistance and cooperation with respect to any such suit. To the 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 suit not otherwise reimbursed 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.
11.2.8 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 so that each Party can determine whether valid rights of a third party are likely to be 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 is necessary to avoid infringement of patents of the third party, the Executive Committee shall: 1) determine whether or not to seek such a license, 2) appoint a negotiator to negotiate the terms of such a license, 3) determine whether or not to enter into such a license as negotiated by the negotiator, and 4) determine how the expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costsa license shall be borne by the Parties. If Avalon leads proceedings the Executive Committee cannot agree with regard to ▇▇▇▇▇ and remedy infringementany responsibility set forth in the preceding sentence, any monetary recovery from the infringement of Licensed Technology such issue shall be first applied to reimburse Avalon's unreimbursed expenses of such proceedingsdetermined by arbitration in accordance with 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 then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costsAS AMENDED. Any remainder shall, to the extent the same pertains to an infringement of the Licensed Technology shall be divided between the LICENSEE and Avalon as mutually agreed.31 --------------------------------------------------------------------------------
Appears in 1 contract
Sources: Development and Commercialization Agreement (Par Pharmaceutical Companies, Inc.)
Infringement. 8.1 Each party 7.1 The parties shall promptly give written notice to the inform each other party of: (i) promptly, in writing, of any suspected alleged infringement of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment action Patent Rights by a third party alleging the invalidityparty, unenforceability, or noninfril). gement and of the Licensed Technologyany available evidence thereof.
8.2 7.2 During the term of this Agreement, LICENSEE shall have the first right (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 obligation) to notify an entity or individual Patent Rights and, in furtherance of using the Trade Secrets and initiate legal proceedings to ▇▇▇▇▇ the infringement of a Licensed Technology within LICENSEE'S Field of Use. Avalon such right, RESEARCH FOUNDATION hereby agrees to that LICENSEE may join RESEARCH FOUNDATION as a party plaintiff in any such lawsuit initiated suit, without expense to RESEARCH FOUNDATION. The total cost of any such infringement action except as provided in paragraph 7.4 hereof, commenced or defended solely by LICENSEELICENSEE 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, LICENSEE 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 requested to do so by LICENSEE, with all costs, attorneys' fees, and expenses LICENSEE shall notify RESEARCH FOUNDATION at any time prior thereto of Avalon to be paid by LICENSEE. Should LICENSEE elect its intention 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 infringementagainst any alleged infringer, Aval on then, and in those events only, RESEARCH FOUNDATION shall have the right (right, but shall not the obligation) be obligated, to prosecute at its own expense to take those steps on behalf any infringement of itself the Patent Rights, and LICENSEERESEARCH FOUNDATION may, provided 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 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 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 right, within thirty (30) days after commencement of such action, to participate intervene and take over the sole defense of the action at its own expense except as provided in any action brought by Avalonparagraph 7.4.
8.3 If LICENSEE leads proceedings 7.6 In any infringement suit as either party may institute to ▇▇▇▇▇ enforce the Patent Rights pursuant to this Agreement, the other party hereto shall, at the request and remedy infringementexpense of the party initiating such suit, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shallcooperate 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 same pertains like.
7.7 RESEARCH FOUNDATION warrants and represents that it has the lawful right to an infringement grant the license provided in this agreement and that it has not granted rights or licenses in derogation of this Agreement. RESEARCH FOUNDATION agrees that during the Licensed Technology term of this Agreement, or any license granted hereunder, RESEARCH FOUNDATION shall be divided between not enter into any other agreements that conflict with the LICENSEE rights or obligations provided hereunder, including any rights and Avalon as mutually agreedobligations provided hereunder, including any rights and obligations that survive termination of this Agreement.
Appears in 1 contract
Infringement. 8.1 Each party 9.1 Licensee shall inform Northwestern promptly give written notice to the other party of: (i) in writing of any suspected alleged infringement of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment action Patent Rights by a third party alleging the invalidity, unenforceability, or noninfril). gement and of the Licensed Technologyany available evidence thereof.
8.2 LICENSEE 9.2 During the term of this Agreement, Northwestern shall have the first right (right, but shall not be obligated, to prosecute at its own expense all infringements of the obligation) to notify an entity or individual Patent Rights and, in furtherance of using the Trade Secrets and initiate legal proceedings to ▇▇▇▇▇ the infringement of a Licensed Technology within LICENSEE'S Field of Use. Avalon such right, Licensee hereby agrees to join that Northwestern may include Licensee as a party plaintiff in such suit, without expense to Licensee. The total cost of any such lawsuit initiated infringement action commenced or defended solely by LICENSEENorthwestern 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, Northwestern 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 requested Northwestern shall notify Licensee at any time prior thereto of its intention not to do bring suit against any alleged infringer, then, and in those events only, Licensee shall have the right, but shall not be obligated, to prosecute at its own expense any infringement of the Patent Rights, and Licensee may, for such purposes, use the name of Northwestern as party plaintiff; provided, however, that such right to bring such infringement action shall remain in effect only for so by LICENSEElong as the license granted herein remains exclusive. No settlement, with all costsconsent judgment or other voluntary final disposition of the suit may be entered 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 damages for past infringement derived therefrom; provided, however, that such recovery, less expenses, including reasonable attorneys' fees, shall be treated as Net Sales for the purpose 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 option, shall have the right, within thirty (30) days after it receives notice of the commencement of such action, to intervene and expenses take over the sole defense of Avalon to be paid by LICENSEE. Should LICENSEE elect not to the action at its own expense.
9.5 In any infringement suit that either Party may institute such an action to enforce the Licensed Technology against infringement within LICENSEE's Field Patent Rights pursuant to this Agreement, the other party hereto shall, at the request and expense of Use within ninety (90) days after receipt of written notice from Avalon of Avalon's intention to bring suit for the Party initiating such infringementsuit, Aval on shall have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE shall have the right to participate at its own expense cooperate in any action brought by Avalon.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shallall respects and, to the extent possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the same pertains like.
9.6 Licensee, during the term of this Agreement, shall have the sole right in accordance with the terms and conditions herein to an infringement sublicense any alleged infringer for future use of the Licensed Technology Patent Rights. Any upfront fees as part of such a sublicense shall be divided shared equally between the LICENSEE Licensee and Avalon as mutually agreedNorthwestern; other royalties shall be treated pursuant to Paragraph 5.4.
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Infringement. 8.1 10.1 Each party shall will promptly give written notice to inform the other in writing of any alleged infringement by a third party of: (i) or other unauthorized party of any suspected infringement of a the patents comprising the Licensed Technology; (ii) the threat Patents, and provide such other party with any available evidence of infringement. Chondrial will not settle or filing of compromise any claim or action, including, without limitation, any declaratory judgment action by a third party alleging the invalidity, unenforceability, invalidity or noninfril). gement noninfringement of any of the Licensed TechnologyPatents, in a manner that imposes any restrictions, limitations, responsibilities or obligations on WFUHS without WFUHS’s express written consent, which shall not be unreasonably withheld, it being understood that such decision shall take into account Chondrial’s overall marketing and commercialization plan to the extent communicated to Licensors.
8.2 LICENSEE shall 10.2 During the Term, Chondrial will have the first right (right, but not the obligation) , to notify an entity or individual prosecute at its own expense any such infringements of using the Trade Secrets and initiate legal proceedings to ▇▇▇▇▇ the infringement Licensed Patents and, in furtherance of a Licensed Technology within LICENSEE'S Field of Use. Avalon agrees to such prosecution, Chondrial may join WFUHS as a party plaintiff in any such lawsuit initiated by LICENSEEsuit, if requested without expense to do so by LICENSEEWFUHS. Similarly, with all costsduring the Term, attorneys' fees, and expenses Chondrial will have the right to defend at its own expense any declaratory judgment action alleging invalidity or non-infringement of Avalon to be paid by LICENSEE. Should LICENSEE elect not to institute such an action to enforce any of the Licensed Technology against infringement 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 LICENSEE's Field of Use within ninety One Hundred Eighty (90180) days after receipt having been notified in writing of written notice from Avalon 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 Avalon's its intention not to bring suit for such infringementagainst any alleged infringer, Aval on shall then, and in those events only, WFUHS will have the right (right, but not the obligation) , to prosecute at its own expense to take those steps 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 behalf Chondrial, without Chondrial’s express written consent. The total cost of itself any such infringement action commenced or defended solely by WFUHS will be borne by WFUHS and LICENSEEWFUHS will keep any recovery or damages, provided that LICENSEE shall 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 participate 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 in and whereupon WFUHS will keep any action brought by Avalonrecovery and damages derived therefrom or from any counterclaims asserted therein.
8.3 If LICENSEE leads proceedings 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 request and remedy infringementexpense of the party controlling such suit and at such party’s expense, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shallcooperate 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 same pertains 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 an infringement the development of or application for a “biosimilar” for which a Licensed Product is the “reference product” (within the meaning of the Biologics Act), it shall promptly notify the other parties and they shall conduct good faith negotiations with respect to any and all responses thereto, including without limitation the sharing of information regarding the Licensed Technology shall be divided between Patents and/or the LICENSEE and Avalon as mutually agreedLicensed Products with the applicant for such biosimilar.
Appears in 1 contract
Infringement. 8.1 7.1 Each party Party shall promptly give written notice to inform the other party of: (i) Party promptly in writing of any suspected alleged infringement of a the Patent Rights or Licensed Technology; (ii) the threat of or filing of any declaratory judgment action Copyrights by a third party alleging the invalidityparty, unenforceabilityof which such Party shall have knowledge, or noninfril). gement and of the Licensed Technologyany available evidence thereof.
8.2 LICENSEE 7.2 During the term of this Agreement, CSHL shall have the first right (right, but shall not be obligated, to prosecute at its own expense any infringements of the obligation) to notify an entity or individual Patent Rights and, in furtherance of using the Trade Secrets and initiate legal proceedings to ▇▇▇▇▇ the infringement of a Licensed Technology within LICENSEE'S Field of Use. Avalon such rights, Licensee hereby agrees to that CSHL may join Licensee as a party plaintiff in any such lawsuit initiated suit, without expense to Licensee. CSHL shall hold harmless and indemnify Licensee from and against any order for costs arising without fault of Licensee that may be made against CSHL or Licensee in such proceedings. The total cost of any infringement action commenced or defended solely by LICENSEE, if requested CSHL shall be borne by CSHL. Any recovery or damages for past infringement derived from such action shall first be used to do so reimburse CSHL for all legal expenses connected with such action. Any recovery or damages still remaining shall be applied toward (i) reimbursement of CSHL for the amount of royalties not received by LICENSEE, with all costs, attorneys' feesCSHL as a result of such infringement, and expenses (ii) compensation of Avalon Licensee for its lost profits or a reasonable royalty on the sales of the infringer, whichever measure of damages the court shall have applied; provided, however, that if such remaining amount of recovery or damages is insufficient to compensate CSHL fully for such royalties and to compensate Licensee fully for such lost profits or reasonable royalty, then such amount of recovery or damages still remaining shall be paid apportioned pro rata between CSHL and Licensee in proportion to (a) the amount of royalties not received by LICENSEECSHL as a result of such infringement, as compared with (b) Licensee's lost profits or a reasonable royalty on the sales of the infringer, whichever measure of damages the court shall have applied. Should LICENSEE elect Any recovery or damages still remaining after the above-mentioned applications shall be divided as follows: 50% to CSHL and the remaining 50% to Licensee.
7.3 If within six (6) months after having been notified of any alleged infringement CSHL shall have been unsuccessful in causing the alleged infringer to desist or shall not to institute such have brought and shall not be diligently prosecuting an action to enforce the Licensed Technology against infringement within LICENSEE's Field action, or if CSHL shall notify Licensee at any time prior thereto of Use within ninety (90) days after receipt of written notice from Avalon of Avalon's its intention not to bring suit for such infringementagainst any alleged infringer, Aval on then, in those events only, Licensee shall have the right (right, but shall not the obligation) be obligated, to prosecute at its own expense to take those steps on behalf any such infringement of itself and LICENSEEthe Patent Rights and, provided in furtherance of such rights, CSHL hereby agrees that LICENSEE shall have the right to participate at its own expense Licensee may join CSHL as a party plaintiff in any such suit, without expense to CSHL. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of CSHL, which consent shall not unreasonably be withheld. Licensee shall hold harmless and indemnify CSHL from and against any order for costs arising without fault of CSHL that may be made against Licensee or CSHL in such proceedings. The total cost of any infringement action brought commenced or defended by Avalon.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary Licensee shall be borne by Licensee. Any recovery or damages for past infringement derived from the infringement of Licensed Technology received by LICENSEE such action shall first be applied used to reimburse LICENSEE's unreimbursed Licensee for all legal expenses connected with such action. Any recovery or damages still remaining shall be applied toward (i) reimbursement of CSHL for the amount of royalties not received by CSHL as a result of such proceedings infringement, and (ii) compensation of Licensee for its lost profits or a reasonable royalty on the sales of the infringer, whichever measure of damages the court shall have applied; provided, however, that if such remaining amount of recovery or damages is insufficient to compensate CSHL fully for such royalties and to compensate Licensee fully for such lost profits or reasonable royalty, then Avalon's unreimbursed expenses such amount of recovery or damages still remaining shall be apportioned pro rata between CSHL and Licensee in proportion to (a) the amount of royalties not received by CSHL as a result of such proceedings, including without limitation, reasonable attorneys' fees and court costs. If Avalon leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from as compared with (b) Licensee's lost profits or a reasonable royalty on the infringement sales of Licensed Technology the infringer, whichever measure of damages the court shall be first applied to reimburse Avalon's unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costshave applied. Any remainder shall, to recovery or damages still remaining after the extent the same pertains to an infringement of the Licensed Technology above-mentioned applications shall be divided between as follows: 50% to CSHL and the LICENSEE and Avalon as mutually agreedremaining 50% to Licensee.
Appears in 1 contract
Infringement. 8.1 Each 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 promptly give written notice of such claim to the other party of: (i) any suspected party. Licensor, in consultation with Licensee, shall then use reasonable efforts to terminate such infringement of a Licensed Technology; (ii) if the threat of or filing of any declaratory judgment action by a third party alleging parties mutually agree that such efforts are appropriate under the invalidity, unenforceability, or noninfril)circumstances. gement of In 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 event Licensor fails to ▇▇▇▇▇ the infringement of a Licensed Technology within LICENSEE'S Field of Use. Avalon agrees 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 infringing activity within ninety (90) days after receipt of such written notice from Avalon of Avalon's intention 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 infringementlegal action shall be at the expense of the party by whom suit is filed, Aval 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) damages for lost sales shall be treated as Net Sales (after reasonable costs and expenses of litigation are subtracted), and the royalty due on the corresponding amount of Net Sales shall be paid to Licensor; (b) [***] percent ([***]%) of punitive damages, if any, in excess of damages for lost sales shall be paid to Licensor and the remainder shall be retained by Licensee. Specific terms in this Exhibit have been redacted because such terms are both not material and are of the right (but not type that the obligation) at its own expense to take those steps on behalf of itself Company treats as private or confidential. These redacted terms have been marked in this Exhibit with three asterisks [***].
16.3 Licensee and LICENSEELicensor shall cooperate with each other in litigation proceedings instituted hereunder, provided that LICENSEE shall have the right to participate at its own expense in any action brought by Avalon.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. If Avalon leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology cooperation shall be first applied to reimburse Avalon's unreimbursed expenses at the expense of such proceedingsthe Litigating Party, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Licensed Technology litigation shall be divided between controlled by the LICENSEE and Avalon as mutually agreedLitigating Party.
Appears in 1 contract
Sources: Exclusive License Agreement (Reata Pharmaceuticals Inc)
Infringement. 8.1 Each party (a) The Vendor agrees that it shall promptly give written notice to the other party of: (i) any suspected infringement of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment action by a third party alleging the invaliditydefend, unenforceability------------ indemnify and hold harmless, 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 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 have the right (but not the obligation) at its own expense to take those steps on behalf expense, all suits and claims against the Owner for infringement or violation of itself and LICENSEEany patent, provided that LICENSEE shall have trademark, copyright, trade secret or other intellectual property rights of any third party enforceable in the right to participate at its own expense United States or in any action brought by Avalon.
8.3 If LICENSEE leads proceedings other territory where Vendor has approved the deployment or use of Products under this Contract (collectively, "Intellectual Property Rights"), covering, or alleged to ▇▇▇▇▇ and remedy infringementcover, the Products or ----------------------------- any monetary recovery from the infringement of Licensed Technology received by LICENSEE component thereof. The Vendor agrees that it shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedingspay all sums, including without limitation, reasonable attorneys' fees and court costsother 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 Avalon leads proceedings 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 remedy infringementthen 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, any monetary recovery from the infringement of Licensed Technology written notice thereof shall be first applied given to reimburse Avalonthe Vendor as promptly as practicable (and in any event within twenty (20) calendar days after the service of the citation or summons). The Vendor shall be entitled, if it so elects to: (i) defend such lawsuit or action; (ii) employ and engage attorneys of its own choice to handle and defend the same, at the Vendor's unreimbursed expenses cost, risk and expense; and (iii) 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 proceedingsClaim within twenty (20) 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 then LICENSEE's unreimbursed expenses the Vendor agrees to indemnify and hold harmless the Owner from and against any Losses by reason of such proceedingssettlement 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, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to recommended or approved by the extent the same pertains to an infringement of the Licensed Technology shall be divided between the LICENSEE and Avalon as mutually agreedVendor.
Appears in 1 contract
Sources: System Equipment Purchase Agreement (Leap Wireless International Inc)
Infringement. 8.1 Each party 13.1 ECHOMAIL shall promptly give written notice to defend, indemnify and hold harmless CUSTOMER from all costs, expenses, damages, suits and other proceedings incurred by CUSTOMER, its officers, directors, employees or agents in connection with any claim that the Licensed Software infringes any patent, copyright, trade secret or other party of: (i) any suspected infringement of a Licensed Technology; (ii) the threat of or filing proprietary rights of any declaratory judgment action third party, provided that (a) CUSTOMER promptly informs ECHOMAIL of any such action, and
(b) CUSTOMER furnishes to ECHOMAIL all information and assistance in connection therewith which may be reasonably requested by a third party alleging the invalidity, unenforceability, or noninfril)ECHOMAIL from time to time. gement of the Licensed Technology.
8.2 LICENSEE ECHOMAIL shall have the first sole right (but not the obligation) to notify an entity settle, defend, 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 to join as a party plaintiff in otherwise handle any such lawsuit initiated by LICENSEEclaim. In the event the use of any Licensed Software is enjoined, if requested to do so by LICENSEEECHOMAIL shall, 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 have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEEoption, provided that LICENSEE shall have either (a) procure for CUSTOMER the right to participate at its own expense in any action brought continue to use such Licensed Software, (b) 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 AvalonCUSTOMER for the allegedly infringing Licensed Software to ECHOMAIL hereunder, based upon a five (5) year life of such Licensed Software.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. If Avalon leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology 13.2 ECHOMAIL’S obligations under this Section 13.0 shall be first applied only for the benefit of CUSTOMER. ECHOMAIL shall not be obligated to reimburse Avalon's unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, defend or to be liable under this Section 13.0 to the extent the same pertains 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 an the extent such infringement would not have occurred but for such use or combination with such other 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 the Licensed Technology shall be divided between the LICENSEE and Avalon as mutually agreedany patent, copyright, or other proprietary rights of third parties by items furnished by ECHOMAIL hereunder.
Appears in 1 contract
Infringement. 8.1 7.1. Each party shall promptly give written notice to inform the other party of: (i) promptly in writing of any suspected alleged infringement of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment action PATENT RIGHTS by a third party alleging the invalidity, unenforceability, or noninfril). gement and of the Licensed Technologyany available evidence thereof.
8.2 LICENSEE 7.2. During the term of this Agreement, TEPHA shall have the first right (right, but shall not be obligated, to prosecute at its own expense all infringements of the obligation) to notify an entity or individual PATENT * CONFIDENTIAL TREATMENT REQUESTED RIGHTS in the FIELD OF USE and, in furtherance of using the Trade Secrets and initiate legal proceedings to ▇▇▇▇▇ the infringement of a Licensed Technology within LICENSEE'S Field of Use. Avalon such right, METABOLIX hereby agrees to that TEPHA may join METABOLIX as a party plaintiff in any such lawsuit initiated suit, without expense to METABOLIX. The total cost of any such infringement action commenced solely by LICENSEETEPHA shall be borne by TEPHA. In the event that TEPHA shall have exercised its right to bring an action, if requested TEPHA shall be responsible for defending against any counterclaims alleging invalidity or unenforceability of a PATENT RIGHT and for prosecuting the action through to do so settlement or other final disposition. In the event that TEPHA shall undertake the enforcement of the PATENT RIGHTS in the FIELD OF USE by LICENSEElitigation, with all costsTEPHA 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 expenses 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 Avalon to be paid by LICENSEE. Should LICENSEE elect its intention 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 infringementagainst any alleged infringer, Aval on then, and in those events, only, METABOLIX shall have the right (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 expense. If TEPHA shall elect not to take those steps on behalf of itself and LICENSEEdefend, provided that LICENSEE TEPHA shall promptly notify METABOLIX. METABOLIX shall have the right right, but not the obligation, to participate defend such suit at its own expense 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 material claims in such PATENT RIGHT claiming the LICENSED PRODUCT or PROCESS is upheld by a court or other 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 action brought 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 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 Avalonsuch PATENT RIGHT in the country in which such claims were so held invalid or unenforceable or so modified.
8.3 If LICENSEE leads proceedings 7.7. In any suit as either party may institute to ▇▇▇▇▇ enforce or defend the PATENT RIGHTS pursuant to this Agreement, the other party hereto shall, at the request and remedy infringementexpense of the party initiating such suit, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shallcooperate 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 same pertains to an infringement like. The parties shall keep one another informed of the Licensed Technology status of and of their respective activities regarding any litigation or settlement thereof concerning the PATENT RIGHTS in the FIELD of USE or LICENSED PRODUCTS or PROCESSES ; provided, however, that no settlement or consent judgement or other voluntary final disposition of any suit defended or action brought by a party pursuant to this Article 7 may be entered into without the consent of the other party, such consent not to be unreasonably withheld or delayed. As to the MIT PATENT RIGHTS, no settlement, consent judgement or other voluntary final disposition of the suit may be entered into without the consent of MIT which consent shall not unreasonably be divided between 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 LICENSEE period of this Agreement, shall have the sole right in accordance with the terms and Avalon as mutually agreedconditions herein to sublicense any alleged infringer for future use of the PATENT RIGHTS in the FIELD OF USE.
Appears in 1 contract
Sources: License Agreement (Metabolix, Inc.)
Infringement. 8.1 Each 12.1 CONECTUS and LICENSEE shall inform each other in writing promptly with respect of any THIRD PARTY infringement in relation to the PATENTS of which they may become aware and/or of any infringement claims or actions which may be taken against them.
12.2 Should there be a THIRD PARTY infringement of the PATENTS, CONECTUS and/or the ESTABLISHMENTS may at their sole expense undertake legal action against the infringing party with the understanding that [***]. The foregoing shall promptly not prevent LICENSEE from taking action against any THIRD PARTY infringement of the PATENTS in its name or in the name of CONECTUS [***] for seeking compensation for prejudice which it has incurred. Any expenses, losses, indemnification or damages which may be awarded by court decision for said prejudice will [***]. If an action is taken in the name of CONECTUS, CONECTUS shall timely provide any required power of attorney and LICENSEE shall indemnify CONECTUS of any Third Party’s claim against CONECTUS in relation with this action.
12.3 Should the ESTABLISHMENTS and CONECTUS decide not to undertake a legal action against THIRD PARTY infringement of the PATENTS, and if LICENSEE wishes to undertake such legal action, CONECTUS shall use reasonable efforts to cause the ESTABLISHMENTS to give written notice LICENSEE the power of attorney to undertake a legal action in the name of the ESTABLISHMENTS. If the ESTABLISHMENTS choose not to give such power of attorney to LICENSEE, then CONECTUS shall cause the ESTABLISHMENTS to work with the THIRD PARTY infringer to reach an acceptable solution to remedy such THIRD PARTY infringing activity (e.g. in the way of a license, agreement to cease and desist, etc.) and as long as a solution acceptable to LICENSEE is not reached, the PATENTS shall not longer be subject to royalty pursuant to this Agreement.
12.4 In the case where LICENSEE undertakes legal action against THIRD PARTY infringement of the PATENTS, [***], and CONECTUS agrees to cooperate fully with LICENSEE as reasonably requested in such legal action, including, without limitation, providing any documents necessary or helpful for such legal action. The stipulations set out above are applicable subject to the legal imperative provisions applicable in the country where the infringement occurs.
12.5 Should any infringement suit be brought against LICENSEE and/or its AFFILIATES and/or its SUBLICENSEES with respect to the exploitation of LICENSED PRODUCTS due to the use of the PATENTS or other rights granted to LICENSEE in the present Agreement, CONECTUS shall cooperate fully with LICENSEE in LICENSEE’s defense, including without limitation providing LICENSEE with the documents which may be required for its defence. [***] Certain information in this document has been excluded pursuant to Regulation S-K, Item 601(b)(10). Such excluded information is not material and would likely cause competitive harm to the registrant if publicly disclosed. Should LICENSEE be found guilty for said infringement, CONECTUS shall not be called in warranty by LICENSEE or be liable to indemnify, reimburse or reduce any of the sums due by LICENSEE at the moment of the final legal decision, except as otherwise set forth in Article 13 herein.
12.6 It is hereby declared that the conditions of the present Agreement shall not apply to infringement of the PATENTS outside the FIELD and the TERRITORY which is the sole responsibility of the ESTABLISHMENTS, CONECTUS or any THIRD PARTY appointed by them.
12.7 The PARTIES agree to provide any documents and elements and reasonable cooperation to the other party of: (i) any suspected infringement of a Licensed Technology; (ii) PARTY, which may be necessary for 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 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 above-mentioned 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 have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE shall have the right to participate at its own expense in any action brought by Avalonother PARTY.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Licensed Technology shall be divided between the LICENSEE and Avalon as mutually agreed.
Appears in 1 contract
Sources: Exclusive Patent Sublicense Agreement (Dynacure S.A.)
Infringement. 8.1 Each party shall promptly 13.1 The Parties agree to give each other prompt written notice to the other party of: (i) any suspected infringement of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment infringement or other similar action in or affecting the Territory by a third party alleging the invalidity, unenforceability, or noninfril). gement Third Party of the Licensed TechnologyAMIH Marks known to them.
8.2 LICENSEE shall have 13.2 In the first event of such infringement or other similar action, ADSC has the obligation to protect any of the Non-United States Marks which ADSC has been using in the preceding 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 (but not to act in its own name or if necessary in the obligation) 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 notify an entity act on its behalf if any action in or individual out of using the Trade Secrets court in connection with such actions is necessary. ADSC will select counsel, to which AMIH has no reasonable objection and initiate legal proceedings AMIH will provide reasonable assistance, including by providing information, documents and things in response to ▇▇▇▇▇ the infringement of a Licensed Technology within LICENSEE'S Field of Use. Avalon agrees discovery requests, by providing at mutually convenient times witnesses for discovery, depositions and trial testimony, and by permitting ADSC to join 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 lawsuit initiated assistance, shall be borne by LICENSEEADSC and ADSC shall be entitled to any amounts awarded to ADSC or AMIH. ADSC shall not enter into any settlement of such actions without the written consent of AMIH, if requested which consent shall not be unreasonably withheld.
13.3 If any action or proceeding is brought or asserted by ADSC, under the authority granted to do so by LICENSEEit under Article 13.2, with all costs, attorneys' fees, ADSC will promptly notify AMIH in writing. AMIH may assume and expenses of Avalon to be paid by LICENSEE. Should LICENSEE elect not to institute such an direct the 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 have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEE, or proceeding only provided that LICENSEE ADSC initiates no action or takes no action in such action or proceeding. Upon assumption of the action or proceeding by AMIH, all expenses shall have the right be borne by AMIH and AMIH shall be entitled to participate at its own expense in any action brought by Avalon.
8.3 If LICENSEE leads proceedings amounts awarded to ▇▇▇▇▇ and remedy infringement, ADSC or AMIH. AMIH shall not enter into any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses settlement of such proceedings and then Avalon's unreimbursed expenses actions without the written consent of such proceedingsADSC, including without limitation, reasonable attorneys' fees and court costs. If Avalon leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology which consent shall not be first applied to reimburse Avalon's unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Licensed Technology shall be divided between the LICENSEE and Avalon as mutually agreedunreasonably withheld.
Appears in 1 contract
Infringement. 8.1 Each party shall promptly give written notice (a) 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 other party of: (i) 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 provisions of the Licensed Technology.
8.2 LICENSEE IXSYS LICENSE AGREEMENTS, MEDIMMUNE shall have the first right (and option but not the obligation) obligation to notify bring an entity or individual action for such infringement, at its sole expense, against such THIRD PARTY in the name of using IXSYS and/or in the Trade Secrets and initiate legal proceedings to ▇▇▇▇▇ name of MEDIMMUNE and/or in the infringement name of a Licensed Technology within LICENSEE'S Field licensor of Use. Avalon agrees IXSYS, as the case may be, and to join IXSYS or its licensor as a party plaintiff in if required. MEDIMMUNE shall promptly notify IXSYS of any such lawsuit initiated by LICENSEE, if requested infringement and shall keep IXSYS informed as to do so by LICENSEE, with all costs, attorneys' fees, and expenses the prosecution of Avalon to be paid by LICENSEE. Should LICENSEE elect not to institute such an any 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. No settlement, Aval consent judgment or other voluntary final disposition of the suit which adversely affects IXSYS PATENTS may be entered into without the consent of IXSYS, which 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 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 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 to pursue an action for infringement, upon written notice to IXSYS by MEDIMMUNE that an unlicensed THIRD PARTY is an infringer of a VALID PATENT CLAIM of IXSYS PATENTS licensed to MEDIMMUNE, IXSYS shall have the right (and option, but not the obligation) obligation at its own cost and expense to take those steps on behalf of itself initiate infringement litigation and LICENSEE, provided that LICENSEE shall have the right to participate at its own expense in retain any action brought by Avalonrecovered damages.
8.3 If LICENSEE leads proceedings 7.3 In any infringement suit either party may institute to ▇▇▇▇▇ and remedy infringementenforce the IXSYS PATENTS pursuant to this Agreement, any monetary recovery from the infringement other party hereto shall, at the request of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of the party initiating such proceedings and then Avalon's unreimbursed expenses of such proceedingssuit, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shallreasonably cooperate and, to the extent reasonably possible, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the same pertains to an infringement of the Licensed Technology like. All reasonable out-of-pocket costs incurred in connection with rendering cooperation requested hereunder shall be divided between paid by the LICENSEE and Avalon as mutually agreedparty requesting cooperation.
Appears in 1 contract
Sources: License Agreement (Applied Molecular Evolution Inc)
Infringement. 8.1 Each party shall promptly give written notice to the other party of: (ia) any suspected infringement of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment action by If a third party alleging the invaliditymakes, unenforceability, uses or noninfril). gement sells a XENOGRAFT PRODUCT that infringes any of the Licensed Technology.
8.2 LICENSEE BTI PATENTS under which LOXO is licensed, LOXO shall have the first right (and option but not the obligation) obligation to notify bring an entity or individual action for infringement, at its sole expense, against such third party in the name of using the Trade Secrets LOXO, and initiate legal proceedings to ▇▇▇▇▇ the infringement of a Licensed Technology within LICENSEE'S Field of Use. Avalon agrees to join the owner of the BTI PATENT as a party plaintiff in if required. LOXO shall promptly notify BTI of any such lawsuit initiated 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, 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. The rights granted under this Section 7.1 are subject to the terms and conditions of the THIRD PARTY AGREEMENTS with respect to BTI PATENTS licensed under THIRD PARTY AGREEMENTS. Any recovery of damages by LICENSEELOXO for any such suit shall be applied first in satisfaction of obligations under THIRD PARTY AGREEMENTS. The balance, if requested any, remaining from any such recovery shall be retained 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 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 sixty (9060) days after receipt of written notice from Avalon by BTI that an unlicensed third party is an infringer of Avalon's intention a BTI PATENT licensed to bring suit for such infringementLOXO, Aval on BTI or its licensor(s) shall have the right (and option, but not the obligation) obligation at its own cost and expense to take those steps on behalf of itself initiate infringement litigation and LICENSEE, provided that LICENSEE shall have the right to participate at its own expense in retain any action brought by Avalonrecovered damages.
8.3 If LICENSEE leads proceedings 7.3. In any infringement suit either PARTY may institute to ▇▇▇▇▇ and remedy infringementenforce the BTI PATENTS pursuant to this Agreement, any monetary recovery from the infringement other PARTY hereto shall, at the request of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of the PARTY initiating such proceedings and then Avalon's unreimbursed expenses of such proceedingssuit, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shallcooperate 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 same pertains to an infringement like. All reasonable out-of-pocket costs of the Licensed Technology other PARTY incurred in connection with rendering such cooperation shall be divided between paid by the LICENSEE and Avalon as mutually agreedrequesting PARTY.
Appears in 1 contract
Infringement. 8.1 Each party 7.1 OSI represents and warrants that it has the sole ownership of and/or the right to license and sub-license the Licensed Software as contemplated by this Agreement and this License Agreement and has the full power to grant the rights granted herein without the consent of any other person or entity.
7.2 OSI shall defend, indemnify and hold Licensee and its officers, directors, agents and employees harmless from and against any and all claims, suits, damages, liabilities, costs and expenses (including reasonable attorneys' fees) arising out of or resulting from any claim that Licensee's use of the OSI Proprietary Software infringes a United States patent or copyright, or trademark or misappropriates a trade secret of any third party, provided OSI is:
a) promptly give written notice notified of any and all threats, claims and proceedings related thereto, b) given reasonable assistance (at OSI's sole cost and expense), and c) given the opportunity to choose counsel, assume sole control over the other party of: (i) defense and all negotiations for a settlement compromise. The provisions of this Section 7.2 do not apply to any suspected infringement Third Party Software.
7.3 In the event that the Licensed Software, or any portion thereof, becomes the subject of a Licensed Technology; (ii) claim of infringement or misappropriation, OSI may, at its expense, take any of the threat following steps so that Licensee's use is not subject to any claim of infringement or filing of any declaratory judgment action by a third party alleging the invaliditymisappropriation and Licensee is provided with functionally equivalent software, unenforceability, or noninfril). gement provided that Licensee's use of the Licensed Technology.Software conforms with the provisions of this Agreement:
8.2 LICENSEE shall have the first right (but not the obligationa) 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 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 procure for such infringement, Aval on shall have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE shall have Licensee the right to participate at its own expense in any action brought by Avalon.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from continue using the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. If Avalon leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from Software or b) replace or modify the infringement of Licensed Technology shall be first applied to reimburse Avalon's unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to the extent the same pertains to an infringement infringing portion of the Licensed Technology shall be divided between Software. INFORMATION PROCESSING SYSTEM AGREEMENT # --------------------------------------------------------------------------------
7.4 The foregoing obligations of OSI do not apply with respect to software and any other products or portions or components thereof:
a) which are not the latest available release supplied by OSI to Licensee, b) which are modified by Licensee after shipment by OSI, if the alleged infringement relates to such modification, unless OSI has consented to the modification in writing, or such modifications is otherwise authorized, permitted or provided for under the Specifications, Documentation or this License Agreement, or c) which are combined with other products, processes or materials where the alleged infringement relates to such combination, unless OSI has consented in writing to such combination or such combination is otherwise authorized, permitted or provided for under the Specifications, Documentation or this License Agreement.
7.5 THE FOREGOING STATES THE ENTIRE LIABILITY OF OSI WITH RESPECT TO INFRINGEMENT OF ANY PATENTS, COPYRIGHTS, TRADEMARKS OR MISAPPROPRIATION OF TRADE SECRETS BY THE OSI PROPRIETARY SOFTWARE OR ANY PARTS THEREOF. NO COSTS OR EXPENSES SHALL BE INCURRED FOR THE ACCOUNT OF OSI BY LICENSEE and Avalon as mutually agreedOR ITS AGENTS WITHOUT THE PRIOR WRITTEN CONSENT OF OSI.
Appears in 1 contract
Sources: Information Processing System Agreement (Open Solutions Inc)
Infringement. 8.1 Each party LICENSEE and UKRF shall promptly give written notice to inform the other party of: (i) in writing of any suspected alleged infringement of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment action which it shall have notice by a third party alleging of any patents within the invalidity, unenforceability, or noninfril). gement of the Licensed TechnologyPatent Rights and provide such other with any available information relating to such alleged infringement.
8.2 LICENSEE During the term of this Agreement, UKRF shall have the first right (right, but shall not the obligation) be obligated, to notify an entity or individual of using the Trade Secrets and initiate legal proceedings to ▇▇▇▇▇ the prosecute at its own expense any such infringement of a Licensed Technology within LICENSEE'S Field the Patent Rights and, in the furtherance of Use. Avalon such right, LICENSEE hereby agrees to that UKRF may join LICENSEE as a party plaintiff in any such lawsuit initiated suit, without expense to LICENSEE. The total cost of any such infringement action commenced or defended solely by LICENSEEUKRF shall be borne by UKRF, and UKRF 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 requested UKRF shall notify LICENSEE at any time prior thereto of its intention not to do so 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 LICENSEElitigation, with all costsLICENSEE 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 expenses legal fees of Avalon 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 paid 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. Should LICENSEE elect not , 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 such an action to enforce the Licensed Technology Patent Rights pursuant to this Agreement, the other party hereto shall, at the request and expense of the party initiating such suit, cooperate in all respects and, to the extent reasonable, have its employees testify when requested and make available relevant records, papers, information, samples, specimens, and the like, and the party maintaining the litigation shall reimburse the other party against infringement within LICENSEE's Field of Use within ninety (90) days after receipt of any order for costs that may be made against such other party in such proceedings. Should UKRF or Licensee commence a suit under the foregoing provisions and thereafter elect to abandon the same, the abandoning party shall give timely, written notice from Avalon to the other party, which, at its option, may chose to continue the prosecution of Avalon's intention to bring suit for such infringementsuit, Aval on 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 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 other voluntary final disposition of any such litigation may be entered into without the consent of the other party, which consent shall not unreasonably be withheld or delayed.
8.9 If, during the term of this Agreement, any third party (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 Licensed Patent Rights, within 120 days after notice by LICENSEE, UKRF shall either (i) procure for LICENSEE the rights to exercise all rights licensed under this Agreement without any additional payment therefor by LICENSEE, or (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 have the right, but not the obligation) at its own expense , to take those steps on behalf of procure such rights itself and LICENSEEoffset one-half of any royalty payments hereunder by the amount paid by LICENSEE for such third-party rights, provided that LICENSEE the offset under this provision shall have not be used to reduce the right to participate at its own expense royalty payment in any action brought period by Avalon.
8.3 If LICENSEE leads proceedings more than [*] of Net Sales, and any amount remaining to ▇▇▇▇▇ and remedy infringement, be offset from any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. If Avalon leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology period shall be first applied to reimburse Avalon's unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Licensed Technology shall be divided between the LICENSEE and Avalon as mutually agreedcarried forward until offset against royalties for future periods.
Appears in 1 contract
Sources: License Agreement (Control Delivery Systems Inc/Ma)
Infringement. 8.1 (a) Each party Party shall promptly give written notice to notify in writing the other party ofParty during the term of this Agreement of any: (i) any known infringement or suspected infringement of a Licensed Technologyany of the Patent Rights; or (ii) unauthorized use or misappropriation of the threat of or filing of any declaratory judgment action Licensed Technology by a third party alleging of which it becomes aware, and shall provide 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 to join as a party plaintiff in any such lawsuit initiated by LICENSEE, if requested to do so by LICENSEE, other Party with all costsavailable evidence supporting said infringement, attorneys' fees, and expenses of Avalon to be paid by LICENSEEsuspected infringement or unauthorized use or misappropriation. Should LICENSEE elect not to institute such an action to enforce the Licensed Technology against infringement within LICENSEE's Field of Use within Within ninety (90) days after receipt Migami becomes, or is made aware of written notice from Avalon any of Avalonthe 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 failure of Migami to inform MKL of Migami's intention decision within such 90-day period shall be deemed a decision not to bring suit for such infringement, Aval on shall have initiate an infringement or other appropriate action.
(b) In the right event that Migami notifies MKL of its intent to initiate an infringement or other appropriate action within the 90-day period provided in Section (but not the obligationa) at its own expense to take those steps on behalf of itself and LICENSEE7.2(a), provided such infringement is continuing, Migami shall initiate 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, MKL 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 LICENSEE 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 participate be represented by its own counsel at its own expense 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, which consent shall not be unreasonably withheld. In the event Migami initiates proceedings pursuant to this Section 7.2(c), Migami shall be entitled to one hundred percent (100%) of any and all amounts recovered in any action brought by Avalon.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringementsuch suit, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedingswhether through judgment, settlement or otherwise, including without limitation, reasonable attorneys' fees any punitive damages that may be awarded, up to the amount of Migami's costs of suit and court costs. If Avalon leads proceedings attorneys fees, Migami and MKL shall each be entitled to ▇▇▇▇▇ and remedy infringementfifty percent (50%) of all amounts recovered in such suit, any monetary recovery from the infringement of Licensed Technology shall be first applied to reimburse Avalon's unreimbursed expenses of such proceedingswhether through judgment, and then LICENSEE's unreimbursed expenses of such proceedingssettlement or otherwise, including without limitation, reasonable attorneys' fees any punitive damages that may be awarded, in excess 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 Section 7.2(a), or does not initiate such an infringement or other appropriate action within thirty (30) days of such 90-day period as provided in Section 7.2(b), MKL shall have the right, at its expense, to initiate an infringement or other appropriate action, and court costs. Any remainder shallshall 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 same pertains to an infringement suit or being the owner of any Patent Rights and/or Licensed Technology at issue. Notwithstanding the foregoing, in the 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 has advised MKL in writing of such negotiations, the above mentioned right and option of MKL to bring suit shall be exercised only with the written consent of Migami which will not be unreasonably withheld. If Migami chooses to participate in any suit initiated by MKL, Migami shall have the right to be represented in any such suit by its own counsel at its own expense. MKL shall not settle any such suit involving rights of Migami nor make any admission of liability on behalf of Migami without obtaining the prior written consent of Migami, which consent shall not be unreasonably withheld. In the event MKL initiates proceedings pursuant to Section 7.2(c), Migami and MKL shall be entitled to one hundred percent (100%) of any and all amounts recovered in such suit, whether through judgment, 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.
(d) Nothing 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 be divided between and agrees to hold the LICENSEE other party harmless from any and Avalon as mutually agreedall liabilities arising thereunder, including, but not limited to, attorney's fees, court costs, and damages arising out of the counterclaims, cross-claims and the like.
Appears in 1 contract
Sources: Sublicense Agreement (Migami, Inc.)
Infringement. 8.1 Each party A. Licensee and CMCC shall promptly give written notice to each inform the other party of: (i) any suspected infringement of a Licensed Technology; (ii) the threat of or filing promptly in writing of any declaratory judgment action alleged infringement by a third party alleging the invalidity, unenforceability, or noninfril). gement of the Licensed TechnologyPatent Rights in the Field of Use within the scope of this Agreement and of any available evidence thereof.
8.2 LICENSEE B. During the Term of this Agreement, CMCC shall have the first right (right, but shall not the obligation) be obligated, to notify an entity or individual of using the Trade Secrets and initiate legal proceedings to ▇▇▇▇▇ the prosecute at its own expense any infringement of a Licensed Technology within LICENSEE'S Field the Patent Rights and, in furtherance of Use. Avalon such right, Licensee hereby agrees to join that CMCC may include Licensee as a party plaintiff in any such lawsuit initiated suit, without expense to Licensee. The total cost of any such infringement action commenced or defended solely by LICENSEECMCC 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, if requested except recovery that is awarded with respect to do so by LICENSEElost sales of Licensed Products, with all costs, attorneys' fees, and expenses which amount of Avalon to recovery will be paid to Licensee, less any amount of royalty that would have been due to CMCC if such amount were Net Sales made by LICENSEELicensee, its Affiliates or Sublicensees. Should LICENSEE elect CMCC agrees not to institute such enter into any settlement, consent judgment or other voluntary final disposition of the suit referenced above without first consulting Licensee.
C. If within three (3) months after having been notified of any alleged infringement, CMCC shall have been unsuccessful in persuading the alleged infringer to desist and shall not have brought and shall not be diligently prosecuting an action to enforce the Licensed Technology against infringement within LICENSEE's Field action, or if CMCC shall notify Licensee of Use within ninety (90) days after receipt of written notice from Avalon of Avalon's its intention not to bring suit for such infringementagainst any alleged infringer then, Aval on Licensee shall have the right (right, but shall not the obligation) be obligated, to prosecute at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE shall have the right to participate at its own expense in any action brought by Avalon.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Licensed Technology Patent Rights, provided, however, that such right to bring such an infringement action shall remain in effect only for so long as the license granted hereunder remains exclusive. No settlement, consent judgment or other voluntary final disposition of the suit may be divided between entered into without the LICENSEE consent of CMCC, which consent shall not be unreasonably withheld. Licensee shall indemnify CMCC and Avalon as mutually agreed.M.
Appears in 1 contract
Infringement. 8.1 Each party 9.1 If the production, sale or use of LICENSED PRODUCTS under this LICENSE AGREEMENT by LICENSEE results in any claim for patent infringement against LICENSEE, LICENSEE shall promptly give written notice notify UNIVERSITY thereof in writing, setting forth the facts of such claim in reasonable detail. As between the parties to the other party of: (i) any suspected infringement of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment action by a third party alleging the invaliditythis LICENSE AGREEMENT, unenforceability, or noninfril). gement of the Licensed Technology.
8.2 LICENSEE shall have the first and primary 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 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 have the right (but not the obligation) responsibility at its own expense to take those steps on behalf defend and control the defense of itself and any such claim against LICENSEE, provided by counsel of its own choice. It is understood that any settlement, consent judgment or other voluntary disposition of such actions must be approved by UNIVERSITY, such approval not being unreasonably withheld. Subject to the policies of the Board of Governors of the University of North Carolina, UNIVERSITY agrees to cooperate with LICENSEE in any reasonable manner deemed by LICENSEE to be necessary in defending any such action. LICENSEE shall reimburse UNIVERSITY for any out of pocket expenses incurred in providing such assistance.
9.2 In the event that any PATENT RIGHTS licensed to LICENSEE are infringed by a third party, LICENSEE shall have the right primary right, but not the obligation, to participate at its own expense in institute, prosecute and control any action brought or proceeding with respect to such infringement, by Avalon.
8.3 counsel of its choice, including any declaratory judgment action arising from such infringement. It is understood that any settlement, consent judgment or other voluntary disposition of such actions must be approved by UNIVERSITY, such approval not to be unreasonably withheld. If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any recovers monetary recovery from the infringement of Licensed Technology received by LICENSEE damages then such damages awarded shall first be applied to reimburse LICENSEE's unreimbursed expenses reimbursement of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' legal fees and court 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 unreimbursed expenses of such proceedingsincurred by either party, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any the remainder shall, to the extent the same pertains to an infringement of the Licensed Technology shall be divided between the parties as follows: (A) if the monetary damages are in the form of lost profits from a third party infringer, then (i) LICENSEE shall receive an amount equal to the damages the court determines LICENSEE has suffered as a result of the infringement less the amount of any royalties that would have been due to UNIVERSITY, and Avalon as mutually agreed(ii) UNIVERSITY shall receive an amount equal to the royalties it would have received if not for the infringement; and (B) if LICENSEE recovers monetary damages in the form of a reasonable royalty, then LICENSEE shall remit to UNIVERSITY [**] percent ([**] %) of the reasonable royalty awarded.
9.3 If LICENSEE elects not to enforce any patent within the PATENT RIGHTS, then LICENSEE shall notify UNIVERSITY in writing within sixty (60) days of receiving notice that an infringement exists. UNIVERSITY may, at its own expense and control, take steps to defend or enforce any patent within the PATENT RIGHTS and recover, for its own account, any damages, awards or settlements resulting therefrom, subject to the consent of LICENSEE, such consent not being reasonably withheld.
9.4 Notwithstanding the foregoing, and in UNIVERSITY’S sole discretion, UNIVERSITY shall be entitled to participate through counsel of its own choosing in any legal action involving the INVENTIONS and PATENT RIGHTS. Nothing in the foregoing sections shall be construed in any way which would limit the authority of the Attorney General of North Carolina.
Appears in 1 contract
Infringement. 8.1 Each party shall promptly give written 7.1. In the event that LICENSEE (including any Affiliate or sublicensee) or UFRFI receives a notice to the other party of: (i) any suspected infringement of a Licensed Technology; (ii) the threat of claim, threat, or filing of any declaratory judgment action suit by a third party alleging alleging, that the invaliditymanufacture, unenforceability, use or noninfril). gement sale of the Licensed TechnologyTechnology 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.
8.2 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 and resolution of any such claim, threat or suit, However, LICENSEE shall compensate UFRFI and University of Florida personnel for their actual out-of-pocket expenses (e.g., travel).
7.3. If the resolution of a claim, treat, or suit of the type described in Paragraph 7.1 herein results in the payment of any royalties or other compensation by LICENSEE to a third party, then LICENSEE shall thereafter be permitted to deduct the amount of such payment from the royalties paid or payable by LICENSEE to UFRFI under Article IV of this Agreement, up to [***] percent ([***]%) of said royalties paid or payable to UFRFI; provided that the third parry intellectual property rights are infringed solely by virtue of the fact that the infringing product or process are part of the Licensed Technology licensed under the Patent Rights of this Agreement.
7.4. LICENSEE shall have the first right (right, but not the obligation) , to notify an entity initiate and prosecute legal action for infringement by a third party of or individual any claim of using any patent within the Trade Secrets Patent Rights. UFRFI shall voluntarily join such legal action, and initiate UFRFI and University of Florida personnel shall render necessary cooperation and shall promptly execute all documents as may be necessary and reasonable during the course of such legal proceedings action. During the prosecution of such legal action, LICENSEE shall be permitted to ▇▇▇▇▇ deduct the infringement of a Licensed Technology within LICENSEE'S Field of Use. Avalon agrees 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, reasonable fees and expenses of Avalon the legal action from the royalties payable to UFRFI 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 paid fully and retroactively restored. Any monies except that excess which is attributable to trebled damages or award of attorneys’ fees, recovered by LICENSEELICENSEE 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. Should LICENSEE elect not If the resolution of a claim, threat or suit of the type described in this Paragraph 7.4 results in the payment of royalties or other compensation 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 have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEE, provided that 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 have be treated as sales pursuant to Paragraph 4.1 for payment of royalties, after having deducted all previously undeducted expenses reasonably connected with the right to participate at its own expense in any action brought by Avalonlitigation and resolution.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Licensed Technology shall be divided between the LICENSEE and Avalon as mutually agreed.
Appears in 1 contract
Sources: License Agreement (Diversa Corp)
Infringement. 8.1 Each party A. LICENSEE and CMCC shall promptly give written notice to each inform the other party of: (i) any suspected infringement of a Licensed Technology; (ii) the threat of or filing promptly in writing of any declaratory judgment action alleged infringement by a third party alleging the invalidity, unenforceability, or noninfril). gement of the Licensed TechnologyPatent Rights in the Field of Use and of any available evidence thereof.’
8.2 B. During the term of this License Agreement, LICENSEE shall have the first right (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 to join as a party plaintiff in any such lawsuit initiated by LICENSEEprosecute and/or defend, 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 have the right (but not the obligation) at its own expense to take those steps on behalf and utilizing counsel of itself and LICENSEEits choice, provided any infringement of, and/or challenge to, the Patent Rights; provided, however that LICENSEE CMCC shall have the right to participate 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 consent 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 expense and utilizing counsel of its choice, any cost of any such infringement action commenced solely by CMCC shall be borne by CMCC and CMCC shall keep any recovery or damages for past infringement derived therefrom. CMCC shall indemnify LICENSEE against any order for costs that may be made against LICENSEE in any action brought by Avalonsuch suit.
8.3 If LICENSEE leads proceedings E. In any suit to ▇▇▇▇▇ and remedy infringementenforce and/or defend the Patent Rights pursuant to this License Agreement, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses party not in control of such proceedings suit shall, at the request and then Avalon's unreimbursed expenses expense of such proceedingsthe controlling party, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shallcooperate 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 same pertains like.
F. LICENSEE during the period of this License Agreement, shall have the sole right, in accordance with the terms and conditions herein, to an infringement sublicense any alleged infringer for future use of the Licensed Technology shall be divided between the LICENSEE and Avalon as mutually agreedPatent Rights.
Appears in 1 contract
Sources: Exclusive License Agreement (Boston Life Sciences Inc /De)
Infringement. 8.1 Each party shall promptly give written notice to 10.1 In the other party of: (i) any suspected event that there is infringement of a Licensed Technology; the Patent Rights or Technical Information assigned to ▇▇▇▇▇▇▇, the Parties shall notify each other in writing to that effect. During the ninety (ii90) day period after such notice, ▇▇▇▇▇▇▇ will have the threat of or filing right, but not the obligation to bring suit against the alleged infringer. ▇▇▇▇▇▇▇ shall bear the expenses of any declaratory judgment action suit brought by it and shall retain all damages or other monies awarded or received in settlement of such suit. ▇▇▇▇▇▇▇ shall have the final decision on all matters relating to litigation and any settlement discussions. SSC will use reasonable efforts to cooperate with ▇▇▇▇▇▇▇ in any such suit and shall have the right to consult with ▇▇▇▇▇▇▇ and be represented by its own counsel at its own expense. All reasonable costs incurred by SSC associated with providing such cooperation to ▇▇▇▇▇▇▇ will be paid by ▇▇▇▇▇▇▇. If, after the expiration of said ninety (90) days from the date of such notice, ▇▇▇▇▇▇▇ has not brought suit against a third party alleging the invalidityinfringer, unenforceability, or noninfril). gement of the Licensed Technology.
8.2 LICENSEE then SSC shall have the first right after such ninety (90) day notice period, but not the obligation) , to notify bring suit against such infringer and join ▇▇▇▇▇▇▇ as a party plaintiff provided that SSC shall bear all expenses of such suit. SSC shall retain all damages or other monies awarded or received in settlement of such suit. ▇▇▇▇▇▇▇ will reasonably attempt to cooperate with SSC in any suit for infringement of the subject patent brought by SSC against a third party and shall have the right to consult with SSC and to participate in and be represented by independent counsel in such litigation at its own expense. All reasonable costs incurred by ▇▇▇▇▇▇▇ associated with providing cooperation to SSC shall be paid by SSC. Where it is necessary for SSC to have standing to file the suit, ▇▇▇▇▇▇▇ shall assign limited concurrent rights to the licensed Patent Rights for the terms of the suit.
10.2 In the event SSC has decided to bring suit against an entity or individual of using the Trade Secrets and initiate legal proceedings infringer, it shall use reasonable commercial efforts to ▇▇▇▇▇ such infringement. It is understood that the reasonable commercial efforts under this Section 10.2 shall include the filing for injunctive relief and all other actions, which could bring about an early abatement of the infringing activity. Notwithstanding foregoing, SSC shall not enter into any settlement agreement, or take any position in litigation, which adversely impacts ▇▇▇▇▇▇▇'▇ rights under this Agreement without written consent by ▇▇▇▇▇▇▇. During the period commencing with ▇▇▇▇▇▇▇'▇ filing of a complaint for infringement of the Patent Rights or Technical Information and ending on a court's issuance of a final non-appealable decision or other termination of the proceeding, ▇▇▇▇▇▇▇'▇ royalty obligation under Section 3.1f) shall be reduced by fifty percent (50%) and ▇▇▇▇▇▇▇'▇ obligation to pay a minimum annual royalty under Section 3.2 shall be suspended. Notwithstanding the foregoing, ▇▇▇▇▇▇▇'▇ obligation to pay minimum royalties and any reduction in the royalty obligation shall not be effective until and unless ▇▇▇▇▇▇▇ has determined in its sole discretion and in good faith that it's ability to market and sell Licensed Technology within LICENSEE'S Field Product is materially affected by the alleged infringement.
10.3 In the event ▇▇▇▇▇▇▇ is charged with infringement by a third party for the manufacture, use or sale of Use. Avalon agrees to join as a party plaintiff in any such lawsuit initiated by LICENSEELicensed Product, 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 have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE ▇▇▇▇▇▇▇ shall have the right to participate at its own expense defend against such charge of infringement, and during the period in any action brought by Avalon.
8.3 If LICENSEE leads proceedings to which such litigation is pending, ▇▇▇▇▇▇▇ shall have the right to withold up to fifty percent (50%) of the royalties due SSC on sales of the allegedly infringing Licensed Products and remedy infringementapply it against all its litigation expenses. If, any monetary recovery from as a result of judgment in the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedingslitigation or settlement with a third party with or without litigation, including without limitation, reasonable attorneys' fees and court costs. If Avalon leads proceedings to ▇▇▇▇▇▇▇ and remedy infringementis required to pay royalty and/or other monies to such third party, any monetary recovery ▇▇▇▇▇▇▇ may thereafter deduct from the infringement amount of Licensed Technology shall be first applied to reimburse Avalon's unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to the extent the same pertains to an infringement royalties due SSC on unit sales of the Licensed Technology Product charged to infringe, an amount which is the lesser of all royalties and/or other monies paid by ▇▇▇▇▇▇▇ to such third party, or fifty percent (50%) of all royalty payments otherwise payable to SSC on the Net Sales of such Licensed Product during Term.
10.4 With respect to SSC, nothing in this Agreement shall be divided between construed as:
(a) A warranty or representation that any Patent Rights in the LICENSEE form of patent applications filed or that may be filed disclosing and Avalon as mutually agreedclaiming any aspect of the Included Products will mature into issued patents; or
(b) An obligation to bring, defend or prosecute actions or suits against third parties for infringement of any Patent Rights.
Appears in 1 contract
Sources: Development and License Agreement (Specialized Health Products International Inc)
Infringement. 8.1 Each party shall promptly give written notice The CenTrak Products are provided with all faults, and the entire risk as to satisfactory quality, performance, accuracy, and effort is with End User. Neither CenTrak nor its licensors represent or warrant that the other party of: (i) CenTrak Products are without defect or error. In addition, End User acknowledges that CenTrak does not represent, warrant or covenant that it is or will be familiar with End User’s environment or any suspected infringement of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment action by a third party alleging products or technologies with which the invalidityCenTrak Products may be combined and that, unenforceabilityother than setting forth applicable restrictions on use herein, CenTrak does not control, or noninfrilhave knowledge of, the use of the CenTrak Products by End User. THE CENTRAK PRODUCTS ARE NOT INTENDED IN ANY WAY TO BE A SUBSTITUTE FOR PROFESSIONAL MEDICAL ADVICE, NOR SHOULD THEY BE RELIED UPON FOR MEDICAL DIAGNOSIS OR TREATMENT. CENTRAK MAKES NO REPRESENTATIONS, WARRANTIES OR COVENANTS AS TO FITNESS OR SUITABILITY OF THE CENTRAK PRODUCTS FOR ANY PARTICULAR PURPOSE OR SETTING. End User will indemnify, defend and hold CenTrak harmless from and against any and all claims, demands, suits, liabilities, causes of action, losses, expenses, damages, fines, penalties, court costs and reasonable attorneys’ fees arising from or relating to End User’s environment, use of End User or third party products or technologies with the CenTrak Products, use of the CenTrak Products for medical advice, diagnosis or treatment, or use of the CenTrak Products for particular purposes or in particular settings. Certain of the CenTrak Products have been designed for use to assist in the prevention of elopements (wander prevention) and abductions (infant protection), personnel and/or patients in summoning help when they may be are under personal duress (call point and call assist), in the location of assets and/or prevent the loss of an asset, in monitoring temperatures (temperature tags) and/or hand hygiene. The CenTrak Products are dependent on the conditions in which they operate and user dependent and therefore CenTrak cannot guarantee that patients will not elope or be abducted, an asset not be located or lost, personnel and/or patients not be located, or reported when they call for assistance, temperature status or hand washings be missed, miscounted, and/or mismeasured. CenTrak elopement and abduction prevention products when used and maintained properly, can provide information and alarm notification to alert the End User’s staff that a tag has either penetrated a protected portal and/or has been tampered with (applies to supervised tags only). gement Regular testing and maintenance for the CenTrak Products, as supplied and presented in the applicable Documentation, is essential to verify the system is operating correctly and to ensure that the probability of detecting an alarm and locating the Licensed Technology.
8.2 LICENSEE shall have tag are maximized. Failure to undertake regular testing or problem detection and lack of consistent testing and maintenance by the first right (but End User will increase the risk of not the obligation) identifying a system failure and could result in failing to notify an entity detect infant abduction, loss of assets, wandering patient egress attempts, personnel and/or patient duress attempts or individual of using the Trade Secrets events, temperature and/or hand hygiene events. The CenTrak Products are not intended in any way to be a substitute for standard security and initiate legal proceedings to ▇▇▇▇▇ the infringement of a Licensed Technology within LICENSEE'S Field of Use. Avalon agrees to join staffing, temperature maintenance and/or monitoring, and/or hand hygiene procedures, nor should they be relied upon as a party plaintiff replacement of such standard procedures. End User acknowledges and agrees: That quoted CenTrak Products are intended to provide additional safeguards to assist the End User in the prevention of events such as infant abductions, wandering patients, personnel and/or patient duress events, theft, temperature misalignments, hand hygiene failures, or any such lawsuit initiated other event that they may have been purchased for. CenTrak advocates that companies and healthcare facilities establish a comprehensive program of policy and procedures; education of and teamwork by LICENSEEstaff, if requested to do so by LICENSEE, with all costs, attorneys' feessecurity, and expenses risk-management personnel; and coordination of Avalon to be paid by LICENSEEvarious elements of physical and electronic security. Should LICENSEE elect not to institute such an action to enforce the Licensed Technology against infringement within LICENSEE's Field of Use within ninety IN NO EVENT WILL CENTRAK OR ITS LICENSORS OR SUPPLIERS BE LIABLE TO END USER OR ANY THIRD PARTY FOR ANY DIRECT, SPECIAL, INDIRECT, CONSEQUENTIAL, PUNITIVE DAMAGES, OR OTHER DAMAGES INCLUDING BUT NOT LIMITED TO, LOSS OF REVENUES, LOSS OF PROFITS OR LOSS OF DATA, EVEN IF CENTRAK HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. SHOULD THE FOREGOING LIMITATION BE DETERMINED TO BE UNENFORCEABLE IN ANY RESPECT, THE UNENFORCEABLE PART WILL BE DEEMED REMOVED, AND THE REMAINDER WILL REMAIN IN EFFECT; IN ADDITION, IN SUCH CASE, THE TOTAL LIABILITY OF CENTRAK OR ITS LICENSORS OR SUPPLIERS TO END USER OR ANY THIRD PARTY FOR ANY DAMAGES IS LIMITED TO THE AMOUNT PAID DURING THE PRECEDING TWELVE (9012) days after receipt of written notice from Avalon of Avalon's intention to bring suit for such infringementMONTHS TO CENTRAK FOR THE SPECIFIC CENTRAK PRODUCTS CAUSING THE LIABILITY, Aval on shall have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE shall have the right to participate at its own expense in any action brought by AvalonEVEN IF CENTRAK HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Licensed Technology shall be divided between the LICENSEE and Avalon as mutually agreed.
Appears in 1 contract
Sources: End User License Agreement
Infringement. 8.1 7.1. Each party shall promptly give written notice to inform the other party of: (i) promptly in writing of any suspected alleged infringement of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment action PATENT RIGHTS by a third party alleging the invalidity, unenforceability, or noninfril). gement and of the Licensed Technologyany available evidence thereof.
8.2 LICENSEE 7.2. During the term of this Agreement, TEPHA shall have the first right (right, but shall not be obligated, to prosecute at its own expense all infringements of the obligation) to notify an entity or individual PATENT RIGHTS in the FIELD OF USE and, in furtherance of using the Trade Secrets and initiate legal proceedings to ▇▇▇▇▇ the infringement of a Licensed Technology within LICENSEE'S Field of Use. Avalon such right, METABOLIX * CONFIDENTIAL TREATMENT REQUESTED hereby agrees to that TEPHA may join METABOLIX as a party plaintiff in any such lawsuit initiated suit, without expense to METABOLIX. The total cost of any such infringement action commenced solely by LICENSEETEPHA shall be borne by TEPHA. In the event that TEPHA shall have exercised its right to bring an action, TEPHA shall be responsible for defending against any counterclaims alleging invalidity or unenforceability of a PATENT RIGHT and for 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 requested to do so by LICENSEE, with all costs, attorneys' fees, and expenses TEPHA shall notify METABOLIX at any time prior thereto of Avalon to be paid by LICENSEE. Should LICENSEE elect its intention 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 infringementagainst any alleged infringer, Aval on then, and in those events, only, METABOLIX shall have the right (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 expense. If TEPHA shall elect not to take those steps on behalf of itself and LICENSEEdefend, provided that LICENSEE TEPHA shall * CONFIDENTIAL TREATMENT REQUESTED promptly notify METABOLIX. METABOLIX shall have the right right, but not the obligation, to participate defend such suit at its own expense 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 material claims in such PATENT RIGHT claiming the LICENSED PRODUCT or PROCESS is upheld by a court or other 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 LICENSED PRODUCT or PROCESS shall be held to be invalid or otherwise unenforceable by a court or other legal or administrative tribunal in any action brought by Avaloncountry 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, *.
8.3 If LICENSEE leads proceedings 7.7. In any suit as either party may institute to ▇▇▇▇▇ enforce or defend the PATENT RIGHTS pursuant to this Agreement, the other party hereto shall, at the request and remedy infringementexpense of the party initiating such suit, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shallcooperate 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 same pertains to an infringement like. The parties shall keep one another informed of the Licensed Technology status of and of their respective activities regarding any litigation or settlement thereof concerning the PATENT RIGHTS in the FIELD of USE or LICENSED PRODUCTS or PROCESSES ; provided, however, that no settlement or consent judgement or other voluntary final disposition of any suit defended or action brought by a party pursuant to this Article 7 may be entered into without the consent of the other party, such consent not to be unreasonably withheld or delayed. As to the MIT PATENT RIGHTS, no settlement, consent judgement or other voluntary final disposition of the suit may be entered into without the consent of MIT which consent shall not unreasonably be divided between 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 LICENSEE period of this Agreement, shall have the sole right in accordance with the terms and Avalon as mutually agreedconditions herein to sublicense any alleged infringer for future use of the PATENT RIGHTS in the FIELD OF USE.
Appears in 1 contract
Sources: License Agreement (Metabolix, Inc.)
Infringement. 8.1 Each party 7.1 The parties shall promptly give written notice to the inform each other party of: (i) promptly, in writing, of any suspected alleged infringement of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment action Patent Rights by a third party alleging the invalidityparty, unenforceability, or noninfril). gement and of the Licensed Technologyany available evidence thereof.
8.2 7.2 During the term of this Agreement, LICENSEE shall have the first right (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 obligation) to notify an entity or individual Patent Rights and, in furtherance of using the Trade Secrets and initiate legal proceedings to ▇▇▇▇▇ the infringement of a Licensed Technology within LICENSEE'S Field of Use. Avalon such right, RESEARCH FOUNDATION hereby agrees to that LICENSEE may join RESEARCH FOUNDATION as a party plaintiff in any such lawsuit initiated suit, without expense to RESEARCH FOUNDATION. The total cost of any such infringement action except as provided in paragraph 7.4 hereof, commenced or defended solely by LICENSEELICENSEE 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, LICENSEE 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 requested to do so by LICENSEE, with all costs, attorneys' fees, and expenses LICENSEE shall notify RESEARCH FOUNDATION at any time prior thereto of Avalon to be paid by LICENSEE. Should LICENSEE elect its intention 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 infringementagainst any alleged infringer, Aval on then, and in those events only, RESEARCH FOUNDATION shall have the right (right, but shall not the obligation) be obligated, to prosecute at its own expense to take those steps on behalf any infringement of itself the Patent Rights, and LICENSEERESEARCH FOUNDATION may, provided 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 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 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 right, within thirty (30) days after commencement of such action, to participate intervene and take over the sole defense of the action at its own expense except as provided in any action brought by Avalonparagraph 7.4.
8.3 If LICENSEE leads proceedings 7.6 In any infringement suit as either party may institute to ▇▇▇▇▇ enforce the Patent Rights pursuant to this Agreement, the other party hereto shall, at the request and remedy infringementexpense of the party initiating such suit, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shallcooperate 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 same pertains like.
7.7 RESEARCH FOUNDATION warrants and represents that it has the lawful right to an infringement grant the license provided in this agreement and that it has not granted rights or licenses In derogation of this Agreement. RESEARCH FOUNDATION agrees that during the Licensed Technology term of this Agreement, or any license granted hereunder, RESEARCH FOUNDATION shall be divided between not enter into any other agreements that conflict with the LICENSEE rights or obligations provided hereunder, including any rights and Avalon as mutually agreedobligations provided hereunder, including any rights and obligations that survive termination of this Agreement.
Appears in 1 contract
Infringement. 8.1 Each 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 promptly give written notice of such claim to the other party of: (i) any suspected party. Licensor, in consultation with Licensee, shall then use reasonable efforts to terminate such infringement of a Licensed Technology; (ii) if the threat of or filing of any declaratory judgment action by a third party alleging parties mutually agree that such efforts are appropriate under the invalidity, unenforceability, or noninfril)circumstances. gement of In 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 event Licensor fails to ▇▇▇▇▇ the infringement of a Licensed Technology within LICENSEE'S Field of Use. Avalon agrees 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 infringing activity within ninety (90) days after receipt of such written notice from Avalon of Avalon's intention 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 infringementlegal action shall be at the expense of the party by whom suit is filed, Aval 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) damages for lost sales shall be treated as Net Sales (after reasonable costs and expenses of litigation are subtracted), and the royalty due on the corresponding amount of Net Sales shall be paid to Licensor; (b) [***] percent ([***]%) of punitive damages, if any, in excess of damages for lost sales shall be paid to Licensor and the remainder shall be retained by Licensee. Specific terms in 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 this exhibit has been separately filed with the right (but not the obligation) at its own expense to take those steps on behalf of itself Securities and LICENSEEExchange Commission. KUCTC-Reata Confidential [***]
16.3 Licensee and Licensor shall cooperate with each other in litigation proceedings instituted hereunder, provided that LICENSEE shall have the right to participate at its own expense in any action brought by Avalon.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. If Avalon leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology cooperation shall be first applied to reimburse Avalon's unreimbursed expenses at the expense of such proceedingsthe Litigating Party, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Licensed Technology litigation shall be divided between controlled by the LICENSEE and Avalon as mutually agreedLitigating Party.
Appears in 1 contract
Sources: Exclusive License Agreement
Infringement. 8.1 Each party shall promptly give written notice to (a) In the other party of: (i) any suspected infringement of event that a Licensed Technology; (ii) the threat of or filing Party becomes aware of any declaratory judgment action by a third party alleging the invalidity, unenforceability, alleged or noninfril). gement threatened infringement of the Licensed Technology.
8.2 LICENSEE Patents in the Territory, such Party shall promptly notify the other Party in writing. Shionogi shall have the first right (right, but not the obligation) to notify an entity or individual of using the Trade Secrets , at its discretion and initiate legal proceedings to ▇▇▇▇▇ the infringement of a Licensed Technology within LICENSEE'S Field of Use. Avalon agrees to join as a party plaintiff in any such lawsuit initiated by LICENSEEexpense, 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 Patents 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 and to defend the Licensed Patents against any claims of invalidity or unenforceability in the Territory. Peninsula shall give Shionogi all reasonable information and assistance with respect to such enforcement. Except as set forth in Section 12.3(b), any damages or remuneration received as a result of such action shall be [*] after reimbursing for the costs and expenses incurred by Peninsula for its assistance.
(b) Peninsula shall have the right (right, but not the obligation) , at its own expense discretion and expense, to join in such action and seek damages for its lost profits caused by such infringement. Any damages or remuneration received as a result of such action shall be applied first to reimburse each Party for the 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 Parties [*] of the Parties.
(c) If Shionogi does not take those steps on behalf of itself and LICENSEEany legal action for any reason with respect to such infringement within one hundred twenty (120) days following Peninsula's notification, provided that LICENSEE Peninsula shall have the right to participate bring any appropriate suit or action against the infringer at its own expense in any action brought by Avalon.
8.3 If LICENSEE leads proceedings Peninsula's expense. Shionogi shall give Peninsula all reasonable information and assistance with respect to ▇▇▇▇▇ and remedy such infringement, any monetary recovery from the infringement of Licensed Technology . Any damages or remuneration received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses as a result of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. If Avalon leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology action shall be first applied to reimburse Avalon's unreimbursed [*] after reimbursing any cost and expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Licensed Technology shall be divided between the LICENSEE and Avalon as mutually agreedincurred by Shionogi for its assistance.
Appears in 1 contract
Infringement. 8.1 Each party shall promptly give written notice 4.2 If LEUKON or its SUBLICENSEE elects to commence an action as described above, LEUKON may reduce the other party of: (i) any suspected infringement of a Licensed Technology; (ii) royalty due to CBR earned under the threat of or filing of any declaratory judgment action patent subject to suit by a third party alleging * the invalidity, unenforceability, or noninfril). gement amount of the Licensed Technology.
8.2 LICENSEE shall have the first right (but not the obligation) to notify an entity or individual expenses and costs of using the Trade Secrets and initiate legal proceedings to ▇▇▇▇▇ the infringement of a Licensed Technology within LICENSEE'S Field of Use. Avalon agrees to join as a party plaintiff in any such lawsuit initiated by LICENSEEaction, if requested to do so by LICENSEE, with all costs, including attorneys' fees, but in no event shall any royalty be reduced by more than *. In the event that such expenses and expenses costs exceed the amount of Avalon royalties withheld by LEUKON for any calendar year, LEUKON may to be paid by LICENSEE. Should LICENSEE elect not that extent reduce the royalties due 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 CBR from Avalon of Avalon's intention to bring suit for such infringement, Aval on shall have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE shall have the right to participate at its own expense LEUKON in any action brought by Avalonsucceeding calendar years.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery 4.3 Recoveries or reimbursements from the infringement of Licensed Technology received by LICENSEE such action shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. If Avalon leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery LEUKON for litigation costs not paid from the infringement of Licensed Technology shall be first applied to reimburse Avalon's unreimbursed expenses of such proceedingsroyalties (if any), and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court coststo reimburse CBR for royalties withheld. Any remainder shall, to the extent the same pertains to an infringement of the Licensed Technology remaining recoveries or reimbursements shall be divided between the LICENSEE parties as follows.
(i) 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 would have received if such sales had been made by LEUKON; or
(b) As to awards other than lost profits, seventy-five percent (75%) to LEUKON and Avalon twenty-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, controlling such action and retaining all recoveries therefrom.
4.5 In the event that litigation against LEUKON is initiated by a third-party charging LEUKON with infringement of a patent of the third party as mutually agreeda result of the manufacture, use or sale by LEUKON of PRODUCT, LEUKON shall promptly notify CBR in writing thereof. LEUKON'S costs as to any such defense shall be fully creditable against running royalties due and payable to CBR under Paragraph 3.1(a), but in no event shall any royalty be reduced by more than *.
Appears in 1 contract
Sources: License Agreement (Leukosite Inc)
Infringement. 8.1 Each party 10.1.1 LICENSEE shall promptly give written notice to the other party of: (i) notify ULRF of any suspected infringement of a any Licensed Technology; (ii) the threat of or filing of any declaratory judgment action Patent by a third party alleging and furnish ULRF with any available evidence thereof.
10.1.2 ULRF shall have the invalidityright, unenforceabilitybut shall not be obligated, or noninfril). gement to prosecute at its own expense all infringements of the Licensed Technology.
8.2 Patents, and, in furtherance of such right, 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 hereby agrees to join that ULRF may include LICENSEE as a party plaintiff in any such lawsuit initiated suit, without expense to LICENSEE. ULRF shall notify LICENSEE in writing in the event that ULRF decides to initiate suit. The total cost of any such infringement action commenced or defended solely by LICENSEEULRF shall be borne by ULRF and from any recovery or damages for past infringement derived therefrom, if requested to do so by LICENSEE, with all costs, attorneys' ULRF shall be reimbursed its out-of-pocket costs and attorney fees, then ULRF shall receive any sums of money that would have been paid to ULRF if said infringement had not occurred, then LICENSEE shall be reimbursed for any awards characterized as lost profits to LICENSEE if said infringement had not occurred, and expenses then any remaining balance shall be retained by ULRF. In the event that a non-cash cross license is awarded or a non-cash settlement is reached, both Parties agree to negotiate appropriate compensation in good faith.
10.1.3 If, four (4) months after having been notified of Avalon any alleged infringement, ULRF is unsuccessful in persuading the alleged infringer to be paid by LICENSEE. Should desist and ULRF has not brought suit against the alleged infringer, or if ULRF has notified LICENSEE elect at any time prior thereto of its intention 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 infringementagainst any alleged infringer, Aval on then, and in those events only, LICENSEE shall have the right (right, but shall not the obligation) be obligated, to prosecute at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE shall have the right to participate at its own expense in any action brought by Avalon.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Licensed Technology Patent. If LICENSEE chooses to prosecute such a suit, LICENSEE shall notify ULRF in writing within forty-five (45) days after the date ULRF notifies LICENSEE of ULRF's intention not to bring suit. LICENSEE may, for such purposes, withhold up to thirty percent (30%) of royalties otherwise payable to ULRF to offset up to thirty percent (30%) of its infringement litigation expenses. LICENSEE may use the name of ULRF as party plaintiff; provided, however, that such right to bring such an infringement action shall remain in effect only for so long as the license granted herein remains in effect. No settlement, consent judgment or other voluntary final disposition of the suit may be entered into without the consent of ULRF, which consent shall not be unreasonably withheld. LICENSEE shall indemnify ULRF against any order for costs that may be made against ULRF in such proceedings. Any recovery of damages for past infringement delivered therefrom shall first reimburse LICENSEE for any of its out-of-pocket costs and attorney fees, then reimburse ULRF for the thirty percent (30%) of royalties that LICENSEE withheld from ULRF, then reimburse LICENSEE for its lost profits, then reimburse ULRF for any sums of money that would have been paid to ULRF if said infringement had not occurred, and then any balance shall be equally divided between the LICENSEE Parties.
10.1.4 Both Parties shall use reasonable efforts and Avalon as mutually agreedcooperation to terminate infringement without litigation.
Appears in 1 contract
Infringement. 8.1 Each party During the Tenn of this Agreement and any renewal or extensions thereof:
(a) the Licensee shall promptly give written notice notify the Licensor of any and all infringements, illegal use or misuse ("Infringements") of the Licenced Patents, Copyright Works, Trade ▇▇▇▇ or Technical Information as same relates to the other party of: Licenced Products which come to its attention.
(i) any suspected infringement of a Licensed Technology; (iib) the threat 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 obligations under this Agreement. In the event that the Infringement includes any unauthorized production and sale of Licenced Products or filing of any declaratory judgment action Parts by a third party alleging , any compensation resulting therefrom shall be applied as follows: firstly, the invaliditylegal costs incurred by the Licensee in the action; and secondly, unenforceabilitythe 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, or noninfril). gement as the case may be, on the distribution and sale of the Licensed TechnologyLicenced Products and Parts as if same had been distributed and sold by the Licensee and not the infringing party .
8.2 LICENSEE shall have the first right (but not the obligationc) 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 The Licensor agrees to join provide the Licensee with such information and assistance as a party plaintiff in any such lawsuit initiated by LICENSEE, if requested is necessary to do so by LICENSEE, permit the Licensee to deal with all costs, attorneys' fees, and expenses of Avalon Infringements pursuant 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 paragraph (90b) days after receipt of written notice from Avalon of Avalon's intention to bring suit for such infringement, Aval on shall have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE shall have the right to participate at its own expense in any action brought by Avalonabove.
8.3 If LICENSEE leads proceedings (d) Notwithstanding Section 11.01(b) hereof, in the event the Licensor and the Licensee agree to ▇▇▇▇▇ and remedy infringementjointly deal with such Infringement, any monetary recovery compensation resulting from the infringement of Licensed Technology received by LICENSEE joint action shall first be applied to reimburse LICENSEE's unreimbursed expenses in payment of such proceedings the legal costs incurred by the parties and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. If Avalon leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology balance shall be first applied shared by the parties in accordance with the apportionment referred to reimburse Avalon's unreimbursed expenses 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 such proceedings, and then LICENSEE's unreimbursed expenses its covenant set out in section 6.01(c) of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Licensed Technology shall be divided between the LICENSEE and Avalon as mutually agreedthis Agreement.
Appears in 1 contract
Infringement. 8.1 Each party shall promptly give written notice to the other party of: (i) 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 non-infringement 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 , Knight agrees 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 Knight 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 Knight of AvalonKnight's intention to bring suit for such infringement, Aval on Knight shall have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE shall have the right to participate at its own expense in any action brought by AvalonKnight.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then AvalonKnight's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' ’ fees and court costs. If Avalon Knight leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology shall be first applied to reimburse AvalonKnight's unreimbursed expenses of such proceedings, and then LICENSEE's ’s unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' ’ fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Licensed Technology shall be divided between the LICENSEE and Avalon Knight as mutually agreed.
Appears in 1 contract
Infringement. 8.1 Each party shall promptly give written notice to 11.1 During the other party of: (i) any suspected infringement term of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment action by a third party alleging the invaliditythis Agreement, unenforceability, or noninfril). gement of the Licensed Technology.
8.2 LICENSEE shall have the first option to police the Licensed Patents and Products against infringement within the Field of Use by other parties. This right to police includes defending any action for declaratory judgment of noninfringement or invalidity; and prosecuting, defending or settling all infringement and declaratory judgment actions at its expense and through counsel of its selection, except that any such settlement shall only be made with the advice and consent of MICHIGAN. MICHIGAN shall provide reasonable assistance to LICENSEE with respect to such actions, provided LICENSEE shall reimburse MICHIGAN for out-of-pocket expenses incurred in connection with any such assistance rendered at LICENSEE’ request or reasonably required by MICHIGAN. In the event LICENSE elects to institute any such action or suit, MICHIGAN agrees to be named as a nominal party therein. MICHIGAN retains the right to participate, with counsel of its own choosing, in any action under this Paragraph 11.1.
11.2 In the event that LICENSEE shall institute an action for infringement of a License Patent or defend a declaratory judgment or other action with respect to a Licensed Patent, any portion of any resulting settlement payments or damages awarded which is received by LICENSEE, less LICENSEE’s actual outside attorney fees and other direct, out-of-pocket litigation expenses, including expenses due MICHIGAN for its participation in said litigation as provided under Paragraph 11.1 (but not to include any compensation paid to employees of LICENSEE or Sublicensees) paid and unrecovered by LICENSEE, shall be paid 75% to LICENSEE and 25% to MICHIGAN within 30 days of the obligation) receipt thereof.
11.3 In the event that LICENSEE fails to notify an entity or individual of using the Trade Secrets and initiate legal proceedings take action to ▇▇▇▇▇ the any alleged infringement of a Licensed Technology License Patent within LICENSEE'S Field sixty (60) days of Use. Avalon agrees to join as a party plaintiff in any such lawsuit initiated request by LICENSEE, if requested MICHIGAN to do so by LICENSEE(or within such shorter period which might be required to preserve the legal rights or MICHIGAN under the laws of any relevant government or political subdivision thereof), 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 have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE then MICHIGAN shall have the right to participate take such action (including prosecution of a suit) at its own expense and LICENSEE shall use reasonable efforts to cooperate in such action, at LICENSEE’s expense. In the event MICHIGAN elects to *** Material has been omitted pursuant to a request for confidential treatment. institute any such action brought by Avalon.
8.3 If or suit, LICENSEE leads proceedings agrees to ▇▇▇▇▇ and remedy infringementbe named as a nominal party therein. MICHIGAN shall have full authority to settle on such terms as MICHIGAN shall determine, except that MICHIGAN shall not reach any monetary recovery from settlement whereby it licenses a third party under any Licensed Patents in the infringement Field of Licensed Technology Use without the consent of LICENSEE, which consent can be withheld for any reason. Any portion of any resulting settlement payments or damages awarded which is received by MICHIGAN, less MICHIGAN’s actual outside attorney fees and other direct, out-of-pocket litigation expenses (not to include nay compensation paid to employees of MICHIGAN) paid and unrecovered by MICHIGAN, and after payment to LICENSEE shall first be applied (such payment not to reimburse LICENSEE's unreimbursed exceed the recovery or settlement amounts actually received by MICHIGAN) of any unrecovered expenses paid by LICENSEE at MICHIGAN’s request to third parties in furtherance of such proceedings and then Avalon's unreimbursed expenses of such proceedingsactions, including without limitation, reasonable attorneys' fees and court costs. If Avalon leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology shall be first applied paid 25% to reimburse Avalon's unreimbursed expenses of such proceedings, LICENSEE and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, 75% to the extent the same pertains to an infringement MICHIGAN within 30 days of the Licensed Technology shall be divided between the LICENSEE and Avalon as mutually agreedreceipt thereof.
Appears in 1 contract
Sources: License Agreement (Intralase Corp)
Infringement. 8.1 Each party shall promptly give Company will defend, at its own expense, any action against MassRoots based on a claim that the 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 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 other party ofCannaRegs 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: (ia) 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 suspected claim of infringement of a Licensed Technology; (ii) patent, copyright or other intellectual property right or trade secret misappropriation, based on the threat of or filing of any declaratory judgment action by a third party alleging the invalidity, unenforceability, or noninfril). gement use 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 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 have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE shall have the right to participate at its own expense in any action brought by Avalon.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, CannaRegs Non-Cannabis Intellectual Property under this Agreement to the extent that the same pertains CannaRegs Non-Cannabis Intellectual Property is held by CannaRegs immediately prior to an infringement 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 third parties or constituting a misappropriation of the Licensed Technology shall be divided between the LICENSEE and Avalon as mutually agreedtrade secrets of third parties.
Appears in 1 contract
Sources: License Agreement (MassRoots, Inc.)
Infringement. 8.1 Each party 14.1 Subject to Article 13.3 hereof, NTI and Merz shall render to CMCC all reasonable assistance as may be ▇▇▇uired to preserve the validity and enforceability of the CMCC Patents in the Territory. NTI and Merz shall promptly give written notice to the other party of: notify CMCC in writing (i) 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 all infr▇▇▇▇▇ ments, imitations, illegal use, misuse, or misappropriation, by any third party of the CMCC Patents which come to their attention, and (ii) of any claims or objections that Merz and/or NTI's use of the CMCC Patents hereunder may or will i▇▇▇▇nge the copyrights, patents, designs, trademarks or other proprietary rights of any other third party. CMCC as the owner or authorized licensee of the CMCC Patents, shall be responsible for taking any action or initiating any proceedings which CMCC, in its sole discretion, determines to be necessary or appropriate to prevent any infringement of the CMCC Patents, and NTI and Merz shall provide CMCC with such assistance as may be reasonably r▇▇▇▇sted in connection with any such action or proceeding.
14.2 If CMCC fails to or decides not to take any action or to initiate proceedings necessary to prevent the infringement of a Licensed Technology the CMCC Patents within LICENSEE'S Field of Use. Avalon agrees 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 sixty (9060) days after receipt of written notice from Avalon of Avalon's intention to bring suit for such infringement, Aval on shall have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE Merz shall have the right to participate at its own expense in any take such action brought by Avalon.
8.3 If LICENSEE leads proceedings or to initiate such ▇▇▇ceedings to enforce and/or defend the CMCC Patents. In the event that Merz undertakes the enforcement and/or the defense of the CMCC P▇▇▇▇ts by litigation, Merz may withhold the one-half of the payments otherwise due to C▇▇▇ under Article 8 hereof and remedy infringementapply the same toward reimbursement of Merz' expenses, any monetary recovery from including reasonable attorney's fees, in connectio▇ ▇herewith. Subject to these set-off rights of Merz to recover costs and expenses of the infringement of Licensed Technology received litigation, a▇▇ ▇amages recovered by LICENSEE shall first Merz in such litigation will be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. If Avalon leads proceedings to allocated among the parties in a▇▇▇▇dance with the percentage share of the Royalty Income as set forth in Exhibit C hereto.
14.3 NTI and CMCC shall render to Merz all reasonable assistance as may be required to preserve the ▇▇▇idity and enforceability of Merz' rights, title and interests in and to the Merz Patents or oth▇▇ Intellectual Property Rights in its Product▇. ▇TI and remedy infringementCMCC agree that they shall promptly notify Merz in writing (i) of any and all infringements, imitations, ▇▇legal use, misuse, or misappropriation, by any monetary recovery from third party of the infringement Merz Patents or other Intellectual Property Rights which come t▇ ▇▇s attention, and (ii) of Licensed Technology any claims or objections that any use of the Merz Patents or other Intellectual Property Rights, if any, ▇▇▇ or will infringe the copyrights, patents, designs, trademarks or other proprietary rights of any other third party. Merz as the owner or authorized licensee of the Merz Patents or othe▇ ▇▇tellectual Property Rights, shall be first applied respon▇▇▇▇e for taking any action or initiating any proceedings which Merz, in its sole discretion, determines to reimburse Avalon's unreimbursed expenses of such proceedingsbe necessary or appropri▇▇▇ to prevent any infringement the Merz Patents and/or other Intellectual Property Rights, and then LICENSEE's unreimbursed expenses of NTI a▇▇ ▇MCC shall provide Merz with such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Licensed Technology shall assistance as may be divided between the LICENSEE and Avalon as mutually agreedreasonably requested by Merz i▇ ▇▇nnection with any such action or proceeding.
Appears in 1 contract
Sources: License and Cooperation Agreement (Neurobiological Technologies Inc /Ca/)
Infringement. 8.1 Each party 7.1 LICENSEE shall inform CMCC promptly give written notice to the other party of: (i) in writing of any suspected alleged infringement of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment action Patent Rights by a third party alleging the invalidity, unenforceability, or noninfril). gement and of the Licensed Technologyany available evidence thereof.
8.2 7.2 During the term of this Agreement, LICENSEE shall have the first right (right, but shall not be obligated, to prosecute at its own expense any such infringements of the obligation) to notify an entity or individual Patent Rights and, in furtherance of using the Trade Secrets and initiate legal proceedings to ▇▇▇▇▇ the infringement of a Licensed Technology within LICENSEE'S Field of Use. Avalon such right, CMCC hereby agrees to that LICENSEE may join CMCC as a party plaintiff in any such lawsuit initiated by LICENSEEsuit, if requested without expense to do so by LICENSEE, with all costs, attorneys' fees, and expenses of Avalon to be paid by LICENSEE. Should The total cost of any such infringement action commenced or defended solely by LICENSEE elect 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, LICENSEE shall have been unsuccessful in persuading the alleged infringer to desist and shall not to institute such have brought and shall not be diligently prosecuting an action to enforce the Licensed Technology against infringement within LICENSEE's Field action, or if LICENSEE shall notify CMCC at any time prior thereto of Use within ninety (90) days after receipt of written notice from Avalon of Avalon's its intention not to bring suit for such infringementagainst any alleged infringer, Aval on then, and in those events only, CMCC shall have the right (right, but shall not the obligation) be obligated, to prosecute at its own expense to take those steps on behalf any infringement of itself and LICENSEEthe Patent Rights. No settlement, provided consent judgment of other voluntary final disposition of the suit may be entered into without the consent of the party not bringing the suit, 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 fifty percent (50%) of the royalties otherwise thereafter due CMCC 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, next toward reimbursement of CMCC for any royalties past due or withheld and applied pursuant to this Article VII, and to royalties due to CMCC for infringing sales as if sales had been made by LICENSEE. The balance remaining from any such recovery shall belong to LICENSEE.
7.5 In the event that a declaratory judgment action alleging invalidity or non-infringement of any of the Patent Rights shall be brought against LICENSEE, CMCC, at its option, shall have the right right, within thirty (30) days after commencement of such action, to participate intervene and take over the sole defense of the action at its own expense in any action brought by Avalonexpense.
8.3 If LICENSEE leads proceedings 7.6 In any infringement suit as either party may institute to ▇▇▇▇▇ enforce the Patent Rights pursuant to this Agreement, the other party hereto shall, at the request and remedy infringementthe expense of the party initiating such suit, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shallcooperate 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 same pertains like.
7.7 LICENSEE, during the period of this Agreement, shall have the sole right in accordance with the terms and conditions herein to an infringement sublicense any alleged infringer for the Field of Use for future use of the Licensed Technology shall be divided between the LICENSEE and Avalon as mutually agreedPatent Rights.
Appears in 1 contract
Sources: License Agreement (Urosurge Inc)
Infringement. 8.1 Each party 15.1 The REPRESENTATIVE and ARKEMA shall promptly give written notice to the keep each other party of: (i) any suspected infringement of a Licensed Technology; (ii) the threat of or filing fully and rapidly informed with respect of any declaratory judgment action by third party infringement in relation to PATENTS of which they may become aware and/or of any infringement claims or actions which may be taken against them in respect of the PATENTS.
15.2 Should there be a third party alleging the invalidity, unenforceability, or noninfril). gement infringement of the Licensed TechnologyPATENTS in the FIELD, the CO- OWNERS may at their sole expense undertake a legal action against the infringing party with the understanding that any compensation and damages awarded therefore are fly and irrevocably granted to them. The foregoing shall not prevent ARKEMA from intervening in any such action at its sole expense in compensation for its own prejudice. Any indemnification or damages which may be awarded by a court decision for said prejudice will belong entirely to ARKEMA, subject to the SUBLICENSE REVENUES definition.
8.2 LICENSEE shall have 15.3 As an exclusive licensee under the first right (but PATENTS for the PRODUCTS 1 and in the FIELD only, ARKEMA is not entitled to undertake legal action against an infringing party based on the obligation) PATENTS’ infringement. Should the CO-OWNERS decide not to notify an entity or individual of using undertake such legal action against the Trade Secrets infringing party and initiate legal proceedings to provided that ▇▇▇▇▇▇ has expressed its wish to do so, the infringement of a Licensed Technology within LICENSEE'S Field of Use. Avalon agrees to join as a party plaintiff in any such lawsuit initiated by LICENSEEREPRESENTATIVE may, if requested it wishes so and subject to do so by LICENSEEthe rights already granted to third parties under the PATENTS and in the TERRITORY, with all costs, attorneys' fees, and expenses of Avalon authorize ARKEMA to be paid by LICENSEE. Should LICENSEE elect not to institute undertake 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 have the right (but not the obligation) at its own expense initiative and in its sole name. For the avoidance of doubt, nothing in the present Article shall be deemed as obliging any CO-OWNER to take those steps on behalf of itself authorize ARKEMA to undertake said legal action. In such event, any legal costs and LICENSEEany damages awarded by a court decision in relation with PATENTS infringement shall belong entirely to ARKEMA, provided subject to the SUBLICENSE REVENUES definition. These provisions will apply, subject to mandatory legal provisions applicable in the country where the infringement has occurred. Should an action in infringement be declared inadmissible owing ARKEMA not having the capacity to act, or if it can reasonably be anticipated that LICENSEE shall have the right to participate at its own expense in any an action brought by Avalon.
8.3 If LICENSEE leads proceedings to which ▇▇▇▇▇▇ and remedy infringementproposes to bring is declared inadmissible for that reason, any monetary recovery from the infringement of Licensed Technology received by LICENSEE CO-OWNERS shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedingsprovide, including without limitation, reasonable attorneys' fees and court costs. If Avalon leads proceedings to upon ▇▇▇▇▇▇’▇ and remedy infringementwritten request, all powers which might be necessary to act instead of the CO-OWNERS. In such event, any monetary recovery from the legal costs and any damages awarded by a court decision in relation with PATENTS infringement of Licensed Technology shall be first applied belong entirely to reimburse Avalon's unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, ARKEMA subject to the extent SUBLICENSING REVENUES definition. It is specified that the same pertains provisions of this Article 15.3 will not apply to an cases of infringement of the Licensed Technology PATENTS outside the FIELD and TERRITORY, which fall solely within the competence of the CO-OWNERS or any third party designated by them. Should (i) the CO-OWNERS decide not to undertake a legal action against an infringing party and (ii) ARKEMA be not authorized by the CO-OWNERS or be entitled under the law of the country where the potential infringement occurs to bring a legal action based on the PATENTS’ infringement, paragraphs (i) and (ii) above being cumulative, the PARTIES will define in good faith a reduced royalty rate applicable on the NET SALES in the said country.
15.4 Should any infringement suit be brought against ARKEMA, its AFFILIATES, its SUBLICENSEES and/or its DISTRIBUTORS with respect to the commercial exploitation of PRODUCTS due to the use of the PATENTS and/or the implementation of the PATENTS in the FIELD, the CO-OWNERS shall provide ARKEMA with the documents and reasonable assistance which may be divided between required for its defense and/or defense of its AFFILIATES, its SUBLICENSEES and/or its DISTRIBUTORS, but subject to compliance with the LICENSEE interests of all licensees of the PATENTS. If such an action for infringement is found to be admissible, ARKEMA will hold the CO-OWNERS harmless; in accordance with the provisions of Article 11, ARKEMA will not be permitted to call any guarantee and Avalon cannot claim any compensation from the CO-OWNERS, and ARKEMA cannot claim any refund of amounts of any kind already paid to the REPRESENTATIVE, nor any reduction in amounts due at the time of the final court decision. In the event of cancellation of any of the PATENTS, the provisions of Articles 11 and 12 will be applied, and no waivers may be permitted.
15.5 The PARTIES agree to provide each other with any documents and assistance (except for financial assistance) which may be required for the above mentioned actions.
15.6 Notwithstanding early termination or expiration of the present Agreement, provisions of the present Article 15 shall remain in full effect as mutually agreedlong as actions in infringement may be undertaken against or by ARKEMA, its AFFILIATES and/or its SUBLICENSEES on the grounds of the use of the PATENTS.
Appears in 1 contract
Sources: License Agreement
Infringement. 8.1 Each party 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 promptly give written notice have the right at its discretion and expense either to: (a) procure for Customer the right to continue to use and exploit such Services, Work Product and/or Vendor Proprietary Information in the manner as contemplated in this Agreement; or (b) modify such Services, Work Product and/or Vendor Proprietary Information to render them non-infringing, provided that such modification does not adversely affect Customer’s use or exploitation thereof, or any other party ofCustomer rights as contemplated hereunder. If neither of these remedies are reasonably available to Vendor, Vendor may require Customer to cease using the 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 pro-rated refund based on a 5 year amortization schedule for the infringing Services, Work Product and/or Vendor Proprietary Information. Vendor shall have no liability for any infringement claim based upon: (i) any suspected alteration or modification of any Services, Work Product and/or Vendor Proprietary Information not provided by Vendor, if the infringement of a Licensed Technologywould not have occurred but for the unauthorized alteration or modification by Customer provided any authorization must be expressly provided in writing by Vendor; (ii) the threat of or filing of any declaratory judgment action unauthorized use by a third party alleging the invalidity, unenforceability, or noninfril). gement Customer of the Licensed Technology.
8.2 LICENSEE shall have Services, Work Product and/or Vendor Proprietary Information in combination with other programs or data not intended by Vendor to be used with the first right (but not Services, Work Product and/or Vendor Proprietary Information(s), as the obligation) to notify an entity or individual of using the Trade Secrets and initiate legal proceedings to ▇▇▇▇▇ case may be, if the infringement of a Licensed Technology within LICENSEE'S Field of Use. Avalon agrees 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 would 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 have occurred but for such infringementunauthorized use in combination with such programs or data; provided any authorization must be expressly provided in writing by Vendor; (iii) Vendor’s compliance with Customer’s designs, Aval on shall have the right specifications or instructions; or (but not the obligationiv) at its own expense to take those steps on behalf of itself and LICENSEE, any Customer provided that LICENSEE shall have the right to participate at its own expense in any action brought by Avalon.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from intellectual property if the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. If Avalon leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from would not have occurred but for the infringement of Licensed Technology shall be first applied to reimburse Avalon's unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Licensed Technology shall be divided between the LICENSEE and Avalon as mutually agreedCustomer intellectual property.
Appears in 1 contract
Sources: Master Professional Services Agreement (Virtusa Corp)
Infringement. 8.1 Each party shall promptly give written notice to the other party of: (ia) If HPI learns of any suspected substantial infringement of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment action by a third party alleging 412 Patent Rights, HPI shall so inform Callisto. During the invalidityTerm, 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 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 have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE Callisto shall have the right to participate 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 if HPI or the Inventors are determined by a court to be a necessary or required party in any action such suit, then no consent shall be required. If, 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 retain to represent them in the suit.
(b) Recoveries from actions brought by AvalonCallisto 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, controlling such action. In the event that HPI does not elect to exercise its right to prosecute an infringement on the 412 Patent Rights pursuant to this 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 HPI or the Inventors, as applicable.
8.3 If LICENSEE leads (c) Each party shall cooperate with the other in litigation proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from at the infringement expense of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court coststhe party bringing suit. If Avalon leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology Litigation shall be first applied to reimburse Avalon's unreimbursed expenses controlled by the party bringing the suit, except that HPI and the Inventors may be represented by counsel of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to the extent the same pertains to an infringement of the Licensed Technology shall be divided between the LICENSEE and Avalon as mutually agreedtheir choice in any suit brought by Callisto.
Appears in 1 contract
Sources: Sublicense Agreement (Callisto Pharmaceuticals Inc)
Infringement. 8.1 7.1 Each party shall promptly give written notice to inform the other party of: (i) promptly in writing of any suspected alleged infringement of a Licensed Technology; (ii) the threat of or filing of any declaratory judgment action PATENT RIGHTS by a third party alleging party, including all details then available. So long as the invalidityLicense is exclusive, 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 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 have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE COMPANY shall have the right to participate prosecute in its own name and at its own expense in any action brought by Avaloninfringement of any patent within PATENT RIGHTS.
8.3 7.2 If LICENSEE leads proceedings COMPANY elects to ▇▇▇▇▇ commence an action as described above, COMPANY shall bear all expenses related to such action and remedy infringementGENERAL 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 monetary recovery 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) COMPANY and GENERAL shall be reimbursed litigation expenses, including but not limited to reasonable attorneys’ fees; (b) GENERAL shall be reimbursed for any payments past due; and (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 Licensed Technology received by LICENSEE written notification from GENERAL, GENERAL may prosecute such an infringement at its own expense. In such event, GENERAL shall first control the action and shall distribute any recoveries or reimbursements as follows: (a) COMPANY and GENERAL shall be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedingsreimbursed litigation expenses, including without limitation, but not limited to reasonable attorneys' fees ’ fees; and court costs(b) any remaining recoveries or 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 non-infringement of any of the patents in PATENT RIGHTS is brought against COMPANY or GENERAL, COMPANY shall have the right to control such action by written notice to GENERAL given within sixty (60) days of notice of the suit. If Avalon leads proceedings COMPANY does not give such notice within sixty (60) days after such notice of commencement of that action, GENERAL may elect 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 other party shall, at the request and remedy infringementexpense of the party bringing the suit, any monetary recovery from the infringement of Licensed Technology shall be first applied to reimburse Avalon's unreimbursed expenses of such proceedingscooperate in all reasonable respects, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shallincluding, to the extent possible, obtaining the same pertains to an infringement testimony of its employees and making available physical evidence in the Licensed Technology shall be divided between the LICENSEE and Avalon as mutually agreedpossession of that party.
Appears in 1 contract
Infringement. 8.1 Each party shall promptly give written notice to the other party of: (i8.1. LICENSEE or its SUBLICENSEE(s) 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 to prosecute in their own name and at their own expense any infringement of the obligation) PATENT RIGHTS, so long as the license is effective at the time such legal action is commenced. LICENSOR agrees to notify an entity or individual LICENSEE promptly of using the Trade Secrets and initiate legal proceedings to ▇▇▇▇▇ the each infringement of a Licensed Technology within LICENSEE'S Field the PATENT RIGHTS of Usewhich LICENSOR becomes aware. Avalon 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 as a party plaintiff in any such lawsuit initiated by LICENSEE, if requested to do so by LICENSEE, with all costs, attorneys' fees, attorney fees and expenses of Avalon to be paid by LICENSEE.
8.3. Should 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 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 have the right (but not the obligation) at its own expense to take those steps on behalf of itself and LICENSEE, provided that LICENSEE shall have the exercise their right to participate at its own expense in any action brought by Avalon.
8.3 If LICENSEE leads proceedings to ▇▇▇▇▇ and remedy infringement, any monetary recovery from the infringement of Licensed Technology received by LICENSEE shall first be applied to reimburse LICENSEE's unreimbursed expenses of such proceedings and then Avalon's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court 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 unreimbursed expenses of such proceedings, and then LICENSEE's unreimbursed expenses of such proceedings, including without limitation, reasonable attorneys' fees and court costs. Any remainder shall, to the extent the same pertains to prosecute or defend an infringement of the Licensed Technology shall be divided between PATENT RIGHTS, LICENSOR may do so at its own expense, controlling such action and retaining all recoveries.
8.6. If a declaratory judgment action alleging invalidity of any of the PATENT RIGHTS is brought against LICENSEE or LICENSOR, then LICENSOR, at its sole option, has the right to intervene and Avalon as mutually agreedtake over the defense of the action at its own expense.
Appears in 1 contract
Sources: Exclusive License Agreement (Arno Therapeutics, Inc)