Common use of Deductions from Payments Clause in Contracts

Deductions from Payments. If in GenMark’s reasonable business judgment it is necessary or desirable to seek a license or immunity from suit from any Third Party in order for GenMark its Affiliates, distributors or Sublicensees, to exercise or use the rights granted to GenMark herein, or GenMark its Affiliates, distributors or Sublicensees, is otherwise required to pay to any Third Party any fee, royalty or other payment in connection with a right or license under any Third Party Digital Microfluidics or Digital Microfludies Related intellectual property to practice any Digital Microfluidics or Digital Microfludics Related technology for a Licensed Product under this Agreement, GenMark shall have the right to set off any amounts paid to such Third Party, including fee, royalty or other payment, against payment of up to *** of the royalty or Additional Margin payments otherwise payable hereunder; provided that in no event shall royalties or Additional Margin otherwise payable to ALL hereunder be reduced to less than *** of what would otherwise be owed be prior to any set off taken under this Section 6.11. Such right of offset shall be in addition to, and not in lieu of, any other rights or claims GenMark may have under this Agreement or otherwise. Prior to GenMark engaging in formal negotiations to incur any obligation to pay any Third Party any fee, royalty or other payment in connection with a right or license under any Third Party Digital Microfluidics intellectual property to practice any Digital Microfluidics technology for a Licensed Product under this Agreement, GenMark shall notify ALL of its intent to do so, and ALL shall have *** Portions of this page have been omitted pursuant to a request for Confidential Treatment filed separately with the Commission. thirty (30) days, or such other time as the Parties may agree, to obtain such right or license for the benefit of GenMark prior to GenMark incurring such obligation. Nothing in this Section 6.11 shall limit the rights of GenMark set forth in Section 9.5.

Deductions from Payments. If GenMark has obtained or in GenMark’s reasonable business judgment it is necessary or desirable to seek the future obtains a license or immunity from an infringement suit from any Third Party in order for GenMark pursuant to which GenMark, its Affiliates, distributors or Sublicensees, to exercise or use the rights granted to GenMark herein, or GenMark its Affiliates, distributors or Sublicensees, is otherwise Sublicensees is/are required to pay to any Third Party any fee, royalty or other payment in connection with a right or license under any Third Party Digital Microfluidics or Digital Microfludies Related intellectual property rights to practice any Digital Microfluidics make, have made, use, offer for sale, sell or Digital Microfludics Related technology for a import Licensed Product under this AgreementProducts, GenMark shall have the right to set off any and all amounts paid to such Third Party, including fee, royalty or other paymentpayments, against payment of up to *** of the royalty or Additional Margin payments otherwise payable hereunder; provided that in no event shall royalties or Additional Margin otherwise payable to ALL and/or an ALL Affiliate hereunder be reduced to less than *** of what would otherwise be owed be prior to any set off taken under Net Sales of GenMark Manufactured Consumables during each Calendar Quarter during the Term of this Section 6.11Agreement in which GenMark records Net Sales of GenMark Manufactured Consumables. Such right of offset shall be in addition to, and not in lieu of, any other rights or claims GenMark may have under this Agreement or otherwise.” 14. Prior to GenMark engaging Section 7.4 of the Agreement is hereby deleted in formal negotiations to incur any obligation to pay any Third Party any fee, royalty or other payment its entirety. 15. The second sentence of Section 8.1 of the Agreement is hereby deleted in connection its entirety and replaced with a right or license under any Third Party Digital Microfluidics intellectual property to practice any Digital Microfluidics technology for a Licensed Product under the following: “During the Development Term and the remainder of the Term of this Agreement, ALL shall, upon GenMark’s written request, but in any event no more frequently than once every six (6) months, disclose to GenMark all Patents within the ALL IP Rights (including in each case, any such Patents of which ALL acquires Control after the Effective Date).” 16. Section 10.4 of the Agreement is hereby deleted in its entirety and replaced with “Intentionally omitted.” 17. Section 15.9 of the Agreement is hereby amended to replace the “Notices to ALL” with the following: “Notices to ALL: Advanced Liquid Logic, Inc. ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇ ▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇ Attention: General Counsel with a copy to: ▇▇▇▇▇▇▇▇▇▇▇▇@▇▇▇▇▇▇▇▇.▇▇▇.” 18. Except as expressly modified hereby, all of the terms and conditions of the Agreement shall notify ALL of its intent continue to do so, apply and ALL shall have remain unmodified and in full force and effect. *** Portions of this page have been omitted pursuant to a request for Confidential Treatment filed separately with the Commission. thirty (30) days, or such other time as the Parties may agree, to obtain such right or license for the benefit of GenMark prior to GenMark incurring such obligation. Nothing in this Section 6.11 shall limit the rights of GenMark set forth in Section 9.5.