Common use of Enforcement and Defense of Patents Clause in Contracts

Enforcement and Defense of Patents. A. ▇▇▇▇ intends to protect the Licensed Patents against infringers or otherwise act to eliminate infringement, when, in W▇▇▇’▇ sole judgment, such action may be reasonably necessary, proper, and justified. In the event that TomoTherapy believes there is infringement of any Licensed Patent under this Agreement which is to TomoTherapy’s substantial detriment, TomoTherapy shall provide W▇▇▇ with written notice that such infringement is occurring including reasonable evidence of the infringement. W▇▇▇ shall have the right to determine the best course of action to resolve such infringement, including but not limited to, the right to settle such infringement by negotiating a license with such infringer. The license terms, fees and royalties shall be on terms no more favorable in the aggregate to the Licensee than (those contained in the sublicense most favorable to TomoTherapy granted by TomoTherapy. In the event that W▇▇▇ licenses such infringer W▇▇▇ shall share the income from such license with TomoTherapy as set forth in this Section 9A. Upon request by W▇▇▇, TomoTherapy shall take action, join in an action, and otherwise provide W▇▇▇ with such assistance and information as may be useful to W▇▇▇ in connection with W▇▇▇’▇ taking such action (if the cause of action arose during the term of this Agreement and W▇▇▇ reimburses TomoTherapy for TomoTherapy’s reasonable out-of-pocket expenses). Any recovery or damages for infringement or license fees or royalties obtained through any settlement of infringement claims, except enhanced damages, derived through W▇▇▇ taking such action shall be applied as follows: (a) first, to W▇▇▇ to reimburse W▇▇▇ for expenses incurred in litigation or negotiating a settlement, including reasonable attorneys’ fees, (b) second, to TomoTherapy to reimburse TomoTherapy for its reasonable expenses in assisting with same, including reasonable attorneys’ fees, and (c) the balance of any recovery or damages shall be divided [ * ] percent ([ * ]%) to TomoTherapy and [ * ] percent ([ * ]%) to W▇▇▇. If W▇▇▇ does not take action to a▇▇▇▇ the infringement of the Licensed Patents within [ * ] of receiving the notice described above, TomoTherapy may request that W▇▇▇ do so and W▇▇▇ will comply as long as TomoTherapy reimburses W▇▇▇ each month for [ * ] percent ([ * ]%) of W▇▇▇’▇ actual expenses incurred in bringing such action. Such expenses may be billed by W▇▇▇ as frequently as monthly and shall be paid by TomoTherapy to W▇▇▇ on a net thirty (30) days basis. Late payments shall be subject to the interest provisions set forth in Section 3F(i) for late payments. TomoTherapy shall be reimbursed for its contribution to the cost of litigation or settlement from the proceeds of such action as described in this Section 9A. TomoTherapy shall not have the right to bring any infringement action or enforce the Licensed Patents without W▇▇▇’▇ prior, written consent. B. In the event of a declaratory judgment action brought by a third party, W▇▇▇ shall have the exclusive right to defend the Licensed Patents by litigation or settlement, including the right to grant licenses to third parties bringing such action. In the event that W▇▇▇ licenses such third party W▇▇▇ shall share the income from such license with TomoTherapy as set forth in Section 9A. C. ▇▇▇▇ agrees that if it determines to resolve any infringement or litigation by the grant of a license to the infringer or third party litigant, it will first offer in writing to allow TomoTherapy to negotiate a sublicense with such party. If TomoTherapy is not successful in negotiating a sublicense agreement within six (6) months of such notification or if time becomes of the essence in negotiating a license agreement to settle the infringement litigation, WARF may directly negotiate and grant such a license to such third party and will share any revenue generated by such license with TomoTherapy in accordance with Section 9A.

Enforcement and Defense of Patents. A. ▇▇▇▇ intends to protect (a) Each Party shall give the Licensed Patents against infringers or otherwise act to eliminate infringementother Party notice, whenpromptly after becoming aware, in W▇▇▇’▇ sole judgment, such action may be reasonably necessary, proper, and justified. In the event that TomoTherapy believes there is of any infringement of any Licensed Patent under this Agreement which is to TomoTherapy’s substantial detrimentCytoDyn Patents, TomoTherapy shall provide W▇▇▇ with written notice that where such infringement is occurring including reasonable evidence concerns the Commercialization, manufacture, importation, use, offer for sale or sale of a Licensed Product in the infringementField in the Territory (a “Licensed Product Infringement”). W▇▇▇ CytoDyn shall have the sole right to determine initiate and prosecute any legal action at its sole expense in its name with respect to CytoDyn Patents, and to also control the best course defense of any declaratory judgment action relating to such Licensed Product Infringement; provided that no settlement, or consent judgment or other voluntary final disposition of the suit that relates to the Licensed Product in the Field in the Territory may be entered into without the consent of Vyera, which consent shall not be unreasonably withheld, conditioned or delayed. (b) For any action to resolve terminate any Licensed Product Infringement, Vyera will provide reasonable cooperation and will provide CytoDyn with any information or assistance that CytoDyn may reasonably request, at the expense of CytoDyn. CytoDyn shall keep Vyera informed of developments in any such infringementaction or proceeding as such may relate to Commercialization, including but not limited toincluding, to the extent permissible by Applicable Law, the right to settle such infringement by negotiating a license with such infringer. The license terms, fees and royalties shall be on terms no more favorable in the aggregate to the Licensee than status of any settlement negotiations. (those contained in the sublicense most favorable to TomoTherapy granted by TomoTherapy. In the event that W▇▇▇ licenses such infringer W▇▇▇ shall share the income from such license with TomoTherapy as set forth in this Section 9A. Upon request by W▇▇▇, TomoTherapy shall take action, join in an action, and otherwise provide W▇▇▇ with such assistance and information as may be useful to W▇▇▇ c) Any recovery obtained in connection with W▇▇▇’▇ taking such or as a result of any action (if the cause of action arose during the term of to terminate any Licensed Product Infringement contemplated by this Agreement and W▇▇▇ reimburses TomoTherapy for TomoTherapy’s reasonable out-of-pocket expenses). Any recovery Section 2.4, whether by settlement or damages for infringement or license fees or royalties obtained through any settlement of infringement claimsotherwise, except enhanced damages, derived through W▇▇▇ taking such action shall be applied as follows: (a) first, to W▇▇▇ to reimburse W▇▇▇ for first in satisfaction of any costs and expenses incurred by CytoDyn in litigation or negotiating a settlement, including reasonable attorneys’ fees, (b) second, to TomoTherapy to reimburse TomoTherapy for its reasonable expenses connection with the action; and next in assisting with same, including reasonable attorneys’ fees, and (c) the balance satisfaction of any recovery or damages unreimbursed costs and expenses incurred by Vyera in connection with the action. The balance, if any remaining after the Parties have been compensated for such costs and expenses shall be divided [ * ] percent allocated between the Parties with any recovery of ordinary damages based upon Licensed Product Infringement ([ * ]%) to TomoTherapy and [ * ] percent ([ * ]%) to W▇▇▇. If W▇▇▇ does not take action to a▇▇▇▇ the infringement of the Licensed Patents within [ * ] of receiving the notice described above, TomoTherapy may request that W▇▇▇ do so and W▇▇▇ will comply as long as TomoTherapy reimburses W▇▇▇ each month for [ * ] percent ([ * ]%) of W▇▇▇’▇ actual expenses incurred in bringing such action. Such expenses may be billed by W▇▇▇ as frequently as monthly and shall be paid by TomoTherapy to W▇▇▇ whether awarded on a net thirty (30lost sales or lost profits basis) days basis. Late payments shall being deemed to be subject to “Net Sales” and shared equally between the interest provisions set forth in Section 3F(i) for late payments. TomoTherapy shall be reimbursed for its contribution to the cost Parties and any recovery of litigation special or settlement from the proceeds of such action as described in this Section 9A. TomoTherapy shall not have the right to bring any infringement action or enforce the Licensed Patents without W▇▇▇’▇ prior, written consentpunitive damages retained by CytoDyn. B. In the event of a declaratory judgment action brought by a third party, W▇▇▇ shall have the exclusive right to defend the Licensed Patents by litigation or settlement, including the right to grant licenses to third parties bringing such action. In the event that W▇▇▇ licenses such third party W▇▇▇ shall share the income from such license with TomoTherapy as set forth in Section 9A. C. ▇▇▇▇ agrees that if it determines to resolve any infringement or litigation by the grant of a license to the infringer or third party litigant, it will first offer in writing to allow TomoTherapy to negotiate a sublicense with such party. If TomoTherapy is not successful in negotiating a sublicense agreement within six (6) months of such notification or if time becomes of the essence in negotiating a license agreement to settle the infringement litigation, WARF may directly negotiate and grant such a license to such third party and will share any revenue generated by such license with TomoTherapy in accordance with Section 9A.