Infringement of Patents of Third Parties. (a) If, in the Collective Opinion of Patent Counsel, a patent or patents covering the manufacture, use or sale of any Agent should issue or have issued in the United States in the Field of Use, if applicable, to a Third Party, AM shall attempt to negotiate a license from such Third Party to permit the manufacture, use and sale by AM and its licensees of such Agent. If AM shall obtain a license to any such patent or patents covering any Agent directly from such Third Party, Cytogen shall receive a sublicense under such license, and Cytogen shall, on a quarterly basis, reimburse AM in an amount equal to ***** percent (*****%) of AM's cost of obtaining such license, including any license fees and royalty payments (excluding such portion, if any, of such cost that is attributable to sales by AM and/or its licensees of products other than any Agent or outside the Field of Use, if applicable, to sales of any Agent by AM and/or its licensees outside the Territory or to considerations other than the sale of Agent in the Territory). To the extent that the total payment to AM in any fiscal quarter under the preceding sentence would exceed ***** percent (*****%) of the total Royalty payments from Cytogen that are due to AMfor such quarter pursuant to Section 10.1, such excess amount shall not be payable in that quarter, and shall instead be carried forward and paid quarterly as soon thereafter as is possible without causing the payments by Cytogen under this paragraph in any quarter to exceed ***** percent (*****%) of the total Royalty payments from Cytogen that are due to AM for such quarter pursuant to Section 10.1. If AM is not successful in obtaining such a license within three months of the Collective Opinion of Patent Counsel, and if Cytogen thereafter obtains such a license, the Parties agree that ***** percent (*****%) of any consideration paid by Cytogen therefor, including royalties paid by Cytogen pursuant to such license and license fees paid to obtain such license, shall be creditable against the Royalty payments due from it to AM pursuant to Section 10.1 with respect to the Agent or Agents to which the Collective Opinion of patent Counsel relates; provided, however, that Cytogen shall use commercially reasonable efforts to enter into any such licensing arrangements on the most favorable terms then available. In no event, however, shall the total credit available to Cytogen in any fiscal quarter under this paragraph exceed ***** percent (*****%) of the total Royalty payments from Cytogen that would have been due to AM for such quarter (prior to giving effect to such credit) pursuant to Section 10.1 of this Agreement. To the extent any credit available to Cytogen under this Agreement cannot be totally exhausted in any period, the balance of such credit shall be carried forward and used in future periods until it is so exhausted. If (i) AM and/or Cytogen are unable to obtain the license referred to above within ninety (90) days after the date of the Collective Opinion of Patent Counsel, or (ii) the consideration to be paid to a Third Party for such license would (x) exceed ***** percent (*****%) of Agent Net Sales relating to such Agent that allegedly infringes the patents or proprietary rights for the six-month period ending prior to the date of --------------------------------- ***** Confidential portion omitted and filed separately with the Securities and Exchange Commission. (b) Should a Third Party institute a patent infringement suit against Cytogen or an Affiliate thereof in the United States during the term of this Agreement charging that their sale or manufacture, if permitted under the Supply Agreement, of any Agent in the United States infringes one or more United States patents owned by or licensed to such Third Party, Cytogen shall so notify AM. AM shall have the option at its expense to control the defense of such suit, in which case Cytogen shall execute all papers and perform other acts as AM may reasonable request. AM shall reimburse Cytogen for any out-of-pocket expenses in connection with the suit. If AM elects not to control the defense, then, except as set forth in paragraph (c) below, Cytogen shall have the right to reduce the Royalty amount payable to AM pursuant to Section 10.1 of this Agreement with respect to such Agent up to ***** percent (*****%) of the amount of reasonable out-of-pocket costs, including legal fees incurred by Cytogen, in defending or settling such suit. In no event, however, shall the total credit available to Cytogen in any fiscal quarter under this paragraph exceed ***** percent (*****%) of the total Royalty payments from Cytogen that would have been due to AM for such quarter (prior to giving effect to such credit) pursuant to Section 10.1 of this Agreement. To the extent any credit available to Cytogen under this Agreement cannot be totally exhausted in any period, the balance of such credit shall be carried forward and used in future periods until it is so exhausted. Such reimbursement or credit shall not include the cost of Cytogen's in-house attorneys' or other Cytogen employees' time. If such Third Party suit is not successfully defended by Cytogen or AM, AM shall indemnify Cytogen for ***** percent (*****%) of all ----------------------------- ***** Confidential portion omitted and filed separately with the Securities and Exchange Commission. (c) Should a Third Party institute a patent infringement suit against AM, or against AM and Cytogen jointly, in the United States based on: (i) any modification or enhancement of Agent or of the Agent Technology or Manufacturing Technology, or (ii) the method of the manufacture, finish or use of the Agent; which in either case (i) or (ii) is not the result of AM's acts but that of Cytogen or its Affiliates or Approved Sublicensees, Cytogen shall reimburse AM for ***** percent (*****%) of the amount of reasonable out-of-pocket costs, including legal fees incurred by AM, in defending such suit and AM shall be entitled to control such defense; provided, however, that Cytogen shall be able to participate fully in the preparation of such defense and that AM shall make no settlement agreement affecting material rights held by Cytogen without the consent of Cytogen. Such credit shall not include the cost of AM's in-house attorneys' or other AM employees' time. If such Third Party suit is not successfully defended by Cytogen or AM, Cytogen shall indemnify AM for ***** percent (*****%) of all damages which may be finally awarded against it based upon patent infringement. If a license is negotiated, the payments for such license shall be controlled by the provisions of paragraph (a) above. (d) Nothing in this Article shall prevent either Party, at its own expense, from obtaining any license or other rights from Third Parties it deems appropriate in order to permit the full and unhindered exercise of its rights under this Agreement. (e) If (i) as a result of any claim made against either Party during the term of this Agreement or the Supply Agreement alleging that the manufacture and sale to Cytogen of any Agent by AM or the manufacture, use or sale of any Agent by Cytogen (in the case of a claim against Cytogen) infringes or misappropriates any patent or any other proprietary right of a Third Party, a judgment is entered against such Party by a court of competent jurisdiction from which no appeal can be or is taken within the time permitted for appeal, such that AM cannot manufacture an Agent or sell the Agent to Cytogen in the United States (in the case of a claim against AM), or that Cytogen cannot sell an Agent in the United States (in the case of a claim against Cytogen), without infringing the patent or other proprietary rights of such Third Party and (ii) (A) AM and/or Cytogen are unable to obtain the license referred to in subsection (a) above within ninety (90) days after such entry of judgment, or (B) such consideration to be paid to a Third Party for such license would (x) exceed ***** percent (*****%) of Agent Net Sales relating to such Agent that infringes the patents or proprietary rights for the six-month period ending prior to the time such infringement or misappropriation complaint is filed in a court of --------------------------------- ***** Confidential portion omitted and filed separately with the Securities and Exchange Commission.
Appears in 1 contract
Infringement of Patents of Third Parties. (a) If, in the Collective Opinion of Patent Counsel, a patent or patents covering the manufacture, use or sale of any Agent should issue or have issued in the United States in the Field of Use, if applicable, to a Third Party, AM shall attempt to negotiate a license from such Third Party to permit the manufacture, use and sale by AM and its licensees of such Agent. If AM shall obtain a license to any such patent or patents covering any Agent directly from such Third Party, Cytogen shall receive a sublicense under such license, and Cytogen shall, on a quarterly basis, reimburse AM in an amount equal to ***** percent (*****%) of AM's cost of obtaining such license, including any license fees and royalty payments (excluding such portion, if any, of such cost that is attributable to sales by AM and/or its licensees of products other than any Agent or outside the Field of Use, if applicable, to sales of any Agent by AM and/or its licensees outside the Territory or to considerations other than the sale of Agent in the ------------------------------ ***** Confidential portion omitted and filed separately with the Securities and Exchange Commission. Territory). To the extent that the total payment to AM in any fiscal quarter under the preceding sentence would exceed ***** percent (*****%) of the total Royalty payments from Cytogen that are due to AMfor AM for such quarter pursuant to Section 10.1, such excess amount shall not be payable in that quarter, and shall instead be carried forward and paid quarterly as soon thereafter as is possible without causing the payments by Cytogen under this paragraph in any quarter to exceed ***** percent (*****%) of the total Royalty payments from Cytogen that are due to AM for such quarter pursuant to Section 10.1. If AM is not successful in obtaining such a license within three months of the Collective Opinion of Patent Counsel, and if Cytogen thereafter obtains such a license, the Parties agree that ***** percent (*****%) of any consideration paid by Cytogen therefor, including royalties paid by Cytogen pursuant to such license and license fees paid to obtain such license, shall be creditable against the Royalty payments due from it to AM pursuant to Section 10.1 with respect to the Agent or Agents to which the Collective Opinion of patent Counsel relates; providedPROVIDED, however, that Cytogen shall use commercially reasonable efforts to enter into any such licensing arrangements on the most favorable terms then available. In no event, however, shall the total credit available to Cytogen in any fiscal quarter under this paragraph exceed ***** percent (*****%) of the total Royalty payments from Cytogen that would have been due to AM for such quarter (prior to giving effect to such credit) pursuant to Section 10.1 of this Agreement. To the extent any credit available to Cytogen under this Agreement cannot be totally exhausted in any period, the balance of such credit shall be carried forward and used in future periods until it is so exhausted. If (i) AM and/or Cytogen are unable to obtain the license referred to above within ninety (90) days after the date of the Collective Opinion of Patent Counsel, or (ii) the consideration to be paid to a Third Party for such license would (x) exceed ***** percent (*****%) of Agent Net Sales relating to such Agent that allegedly infringes the patents or proprietary rights for the six-month period ending prior to the date of --------------------------------- the Collective Opinion of Patent Counsel or (y) make such Agent commercially unviable for either Party, then either Party shall have the right for thirty (30) days after the expiration of such ninety (90) day period to terminate the licenses granted hereunder with respect to such Agent and the obligation to market and supply such Agent. In the event that the foregoing applies to two or more Agents, either party shall have the right for thirty (30) days after the expiration of such ninety (90) day period to terminate this Agreement by written notice to the other Party hereto. During the period from the ---------------------------- ***** Confidential portion omitted and filed separately with the Securities and Exchange Commission. issuance of the Collective Opinion of Patent Counsel until such time as a license is secured pursuant to this Section 8.2(a) or a termination as described above is effected, Cytogen shall not be obligated to meet its minimum revenue obligations under Section 10.2, AM shall not be required to supply the applicable Agent pursuant to the Supply Agreement and AM shall have no indemnity obligations under Section 8.2(b) or (c) hereof for sales by Cytogen of such Agent during such period. Any failure to deliver Agent as a consequence of this Section 8.2(a) shall not be deemed a breach of the Supply Agreement, shall not give rise to any right of Cytogen to manufacture any Agent and any cure periods shall be extended during this period.
(b) Should a Third Party institute a patent infringement suit against Cytogen or an Affiliate thereof in the United States during the term of this Agreement charging that their sale or manufacture, if permitted under the Supply Agreement, of any Agent in the United States infringes one or more United States patents owned by or licensed to such Third Party, Cytogen shall so notify AM. AM shall have the option at its expense to control the defense of such suit, in which case Cytogen shall execute all papers and perform other acts as AM may reasonable request. AM shall reimburse Cytogen for any out-of-pocket expenses in connection with the suit. If AM elects not to control the defense, then, except as set forth in paragraph (c) below, Cytogen shall have the right to reduce the Royalty amount payable to AM pursuant to Section 10.1 of this Agreement with respect to such Agent up to ***** percent (*****%) of the amount of reasonable out-of-pocket costs, including legal fees incurred by Cytogen, in defending or settling such suit. In no event, however, shall the total credit available to Cytogen in any fiscal quarter under this paragraph exceed ***** percent (*****%) of the total Royalty payments from Cytogen that would have been due to AM for such quarter (prior to giving effect to such credit) pursuant to Section 10.1 of this Agreement. To the extent any credit available to Cytogen under this Agreement cannot be totally exhausted in any period, the balance of such credit shall be carried forward and used in future periods until it is so exhausted. Such reimbursement or credit shall not include the cost of Cytogen's in-house attorneys' or other Cytogen employees' time. If such Third Party suit is not successfully defended by Cytogen or AM, AM shall indemnify Cytogen for ***** percent (*****%) of all ----------------------------- damages which may be finally awarded against Cytogen based upon such patent infringement. If a license is negotiated, the payments for such license shall be controlled by the provisions of paragraph (a) above. --------------------------------- ***** Confidential portion omitted and filed separately with the Securities and Exchange Commission.
(c) Should a Third Party institute a patent infringement suit against AM, or against AM and Cytogen jointly, in the United States based on: :
(i) any modification or enhancement of Agent or of the Agent Technology or Manufacturing Technology, or (ii) the method of the manufacture, finish or use of the Agent; which in either case (i) or (ii) is not the result of AM's acts but that of Cytogen or its Affiliates or Approved Sublicensees, Cytogen shall reimburse AM for ***** percent (*****%) of the amount of reasonable out-of-pocket costs, including legal fees incurred by AM, in defending such suit and AM shall be entitled to control such defense; providedPROVIDED, howeverHOWEVER, that Cytogen shall be able to participate fully in the preparation of such defense and that AM shall make no settlement agreement affecting material rights held by Cytogen without the consent of Cytogen. Such credit shall not include the cost of AM's in-house attorneys' or other AM employees' time. If such Third Party suit is not successfully defended by Cytogen or AM, Cytogen shall indemnify AM for ***** percent (*****%) of all damages which may be finally awarded against it based upon patent infringement. If a license is negotiated, the payments for such license shall be controlled by the provisions of paragraph (a) above.
(d) Nothing in this Article shall prevent either Party, at its own expense, from obtaining any license or other rights from Third Parties it deems appropriate in order to permit the full and unhindered exercise of its rights under this Agreement.
(e) If (i) as a result of any claim made against either Party during the term of this Agreement or the Supply Agreement alleging that the manufacture and sale to Cytogen of any Agent by AM or the manufacture, use or sale of any Agent by Cytogen (in the case of a claim against Cytogen) infringes or misappropriates any patent or any other proprietary right of a Third Party, a judgment is entered against such Party by a court of competent jurisdiction from which no appeal can be or is taken within the time permitted for appeal, such that AM cannot manufacture an Agent or sell the Agent to Cytogen in the United States (in the case of a claim against AM), or that Cytogen cannot sell an Agent in the United States (in the case of a claim against Cytogen), without infringing the patent or other proprietary rights of such Third Party and (ii) )
(A) AM and/or Cytogen are unable to obtain the license referred to in subsection (a) above within ninety (90) days after such entry of judgment, or (B) such consideration to be paid to a Third Party for such license would (x) exceed **** ** percent (*****%) of Agent Net Sales relating to such Agent that infringes the patents or proprietary rights for the six-month period ending prior to the time such infringement or misappropriation complaint is filed in a court of competent jurisdiction or (y) make such Agent commercially unviable to either Party, then either Party --------------------------------- ***** Confidential portion omitted and filed separately with the Securities and Exchange Commission. shall have the right for thirty (30) days after the expiration of such ninety (90) day period to terminate the licenses granted hereunder with respect to such Agent and the obligation to market such Agent. In the event that the foregoing applies to two or more Agents, either party shall have the right for thirty (30) days after the expiration of such ninety (90) day period to terminate this Agreement by written notice to the other Party hereto.
Appears in 1 contract
Sources: Annual Report