Patent Enforcement. (a) Each Party will notify the other within [*] of any infringement by a Third Party of any of the Portola Patents or Joint Patents in the Territory of which such Party becomes aware, including any “patent certification” filed in the United States under 21 U.S.C. §355(b)(2) or 21 U.S.C. §355(j)(2) or similar provisions in other jurisdictions and of any declaratory judgment, opposition, or similar action alleging the invalidity, unenforceability or non-infringement of any of the Portola Patents or Joint Patents (collectively, an “Infringement”). Any such Infringement that (x) arises with respect to a [*], or (y) arises from [*] or [*] in the Licensed Field (or any other [*] within the scope of the [*]) shall be deemed a “Product Infringement”. (b) Biogen Idec shall have the right to bring and control any legal action in connection with such Product Infringement in the Territory as it reasonably determines appropriate (provided that Biogen Idec shall not have the right to enforce any [*] with respect to infringing conduct that is outside the scope of the [*]), which right shall be [*] with respect to Product Infringements concerning [*], and Portola shall have the right to be represented in any such action by counsel of its choice and at its own expense. Biogen Idec shall bear all other [*] = 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. reasonable costs incurred in connection with such legal action, provided that, in the event Portola does not exercise its Opt-Out Option, then such expenses incurred with respect to any Patents Rights in the Profit Share Territory shall be shared on the basis of [*] to Biogen Idec and [*] to Portola as [*]. (c) The enforcing Party shall keep the other Party reasonably informed of the status and progress of such enforcement efforts, shall reasonably consider the other Party’s comments on any such efforts. At the request of the enforcing Party, the other Party shall provide reasonable assistance in connection therewith, including by executing reasonably appropriate documents, cooperating in discovery and joining as a party to the action if required. (d) In connection with any such proceeding, the Party bringing the action shall not enter into any settlement admitting the invalidity of, or otherwise impairing the other Party’s rights in, the Portola Patents or Joint Patents without the prior written consent of the other Party. (e) Any recoveries resulting from such an action relating to a claim of Product Infringement shall be first applied against payment of each Party’s costs and expenses in connection therewith, provided that to the extent that such costs and expenses were shared by the Parties [*] pursuant to Section 9.3(a), then such reimbursement shall be similarly shared. Any such recoveries in excess of such costs and expenses (the “Remainder”) will be shared by the Parties as follows: (a) if Portola has not exercised the Opt-Out Option, such Remainder shall be treated as Collaboration Operating Profit and shared by the Parties in accordance with Section 8.3; and (b) if Portola has exercised the Opt-Out Option, then such Remainder shall be [*], provided that [*]. (f) Portola shall have the exclusive right to enforce the Portola Patents [*] for any Infringement that is not a Product Infringement, without obligations to Biogen Idec except (i) as provided in Section 9.2 with respect to Infringements constituting reissues, reexaminations, appeals to appropriate patent offices and/or courts, interferences, derivation proceeding, post-grant review proceedings and foreign oppositions or similar proceedings, and (ii) Portola shall not enter into any settlement admitting the invalidity of, or otherwise impairing Biogen Idec’s rights in, the Portola Patents or Joint Patents without the prior written consent of Biogen Idec. Portola shall [*] or [*] with respect to any infringement, expressly including any infringement [*], [*].
Appears in 3 contracts
Sources: License and Collaboration Agreement (Portola Pharmaceuticals Inc), License and Collaboration Agreement (Portola Pharmaceuticals Inc), License and Collaboration Agreement (Portola Pharmaceuticals Inc)
Patent Enforcement. (a) Each Party will shall promptly notify the other within [*] in writing of any actual or threatened infringement or misappropriation by a Third Party of any of the Portola Patents Joint Patent or Joint Patents in the Territory Jointly Owned Invention of which such Party becomes aware, including any aware (“patent certification” filed in the United States under 21 U.S.C. §355(b)(2) or 21 U.S.C. §355(j)(2) or similar provisions in other jurisdictions and of any declaratory judgment, opposition, or similar action alleging the invalidity, unenforceability or non-infringement of any of the Portola Patents or Joint Patents (collectively, an “Third Party Infringement”). Any such Infringement that (x) arises with respect to a [*], or (y) arises from [*] or [*] in the Licensed Field (or any other [*] within the scope of the [*]) shall be deemed a “Product Infringement”.
(b) Biogen Idec [***] shall have the first right to initiate legal action to [***]. In the event that [***] fails to initiate or defend such action by the earlier of (i) [***] after first being notified or made aware of such Third Party Infringement and (ii) [***] before the expiration for initiating or defending such action, [***] shall have the right to bring and control any initiate or defend such action at its sole expense.
(c) [***] shall have the first right to initiate legal action in connection with such Product Infringement in the Territory as it reasonably determines appropriate (provided that Biogen Idec shall not have the right to enforce any all Joint Patents and Jointly Owned Inventions against Third Party Infringement, where such Third Party Infringement [***] with respect or to infringing conduct defend any declaratory judgment action relating thereto, at its sole expense. In the event that is outside the scope of the [*]), which right shall be **] fails to initiate or defend such action by the earlier of (i) [***] with respect to Product Infringements concerning after first being notified or made aware of such Third Party Infringement and (ii) [*]**] before the expiration for initiating or defending such action, and Portola [***] shall have the right to be represented in any such action by counsel of its choice and do so at its own sole expense. Biogen Idec shall bear all other [*] = 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. reasonable costs incurred in connection with such legal action, provided that, in the event Portola does not exercise its Opt-Out Option, then such expenses incurred with respect to any Patents Rights in the Profit Share Territory shall be shared on the basis of [*] to Biogen Idec and [*] to Portola as [*].
(c) The enforcing Party shall keep the other Party reasonably informed of the status and progress of such enforcement efforts, shall reasonably consider the other Party’s comments on any such efforts. At the request of the enforcing Party, the other Party shall provide reasonable assistance in connection therewith, including by executing reasonably appropriate documents, cooperating in discovery and joining as a party to the action if required.
(d) In connection with The Parties shall cooperate in good faith to jointly control legal action to enforce all [***] against any Third Party Infringement where such proceedingThird Party Infringement [***] or to defend any declaratory judgment action relating thereto, and [***]. Notwithstanding the foregoing, either Party bringing shall have the right to opt-out of controlling such legal action shall not enter into any settlement admitting by providing written notice to the invalidity ofother Party by the earliest of (1) [***] after first being noticed of such Third Party Infringement, (2) [***] before the expiration date for filing such action, (3) [***] before the expiration date for filing an answer to a complaint in a declaratory judgment action, and (4) [***] after receipt of an application to the FDA under Section 351(k) of the U.S. Public Health Services Act (42 U.S.C. 262(k)), or otherwise impairing the other Party’s rights into a similar agency under any similar provisions in another country, the Portola Patents seeking approval of a biosimilar or Joint Patents without the prior written consent interchangeable biological product of the other PartyMerck Compound, whichever comes first.
(e) Any recoveries resulting from such an action relating to a claim of Product Infringement shall be first applied against payment of each Party’s costs and expenses in connection therewith, provided that to the extent that such costs and expenses were shared by the Parties [*] pursuant to Section 9.3(a), then such reimbursement shall be similarly shared. Any such recoveries in excess of such costs and expenses If one Party (the “RemainderEnforcing Party”) will be shared by the Parties as follows: (a) if Portola has not exercised the Opt-Out Option, such Remainder shall be treated as Collaboration Operating Profit and shared by the Parties in accordance with Section 8.3; and (b) if Portola has exercised the Opt-Out Option, then such Remainder shall be [*], provided that [*].
(f) Portola shall have the exclusive right to enforce the Portola Patents [*] for brings any Infringement that is not prosecution or enforcement action or proceeding against a Product Infringement, without obligations to Biogen Idec except (i) as provided in Section 9.2 with respect to Infringements constituting reissues, reexaminations, appeals to appropriate patent offices and/or courts, interferences, derivation proceeding, post-grant review proceedings and foreign oppositions or similar proceedings, and (ii) Portola shall not enter into any settlement admitting the invalidity of, or otherwise impairing Biogen Idec’s rights in, the Portola Patents or Joint Patents without the prior written consent of Biogen Idec. Portola shall [*] or [*] Third Party with respect to any infringement, expressly including any infringement [***], the second Party (the “Non-Enforcing Party”) agrees to be joined as a party plaintiff where necessary and to give the Enforcing Party reasonable assistance and authority to file and prosecute the suit, at the Enforcing Party’s cost and expense. The costs and expenses of the Enforcing Party under this Section 10.1.2 shall be borne by such Enforcing Party, and any damages or other monetary awards recovered shall be shared as follows: [***]. A settlement or consent judgment or other voluntary final disposition of a suit under this Section 10.1.2 may not be entered into without the consent of the Party not bringing the suit.
Appears in 2 contracts
Sources: Clinical Trial Collaboration and Supply Agreement (RAPT Therapeutics, Inc.), Clinical Trial Collaboration and Supply Agreement (RAPT Therapeutics, Inc.)
Patent Enforcement. (a) Each Party will notify shall promptly report in writing to the other within [*] Party during the term of this Agreement any: (i) known infringement, suspected infringement, unauthorized use or misappropriation of any infringement of the Patents in the Field in the Territory by a Third Party of any of the Portola Patents or Joint Patents in the Territory of which such Party it becomes aware, including any “patent certification” filed in and shall provide the United States under 21 U.S.C. §355(b)(2) other Party with all available evidence supporting said infringement, suspected infringement or 21 U.S.C. §355(j)(2) unauthorized use or similar provisions in other jurisdictions and of any declaratory judgment, oppositionmisappropriation. Within [*] after Scynexis becomes, or similar action alleging the invalidityis made, unenforceability or non-infringement aware of any of the Portola Patents or Joint Patents (collectivelyforegoing, an “Infringement”). Any such Infringement it shall advise R-Pharm in writing that (x) arises with respect [*] Scynexis has elected to a initiate proceedings [*], or (y) arises from . The inability of Scynexis to decide on a course of action within such [*] or [*] in the Licensed Field (or any other [*] within the scope period shall for purposes of the [*]) shall this Agreement be deemed a “Product Infringement”.
(b) Biogen Idec shall have the right decision not to bring and control any legal action in connection with such Product Infringement in the Territory as it reasonably determines initiate an infringement or other appropriate (provided that Biogen Idec shall not have the right to enforce any [*] with respect to infringing conduct that is outside the scope of the [*]), which right shall be [*] with respect to Product Infringements concerning [*], and Portola shall have the right to be represented in any such action by counsel of its choice and at its own expensesuit. Biogen Idec shall bear all other [*] = 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. reasonable costs incurred in connection with such legal action, provided that, in the event Portola does not exercise its Opt-Out Option, then such expenses incurred with respect to any Patents Rights in the Profit Share Territory shall be shared on the basis of .
(b) Within [*] to Biogen Idec after Scynexis becomes, or is made, aware of any infringement, suspected infringement or unauthorized use or misappropriation by a Third Party in the Field in the Territory, as provided in paragraph (a) above, and provided that Scynexis shall have advised R-Pharm, within the [*] to Portola as period provided in paragraph (a) above of its [*]] decision to file suit, Scynexis [*] shall initiate an infringement or other appropriate suit anywhere in the world against such Third Party. Scynexis shall provide R-Pharm with an opportunity to make suggestions and comments regarding such suit and shall promptly notify R-Pharm of the commencement of such suit. Scynexis shall keep R-Pharm promptly informed of, and shall from time to time consult with R-Pharm regarding the status of any such suit and shall provide R-Pharm with copies of all documents filed in, and all written communications relating to, such suit. Scynexis shall select counsel who shall be reasonably acceptable to R-Pharm. Scynexis shall, except as provided below, pay all expenses of the suit, including, without limitation, attorneys’ fees and court costs. If necessary, R-Pharm shall join as a party to the suit but shall be under no obligation to participate except to the extent that such participation is required as the result of being a named party to the suit; provided, however, R-Pharm shall have the right to participate and be represented in any suit by its own counsel at its own expense. Scynexis shall not settle any such suit involving rights of R-Pharm without obtaining the prior written consent of R-Pharm, which consent shall not be unreasonably withheld. [*] = 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.
(c) The enforcing Party In the event that Scynexis does not inform R-Pharm of its intent to initiate an infringement or other appropriate suit within the [*] period provided in paragraph (a) above, or does not initiate such an infringement other appropriate action within the [*] period provided in paragraph (b) above, R-Pharm shall keep have the right, but not the duty, at its expense, to initiate an infringement or other Party reasonably informed appropriate suit. In exercising its rights pursuant to this paragraph (c), R-Pharm shall have the sole and exclusive right to select counsel and shall pay all expenses of the status and progress of such enforcement efforts, shall reasonably consider the other Party’s comments on any such efforts. At the request of the enforcing Party, the other Party shall provide reasonable assistance in connection therewithsuit, including by executing reasonably appropriate documentswithout limitation attorneys’ fees and court costs. If necessary, cooperating in discovery and joining Scynexis shall join as a party to the suit and shall participate only to the extent that such participation is required as a result of its being a named party to the suit or being the holder of any patent at issue or being the owner or licensor of any Patents at issue. At R-Pharm’s request, Scynexis shall offer reasonable assistance to R-Pharm in connection therewith at no charge except for reimbursement of reasonable out-of-pocket expenses incurred in rendering such assistance. Without limiting the generality of the preceding sentence, Scynexis shall cooperate fully in order to enable R-Pharm to institute any action if requiredhereunder. Scynexis shall have the right to be represented in any such suit by its own counsel at its own expense. [*] = 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.
(d) In Any recovery obtained by either or both Scynexis and R-Pharm in connection with or as a result of any such proceedingaction contemplated by this Section 9.3, whether by settlement or otherwise, shall be shared in order as follows:
(i) the Party bringing party which initiated and prosecuted the action shall not enter into any settlement admitting the invalidity of, or otherwise impairing the other Party’s rights in, the Portola Patents or Joint Patents without the prior written consent recoup all of the other Party.
(e) Any recoveries resulting from such an action relating to a claim of Product Infringement shall be first applied against payment of each Party’s its costs and expenses incurred in connection therewithwith the action;
(ii) the other party shall then, provided that to the extent that such possible, recover its costs and expenses were shared by incurred in connection with the Parties [*] pursuant to Section 9.3(a), action; and
(iii) the amount of any recovery remaining shall then such reimbursement shall be similarly shared. Any such recoveries in excess of such costs and expenses (the “Remainder”) will be shared by the Parties as follows: (a) if Portola has not exercised the Opt-Out Option, such Remainder shall be treated as Collaboration Operating Profit and shared by the Parties in accordance with Section 8.3; and (b) if Portola has exercised the Opt-Out Option, then such Remainder shall be [*], provided that [*].
(f) Portola shall have the exclusive right to enforce the Portola Patents [*] for any Infringement that is not a Product Infringement, without obligations to Biogen Idec except (i) as provided in Section 9.2 with respect to Infringements constituting reissues, reexaminations, appeals to appropriate patent offices and/or courts, interferences, derivation proceeding, post-grant review proceedings and foreign oppositions or similar proceedings, and (ii) Portola shall not enter into any settlement admitting the invalidity of, or otherwise impairing Biogen Idec’s rights in, the Portola Patents or Joint Patents without the prior written consent of Biogen Idec. Portola shall [*] or [*] with respect to any infringement, expressly including any infringement [*], [*].
Appears in 2 contracts
Sources: Development, License and Supply Agreement, Development, License and Supply Agreement (Scynexis Inc)
Patent Enforcement. (a) Each Within and outside the Field, Kamada shall have the primary right, but not the obligation, to carry out actions against any Third Party will notify the other within [*] arising from such Third Party’s actual or anticipated infringement of any infringement by Patent(s) within the scope of the Kamada Licensed Patent Rights or defend against a Third Party of any of the Portola Patents or Joint Patents in the Territory of which such Party becomes aware, including any “patent certification” filed in the United States under 21 U.S.C. §355(b)(2) or 21 U.S.C. §355(j)(2) or similar provisions in other jurisdictions and of any Party’s declaratory judgment, opposition, or similar judgment action alleging the invalidity, unenforceability or non-infringement of any of the Portola Patents or Joint Patents (collectively, an “Infringement”). Any such Infringement that (xPatent(s) arises with respect to a [*], or (y) arises from [*] or [*] in the Licensed Field (or any other [*] within the scope of the [*]) Kamada Licensed Patent Rights, at Kamada’s expense. If Kamada determines that Baxter is an indispensable party to the action, Kamada shall be deemed a “Product Infringement”.
(b) Biogen Idec shall have the right provide written notice to bring ▇▇▇▇▇▇ and control any legal action ▇▇▇▇▇▇ hereby consents to participate in connection with such Product Infringement in the Territory as it reasonably determines appropriate (provided that Biogen Idec shall not have the right to enforce any [*] with respect to infringing conduct that is outside the scope of the [*])action. In such event, which right shall be [*] with respect to Product Infringements concerning [*], and Portola Baxter shall have the right to be represented in any such action by using counsel of its choice and own choice, at its own expense. Biogen Idec If Kamada brings an action within the Baxter Territory for infringement by a Third Party within the Field that results in a Litigation Award, then the Litigation Award shall bear all be shared by the Parties as provided in Section 5.4. Any recovery against a Third Party by Kamada in an action relating to infringement outside the Field and/or outside the Baxter Territory shall be retained by Kamada to the extent such recovery addresses such infringement outside the Field and/or outside the Baxter Territory. Notwithstanding the foregoing, Kamada agrees that it shall not enter into any settlement, consent, order, consent judgment or other voluntary final disposition of any action it brings under this Section 3.2 relating to the Field and in the Baxter Territory without the prior written consent of Baxter (which consent shall not be unreasonably withheld, conditioned or delayed). [*****] = Certain confidential information contained in Confidential portions of this document, marked by brackets, has document have been omitted redacted and filed separately with the Securities and Exchange Commission pursuant to Rule 406 of the Securities Act of 1933, as amended. reasonable costs incurred in connection with such legal action, provided that, in the event Portola does not exercise its Opt-Out Option, then such expenses incurred with respect to any Patents Rights in the Profit Share Territory shall be shared on the basis of [*] to Biogen Idec and [*] to Portola as [*]Commission.
(c) The enforcing Party shall keep the other Party reasonably informed of the status and progress of such enforcement efforts, shall reasonably consider the other Party’s comments on any such efforts. At the request of the enforcing Party, the other Party shall provide reasonable assistance in connection therewith, including by executing reasonably appropriate documents, cooperating in discovery and joining as a party to the action if required.
(d) In connection with any such proceeding, the Party bringing the action shall not enter into any settlement admitting the invalidity of, or otherwise impairing the other Party’s rights in, the Portola Patents or Joint Patents without the prior written consent of the other Party.
(e) Any recoveries resulting from such an action relating to a claim of Product Infringement shall be first applied against payment of each Party’s costs and expenses in connection therewith, provided that to the extent that such costs and expenses were shared by the Parties [*] pursuant to Section 9.3(a), then such reimbursement shall be similarly shared. Any such recoveries in excess of such costs and expenses (the “Remainder”) will be shared by the Parties as follows: (a) if Portola has not exercised the Opt-Out Option, such Remainder shall be treated as Collaboration Operating Profit and shared by the Parties in accordance with Section 8.3; and (b) if Portola has exercised the Opt-Out Option, then such Remainder shall be [*], provided that [*].
(f) Portola shall have the exclusive right to enforce the Portola Patents [*] for any Infringement that is not a Product Infringement, without obligations to Biogen Idec except (i) as provided in Section 9.2 with respect to Infringements constituting reissues, reexaminations, appeals to appropriate patent offices and/or courts, interferences, derivation proceeding, post-grant review proceedings and foreign oppositions or similar proceedings, and (ii) Portola shall not enter into any settlement admitting the invalidity of, or otherwise impairing Biogen Idec’s rights in, the Portola Patents or Joint Patents without the prior written consent of Biogen Idec. Portola shall [*] or [*] with respect to any infringement, expressly including any infringement [*], [*].
Appears in 1 contract
Patent Enforcement. (a) Each Party will notify the other within [***] of becoming aware of any infringement by a Third Party of any of the Portola Patents, Joint Patents or Joint Dermavant Patents through the making, using or selling of a Product or any Syk or JAK inhibitor in the Licensed Field in the Territory of which such Party becomes aware, including any “patent certification” filed in the United States under 21 U.S.C. §355(b)(2) or 21 U.S.C. §355(j)(2) or similar provisions in other jurisdictions and of any declaratory judgment, opposition, or similar action alleging the invalidity, unenforceability or non-infringement of any of the Portola Patents or Joint Patents such Patent Rights (collectively, an “Infringement”). Any such Infringement that (x) arises with respect to a [*], or (y) arises from [*] or [*] in the Licensed Field (or any other [*] within the scope of the [*]) shall be deemed a collectively “Product Infringement”).
(b) Biogen Idec shall have the right to bring and control For any legal action in connection with such Product Infringement in the Territory Licensed Field of a Portola Patent, as it reasonably determines appropriate (provided that Biogen Idec between the Parties, Dermavant shall not have the right first right, but not the obligation, to bring an appropriate suit or other action (an “Action”) to enforce any [*] with respect such Portola Patent against such Product Infringement. If Dermavant decides not to infringing conduct that is outside the scope of the [*])bring such an Action, which right it shall be [*] with respect to Product Infringements concerning [*]so inform Portola, and Portola shall have the right right, but not the obligation, to be represented in any bring an Action to enforce such action by counsel Portola Patent against such Product Infringement. Notwithstanding the above, if the claims of its choice and at its own expense. Biogen Idec shall bear all other [*] = Certain confidential information contained in this documentsuch Portola Patent are directed only to the composition of matter of the Licensed Compound, marked by brackets, has been omitted and filed separately then Dermavant will only assert such Portola Patent with the Securities prior consent of Portola, and Exchange Commission pursuant to Rule 406 of the Securities Act of 1933, as amendedPortola will consider such request in good faith. reasonable costs incurred in connection with such legal action, provided that, in In the event Portola does not exercise its Opt-Out Optionconsents to the assertion of such composition of matter claim(s), then such expenses incurred with respect to any Patents Rights in the Profit Share Territory Portola shall be shared on the basis enforcing Party for such claim(s) for the purpose of [*] to Biogen Idec this Section 9.4(b) and [*] to Portola as [*]Section 9.4(e).
(c) For any Product Infringement in the Retained Field of a Portola Patent, as between the Parties, Portola shall have the sole right, but not the obligation, to bring an Action to enforce such Portola Patent against such Product Infringement.
(d) For any Product Infringement of a Joint Patent, Dermavant shall have the first right, but not the obligation, to bring an Action to enforce such Joint Patent against such Product Infringement. If Dermavant decides not to bring such an Action, it shall so inform Portola, and Portola shall have the right, but not the obligation, to bring an Action to enforce such Joint Patent against such Product Infringement. [***] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, IS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
(e) The enforcing Party of any Product Infringement shall control the enforcement action and keep the other Party reasonably informed of the status and progress of such enforcement efforts, efforts and shall reasonably consider the other Party’s comments on any such efforts. At the request of the enforcing Party, the other Party shall provide reasonable assistance in connection therewith, including by executing reasonably appropriate documents, cooperating in discovery and joining as a party to the action if required.
(d) . If a Party is required to join in any action, it may choose to retain its own counsel at its own expense. In connection with any such proceeding, the Party bringing the action shall not enter into any settlement admitting the invalidity of, or otherwise impairing the other Party’s rights in, the Portola Patents, Joint Patents or Joint Dermavant Patents without the prior written consent of the other Party.
(ef) The enforcing Party shall be solely responsible for the costs and expenses incurred by the Parties in an Action against Product Infringement. Any recoveries resulting from such an action relating to a claim of Action against Product Infringement shall be first applied against payment of each Party’s costs and expenses in connection therewith, provided that to the extent that such costs and expenses were shared by the Parties [*] pursuant to Section 9.3(a), then such reimbursement shall be similarly shared. Any such recoveries in excess of such costs and expenses (the “Remainder”) will shall be shared by between the Parties as follows: (ai) if Portola has not exercised Dermavant is the Opt-Out Optionenforcing Party, such Remainder shall be treated as Collaboration Operating Profit and shared by the Parties in accordance with Section 8.3; and (b) if Portola has exercised the Opt-Out Option, then such Remainder shall be [***]; and (ii) if Portola is the enforcing Party, provided that the Remainder shall be [***].
(fg) For any infringement of a Portola shall have the exclusive right to enforce the Portola Patents [*] for any Infringement Patent or Joint Patent that is not a Product Infringement, without obligations Portola shall have the sole right, but not the obligation, to Biogen Idec except (i) as provided in Section 9.2 with respect bring an Action to Infringements constituting reissuesenforce such Portola Patent or Joint Patent against such infringement, reexaminations, appeals to appropriate patent offices and/or courts, interferences, derivation proceeding, post-grant review proceedings and foreign oppositions or similar proceedings[***], and (ii) Portola shall not enter into any settlement admitting the invalidity of, or otherwise impairing Biogen Idec’s rights in, the Portola Patents or Joint Patents without the prior written consent of Biogen Idec. Portola shall [*] or [*] with respect to any infringement, expressly including any infringement [*], [*].
Appears in 1 contract
Patent Enforcement. (a) Each Party will If either party learns of potential infringement of any Onyx Developed IP, where such infringement involves the use of the Product, it shall notify the other within [*] of any infringement by party. If a Third Party of any of the Portola Patents or Joint Patents in the Territory of which such Party becomes aware, including any “patent certification” filed in the United States under 21 U.S.C. §355(b)(2) or 21 U.S.C. §355(j)(2) or similar provisions in other jurisdictions and of any declaratory judgment, oppositionis infringing, or similar action alleging either Party reasonably believes a Third Party may be infringing, any Patent within the invalidityOnyx Developed IP by reason of (i) the manufacture, unenforceability import, use, offer for sale or non-infringement sale of any of a product competitive with the Portola Patents or Joint Patents (collectively, an “Infringement”). Any such Infringement that (x) arises with respect to a [*], Product or (yii) arises from [*] or [*] in the Licensed Field (or any other [*] within the scope filing of the [*]) shall be deemed a “Product Infringement”.
(b) Biogen Idec shall have the right to bring and control any legal action in connection with such Product Infringement in the Territory as it reasonably determines appropriate (provided that Biogen Idec shall not have the right to enforce any [*] with respect to infringing conduct that is outside the scope of the [*]), which right shall be [*] with respect to Product Infringements concerning [*], and Portola shall have the right to be represented in any such action by counsel of its choice and at its own expense. Biogen Idec shall bear all other [*an [ * ] = 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 24b-2 of the Securities Exchange Act of 19331934, as amended. abbreviated new drug application (ANDA) pursuant to 21 U.S.C. §355(j) or a new drug application pursuant to 21 U.S.C. §355(b)(2) of a product competitive with the Product by such Third Party (“Product-Specific Infringement”), [ * ] shall have the first right, but not the obligation, to institute, prosecute, control, and settle any action or proceeding with respect to such infringement by counsel of its own selection, at its expense. [ * ] shall provide [ * ] updates, via the IP Subcommittee, to [ * ] regarding the strategy and status of any such proceeding, and shall provide [ * ] an opportunity to comment. If [ * ] fails to bring or settle such an action or proceeding within [ * ] after receiving or giving written notice thereof (or, for actions brought under the Drug Price Competition and Patent Term Restoration Act of 1984, as amended, [ * ]), then [ * ] shall have the right, but not the obligation, to bring and control any such action by counsel of its own selection, at its expense. For all other Third Party infringement that is not a Product-Specific Infringement, the IP Committee shall discuss options for pursuing the infringer. Unless [ * ] agrees otherwise, [ * ] shall have the first right but not the obligation, to institute, prosecute, control, and settle any action or proceeding with respect to such infringement by counsel of its own selection, at its expense. [ * ] shall provide [ * ] updates, via the IP Subcommittee, to [ * ] regarding the strategy and status of any such proceeding, and shall provide [ * ] an opportunity to comment. The costs and expenses (including reasonable costs incurred attorneys’ fees) of any action against an infringer brought in accordance with this Section shall be borne by the Party controlling the infringement action. Any monetary recovery in connection with such legal infringement action shall first be applied to reimburse the Party controlling the infringement action for its out-of-pocket expenses (including reasonable attorneys’ fees) in taking such infringement action, provided that, in the event Portola does not exercise its Opt-Out Option, then such expenses incurred with respect and next to any Patents Rights in the Profit Share Territory shall be shared on the basis of [*] to Biogen Idec and [*] to Portola as [*].
(c) The enforcing Party shall keep reimburse the other Party reasonably informed of for its out-of-pocket expenses (including reasonable attorneys’ fees) in assisting in such infringement action. Once the status Parties have been reimbursed for such expenses then the remainder will be apportioned as follows: For Product-Specific Infringement (i) [ * ]; and progress of such enforcement efforts(ii) [ * ]. For any other infringement, shall reasonably consider the other Party’s comments on [ * ]. In any such efforts. At the request of the enforcing Partyproceeding, the other Party shall provide reasonable assistance in connection therewith, including by executing reasonably appropriate documents, cooperating in discovery and joining will agree to be joined as a party plaintiff (to the extent required by applicable law) and provide the prosecuting party with reasonable assistance, at the requesting Party’s expense, to bring and prosecute such action if required.
(d) In connection with any such or proceeding, the Party bringing the action . Bayer shall not enter into settle any settlement admitting action prosecuted under this Section 2.4.6 that would adversely limit the invalidity of, or otherwise impairing scope of any Patent within the other Party’s rights in, the Portola Patents or Joint Patents Onyx Developed IP without the prior written consent of the other PartyOnyx.
(e) Any recoveries resulting from such an action relating to a claim of Product Infringement shall be first applied against payment of each Party’s costs and expenses in connection therewith, provided that to the extent that such costs and expenses were shared by the Parties [*] pursuant to Section 9.3(a), then such reimbursement shall be similarly shared. Any such recoveries in excess of such costs and expenses (the “Remainder”) will be shared by the Parties as follows: (a) if Portola has not exercised the Opt-Out Option, such Remainder shall be treated as Collaboration Operating Profit and shared by the Parties in accordance with Section 8.3; and (b) if Portola has exercised the Opt-Out Option, then such Remainder shall be [*], provided that [*].
(f) Portola shall have the exclusive right to enforce the Portola Patents [*] for any Infringement that is not a Product Infringement, without obligations to Biogen Idec except (i) as provided in Section 9.2 with respect to Infringements constituting reissues, reexaminations, appeals to appropriate patent offices and/or courts, interferences, derivation proceeding, post-grant review proceedings and foreign oppositions or similar proceedings, and (ii) Portola shall not enter into any settlement admitting the invalidity of, or otherwise impairing Biogen Idec’s rights in, the Portola Patents or Joint Patents without the prior written consent of Biogen Idec. Portola shall [*] or [*] with respect to any infringement, expressly including any infringement [*], [*].
Appears in 1 contract
Sources: Agreement Regarding Regorafenib (Onyx Pharmaceuticals Inc)
Patent Enforcement. (a) Each If any Party will notify learns of an infringement, unauthorized use, misappropriation or ownership claim or threatened infringement or other such claim (any of the other within [*] of any infringement foregoing, an "INFRINGEMENT") by a Third Party of any of the Portola Patents or Joint Patents in the Territory of which such Party becomes aware, including any “patent certification” filed in the United States under 21 U.S.C. §355(b)(2) or 21 U.S.C. §355(j)(2) or similar provisions in other jurisdictions and of any declaratory judgment, opposition, or similar action alleging the invalidity, unenforceability or non-infringement of any of the Portola Patents or Joint Patents (collectively, an “Infringement”). Any such Infringement that (x) arises with respect to a [*], or (y) arises from [*] or [*] in the Licensed Field (any Technology or any other [*] Trademark within the scope Territory, such Party shall promptly notify the other Parties and shall provide such other Parties with available evidence of the [*]) shall be deemed a “Product Infringement”such infringement.
(b) Biogen Idec The Company shall have the right first right, but not the duty, to bring and control institute patent or trademark infringement actions against Third Parties based on any legal action in connection with such Product Infringement Technology or Trademark in the Territory as it reasonably determines appropriate (provided that Biogen Idec shall Territory. If the Company does not have the right to enforce any [*] with respect to infringing conduct that is outside the scope institute an infringement proceeding against an offending Third Party within 180 days of the [*]), which right shall be [*] with respect to Product Infringements concerning [*], and Portola shall have the right to be represented in any learning of such action by counsel of its choice and at its own expense. Biogen Idec shall bear all other [*] = 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. reasonable costs incurred in connection with such legal action, provided thatinfringement or, in the event Portola that a Third Party files a paragraph IV certification relating to any Patent pursuant to 21 U.S.C. Section 355(j)(2)(A)(vii)(IV) of the Hatch/Waxman Act (or any successor statute), if the Company does not exercise its Opt-Out Optioninstitute an infringement proceeding against such Third Party within 30 days of receipt of notice of such paragraph IV certification, then ERS shall have the right, but not the duty, to institute such expenses incurred an action with respect to any Patents Rights in the Profit Share Territory shall be shared on the basis of [*] to Biogen Idec and [*] to Portola as [*].
(c) The enforcing Party shall keep the other Party reasonably informed of the status and progress of infringement by such enforcement efforts, shall reasonably consider the other Third Party’s comments on any such efforts. At the request of the enforcing Party, the other Party shall provide reasonable assistance in connection therewith, including by executing reasonably appropriate documents, cooperating in discovery and joining as a party to the action if required.
(d) In connection with any such proceeding, the Party bringing the action shall ; provided that ERS may not enter into any settlement admitting the invalidity ofsettlement, consent judgment or otherwise impairing the other Party’s rights in, the Portola Patents voluntary final disposition of such action which adversely effects any Technology or Joint Patents Trademark without the prior written consent of the Company, which will not be unreasonably withheld. The costs and expenses of any such action (including fees of attorneys and other Partyprofessionals) shall be borne by the Party instituting the action, or, if the Parties elect to cooperate 44 Confidential treatment requested by ▇▇▇▇▇▇▇-▇▇▇▇▇ Squibb Company, ▇▇▇▇▇▇▇-▇▇▇▇▇ Squibb Biologics Company and ImClone Systems Incorporated.
(ei) Any recoveries resulting from if the Company has instituted and maintained such action alone, the Company shall be entitled to retain such remaining funds; (ii) if ERS and/or BMS has instituted and maintained such action alone, ERS and/or BMS, as the case may be, shall be entitled to retain such remaining funds; or (iii) if the Parties have cooperated in instituting and maintaining such action, the Parties shall allocate such remaining funds between themselves in the same proportion as they have agreed to bear the expenses of instituting and maintaining such action.
(c) ERS shall have the first right, but not the duty, to institute patent infringement actions against Third Parties based on the use of ERS Inventions which are used in the development, use, manufacture, distribution, promotion and/or sale of Compounds and/or Products in the Field. If ERS does not institute an infringement proceeding against an offending Third Party within 180 days of learning of such infringement or, in the event that a Third Party files a paragraph IV certification relating to any ERS Inventions pursuant to 21 U.S.C. Section 355(j)(2)(A)(vii)(IV) of the Hatch/Waxman Act (or any successor statute), if ERS does not institute an infringement proceeding against such Third Party within 30 days of receipt of notice of such paragraph IV certification, the Company shall have the right, but not the duty, to institute such an action relating to a claim of Product Infringement shall be first applied against payment of each Party’s costs and expenses in connection therewith, provided that to the extent that such costs and expenses were shared by the Parties [*] pursuant to Section 9.3(a), then such reimbursement shall be similarly shared. Any such recoveries in excess of such costs and expenses (the “Remainder”) will be shared by the Parties as follows: (a) if Portola has not exercised the Opt-Out Option, such Remainder shall be treated as Collaboration Operating Profit and shared by the Parties in accordance with Section 8.3; and (b) if Portola has exercised the Opt-Out Option, then such Remainder shall be [*], provided that [*].
(f) Portola shall have the exclusive right to enforce the Portola Patents [*] for any Infringement that is not a Product Infringement, without obligations to Biogen Idec except (i) as provided in Section 9.2 with respect to Infringements constituting reissues, reexaminations, appeals to appropriate patent offices and/or courts, interferences, derivation proceeding, post-grant review proceedings and foreign oppositions or similar proceedings, and (ii) Portola shall any infringement by such Third Party; provided that the Company may not enter into any settlement admitting the invalidity ofsettlement, consent judgment or otherwise impairing Biogen Idec’s rights in, the Portola Patents or Joint Patents other voluntary final disposition of such action which adversely effects any ERS Inventions without the prior written consent of Biogen IdecERS, which will not be unreasonably withheld. Portola The costs and expenses of any such action (including fees of attorneys and other professionals) shall [*] be borne by the Party instituting the action, or, if the Parties elect to cooperate in instituting and maintaining such action, such costs and expenses shall be borne by the Parties in such proportions as they may agree in writing. Each Party shall execute all necessary and proper documents, take such actions as shall be appropriate to allow the other Party(ies) to institute and prosecute such infringement actions and shall otherwise cooperate in the institution and prosecution of such actions (including, without limitation, consenting to being named as a nominal party thereto). Each Party prosecuting any such infringement actions shall keep the other Party(ies) reasonably informed as to the status of such actions. Any award paid by Third Parties as a result of such an infringement action (whether by way of settlement or [*] otherwise) shall be applied first to reimburse the Parties for all costs and expenses incurred by the Parties with respect to such action on a pro rata basis and, if after such reimbursement any infringementfunds shall remain from such award, expressly including any infringement [*]they shall be allocated as follows:
(i) if ERS and/or BMS has instituted and maintained such action alone, [*]ERS and/or BMS, as the case may be, shall be entitled to retain such remaining funds; (ii) if the Company has instituted and maintained such action alone, the Company shall be entitled to retain such remaining funds; or (iii) if the Parties have cooperated in instituting and maintaining such action, the Parties shall allocate such remaining funds between themselves in the same proportion as they have agreed to bear the expenses of instituting and maintaining such action.
Appears in 1 contract
Sources: Development, Promotion, Distribution and Supply Agreement (Bristol Myers Squibb Co)
Patent Enforcement. Each party shall promptly notify the other in writing of any alleged or threatened infringement of any patent included in the Licensed Patents of which such party becomes aware.
(a) Each Party will notify the other within [*] of With respect to any infringement by a Third Party of any of the Portola Patents or Joint Patents in the Territory of which such Party becomes aware, including any “patent certification” filed in the United States under 21 U.S.C. §355(b)(2) or 21 U.S.C. §355(j)(2) or similar provisions in other jurisdictions and of any declaratory judgment, opposition, or similar action alleging the invalidity, unenforceability or non-infringement of any of the Portola Patents or Joint Patents (collectively, an “Infringement”). Any such Infringement that (x) arises with respect to a [*], or (y) arises from [*] or [*] patent included in the Licensed Field (or any other [*] within the scope of the [*]) Patents, Akesis shall be deemed a “Product Infringement”.
(b) Biogen Idec shall have the right to bring and control any legal action in connection with such Product Infringement in the Territory as it reasonably determines appropriate (provided that Biogen Idec shall not have the right to enforce any [*] or proceeding with respect to infringing conduct such infringement at its own expense and by counsel of its own choice, and, solely to the extent such infringement involves the manufacture, use or sale of any product that is outside would compete with the scope of Products in the [*])Territory, which right shall be [*] with respect to Product Infringements concerning [*], and Portola GS shall have the right right, at its own expense, to be represented in any such action by counsel of its choice own choice. To the extent such infringement involves the manufacture, use or sale of any product that would compete with the Products in the Territory, if Akesis fails to bring an action or proceeding within (i) sixty (60) days following the notice of alleged infringement or (ii) ten (10) days before the time limit, if any, set forth in the applicable laws and regulations for the filing of such actions, whichever comes first, GS shall have the right, but not the obligation, to bring and control any action or proceeding with respect to such infringement at its own expense and by counsel of its own choice, and Akesis shall have the right, at its own expense, to be represented in any such action by counsel of its own choice. Biogen Idec GS shall bear all other [*] = Certain confidential information contained in this documentbe entitled, marked by bracketsat Akesis' option, has been omitted to either (i) a credit earned on litigation and filed separately with the Securities and Exchange Commission pursuant to Rule 406 of the Securities Act of 1933, as amended. reasonable costs incurred expenses GS incurs in connection with its enforcement of the Licensed Patents against the minimum royalty payments due under Section 4.3, less any net recovery realized by GS as a result of such legal action, provided that, litigation; or (ii) reimbursement of all sums spent by GS in connection with its enforcement of the event Portola does not exercise its Opt-Out Option, then such expenses incurred with respect to any Patents Rights in the Profit Share Territory shall be shared on the basis of [*] to Biogen Idec and [*] to Portola as [*]same.
(cb) The enforcing Party shall keep In the other Party reasonably informed of the status and progress of such enforcement efforts, shall reasonably consider the other Party’s comments on any such efforts. At the request of the enforcing Partyevent a party brings an infringement action in accordance with this Section 5.3, the other Party party shall provide reasonable assistance in connection therewithcooperate fully, including by executing reasonably appropriate documents, cooperating in discovery and joining as a party if required to the action if required.
(d) In connection with any bring such proceedingaction, the Party bringing furnishing of a power of attorney. Neither party shall have the action shall not enter into right to settle any settlement admitting patent infringement litigation under this Section 5.3 in a manner that diminishes the invalidity of, rights or otherwise impairing the other Party’s rights in, the Portola Patents or Joint Patents without the prior written consent interests of the other Party.
party without the consent of such other party (e) which shall not be unreasonably withheld). Any recoveries resulting from recovery realized as a result of such an action relating to a claim litigation, after reimbursement of Product Infringement any litigation expenses of Akesis and/or GS, as the case may be, shall be first applied against payment retained by the party that brought and controlled such litigation for purposes of each Party’s costs and expenses in connection therewiththis Agreement, provided except that any recovery realized by GS as a result of such litigation, after reimbursement of the parties' respective litigation or other reasonable expenses, shall, to the extent that such costs and expenses were shared by the Parties [*] pursuant attributable to Section 9.3(a)lost sales of Products, then such reimbursement shall be similarly shared. Any such recoveries in excess of such costs and expenses (the “Remainder”) will be shared by the Parties as follows: (a) if Portola has not exercised the Opt-Out Option, such Remainder shall be treated as Collaboration Operating Profit and shared Net Sales of Products by the Parties in accordance with Section 8.3; and (b) if Portola has exercised the Opt-Out Option, then such Remainder shall be [*], provided that [*]GS.
(f) Portola shall have the exclusive right to enforce the Portola Patents [*] for any Infringement that is not a Product Infringement, without obligations to Biogen Idec except (i) as provided in Section 9.2 with respect to Infringements constituting reissues, reexaminations, appeals to appropriate patent offices and/or courts, interferences, derivation proceeding, post-grant review proceedings and foreign oppositions or similar proceedings, and (ii) Portola shall not enter into any settlement admitting the invalidity of, or otherwise impairing Biogen Idec’s rights in, the Portola Patents or Joint Patents without the prior written consent of Biogen Idec. Portola shall [*] or [*] with respect to any infringement, expressly including any infringement [*], [*].
Appears in 1 contract
Patent Enforcement. (a) Each Party will notify the other within [***] of becoming aware of any infringement by a Third Party of any of the Portola Patents, Joint Patents or Joint Dermavant Patents through the making, using or selling of a Product or any Syk or JAK inhibitor in the Licensed Field in the Territory of which such Party becomes aware, including any “patent certification” filed in the United States under 21 U.S.C. §355(b)(2) or 21 U.S.C. §355(j)(2) or similar provisions in other jurisdictions and of any declaratory judgment, opposition, or similar action alleging the invalidity, unenforceability or non-infringement of any of the Portola Patents or Joint Patents such Patent Rights (collectively, an “Infringement”). Any such Infringement that (x) arises with respect to a [*], or (y) arises from [*] or [*] in the Licensed Field (or any other [*] within the scope of the [*]) shall be deemed a collectively “Product Infringement”).
(b) Biogen Idec shall have the right to bring and control For any legal action in connection with such Product Infringement in the Territory Licensed Field of a Portola Patent, as it reasonably determines appropriate (provided that Biogen Idec between the Parties, Dermavant shall not have the right first right, but not the obligation, to bring an appropriate suit or other action (an “Action”) to enforce any [*] with respect such Portola Patent against such Product Infringement. If Dermavant decides not to infringing conduct that is outside the scope of the [*])bring such an Action, which right it shall be [*] with respect to Product Infringements concerning [*]so inform Portola, and Portola shall have the right right, but not the obligation, to be represented in any bring an Action to enforce such action by counsel Portola Patent against such Product Infringement. Notwithstanding the above, if the claims of its choice and at its own expense. Biogen Idec shall bear all other [*] = Certain confidential information contained in this documentsuch Portola Patent are directed only to the composition of matter of the Licensed Compound, marked by brackets, has been omitted and filed separately then Dermavant will only assert such Portola Patent with the Securities prior consent of Portola, and Exchange Commission pursuant to Rule 406 of the Securities Act of 1933, as amendedPortola will consider such request in good faith. reasonable costs incurred in connection with such legal action, provided that, in In the event Portola does not exercise its Opt-Out Optionconsents to the assertion of such composition of matter claim(s), then such expenses incurred with respect to any Patents Rights in the Profit Share Territory Portola shall be shared on the basis enforcing Party for such claim(s) for the purpose of [*] to Biogen Idec this Section 9.4(b) and [*] to Portola as [*]Section 9.4(e).
(c) For any Product Infringement in the Retained Field of a Portola Patent, as between the Parties, Portola shall have the sole right, but not the obligation, to bring an Action to enforce such Portola Patent against such Product Infringement.
(d) For any Product Infringement of a Joint Patent, Dermavant shall have the first right, but not the obligation, to bring an Action to enforce such Joint Patent against such Product Infringement. If Dermavant decides not to bring such an Action, it shall so inform Portola, and Portola shall have the right, but not the obligation, to bring an Action to enforce such Joint Patent against such Product Infringement. CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY [***], HAS BEEN OMITTED BECAUSE DERMAVANT SCIENCES LTD. HAS DETERMINED THE INFORMATION (I) IS NOT MATERIAL AND (II) WOULD LIKELY CAUSE COMPETITIVE HARM TO DERMAVANT SCIENCES LTD. IF PUBLICLY DISCLOSED.
(e) The enforcing Party of any Product Infringement shall control the enforcement action and keep the other Party reasonably informed of the status and progress of such enforcement efforts, efforts and shall reasonably consider the other Party’s comments on any such efforts. At the request of the enforcing Party, the other Party shall provide reasonable assistance in connection therewith, including by executing reasonably appropriate documents, cooperating in discovery and joining as a party to the action if required.
(d) . If a Party is required to join in any action, it may choose to retain its own counsel at its own expense. In connection with any such proceeding, the Party bringing the action shall not enter into any settlement admitting the invalidity of, or otherwise impairing the other Party’s rights in, the Portola Patents, Joint Patents or Joint Dermavant Patents without the prior written consent of the other Party.
(ef) The enforcing Party shall be solely responsible for the costs and expenses incurred by the Parties in an Action against Product Infringement. Any recoveries resulting from such an action relating to a claim of Action against Product Infringement shall be first applied against payment of each Party’s costs and expenses in connection therewith, provided that to the extent that such costs and expenses were shared by the Parties [*] pursuant to Section 9.3(a), then such reimbursement shall be similarly shared. Any such recoveries in excess of such costs and expenses (the “Remainder”) will shall be shared by between the Parties as follows: (ai) if Portola has not exercised Dermavant is the Opt-Out Optionenforcing Party, such Remainder shall be treated as Collaboration Operating Profit and shared by the Parties in accordance with Section 8.3; and (b) if Portola has exercised the Opt-Out Option, then such Remainder shall be [***]; and (ii) if Portola is the enforcing Party, provided that the Remainder shall be [***].
(fg) For any infringement of a Portola shall have the exclusive right to enforce the Portola Patents [*] for any Infringement Patent or Joint Patent that is not a Product Infringement, without obligations Portola shall have the sole right, but not the obligation, to Biogen Idec except (i) as provided in Section 9.2 with respect bring an Action to Infringements constituting reissuesenforce such Portola Patent or Joint Patent against such infringement, reexaminations, appeals to appropriate patent offices and/or courts, interferences, derivation proceeding, post-grant review proceedings and foreign oppositions or similar proceedings[***], and (ii) Portola shall not enter into any settlement admitting the invalidity of, or otherwise impairing Biogen Idec’s rights in, the Portola Patents or Joint Patents without the prior written consent of Biogen Idec. Portola shall [*] or [*] with respect to any infringement, expressly including any infringement [*], [*].
Appears in 1 contract
Patent Enforcement. (a) Each Party will notify shall promptly report in writing to the other within [*] Party during the term of this Agreement any: (i) known infringement, suspected infringement, unauthorized use or misappropriation of any infringement of the Patents in the Field in the Territory by a Third Party of any of the Portola Patents or Joint Patents in the Territory of which such Party it becomes aware, including any “patent certification” filed in and shall provide the United States under 21 U.S.C. §355(b)(2) other Party with all available evidence supporting said infringement, suspected infringement or 21 U.S.C. §355(j)(2) unauthorized use or similar provisions in other jurisdictions and of any declaratory judgment, oppositionmisappropriation. Within [*] after Scynexis becomes, or similar action alleging the invalidityis made, unenforceability or non-infringement aware of any of the Portola Patents or Joint Patents (collectivelyforegoing, an “Infringement”). Any such Infringement it shall advise R-Pharm in writing that (x) arises with respect [*] Scynexis has elected to a initiate proceedings [*], or (y) arises from . The inability of Scynexis to decide on a course of action within such [*] or [*] in the Licensed Field (or any other [*] within the scope period shall for purposes of the [*]) shall this Agreement be deemed a “Product Infringement”decision not to initiate an infringement or other appropriate suit.
(b) Biogen Idec shall have the right to bring and control any legal action in connection with such Product Infringement in the Territory as it reasonably determines appropriate (provided that Biogen Idec shall not have the right to enforce any Within [*] with respect to infringing conduct that is outside the scope of the [*]), which right shall be [*] with respect to Product Infringements concerning [*], and Portola shall have the right to be represented in any such action by counsel of its choice and at its own expense. Biogen Idec shall bear all other after Scynexis [*] = 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. reasonable costs incurred in connection with such legal actionbecomes, provided thator is made, aware of any infringement, suspected infringement or unauthorized use or misappropriation by a Third Party in the event Portola does not exercise its Opt-Out Option, then such expenses incurred with respect to any Patents Rights Field in the Profit Share Territory Territory, as provided in paragraph (a) above, and provided that Scynexis shall be shared on have advised R-Pharm, within the basis of [*] to Biogen Idec and period provided in paragraph (a) above of its [*] decision to Portola as file suit, Scynexis [*]] shall initiate an infringement or other appropriate suit anywhere in the world against such Third Party. Scynexis shall provide R-Pharm with an opportunity to make suggestions and comments regarding such suit and shall promptly notify R-Pharm of the commencement of such suit. Scynexis shall keep R-Pharm promptly informed of, and shall from time to time consult with R-Pharm regarding the status of any such suit and shall provide R-Pharm with copies of all documents filed in, and all written communications relating to, such suit. Scynexis shall select counsel who shall be reasonably acceptable to R-Pharm. Scynexis shall, except as provided below, pay all expenses of the suit, including, without limitation, attorneys’ fees and court costs. If necessary, R-Pharm shall join as a party to the suit but shall be under no obligation to participate except to the extent that such participation is required as the result of being a named party to the suit; provided, however, R-Pharm shall have the right to participate and be represented in any suit by its own counsel at its own expense. Scynexis shall not settle any such suit involving rights of R-Pharm without obtaining the prior written consent of R-Pharm, which consent shall not be unreasonably withheld. [*] = 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.
(c) The enforcing Party In the event that Scynexis does not inform R-Pharm of its intent to initiate an infringement or other appropriate suit within the [*] period provided in paragraph (a) above, or does not initiate such an infringement other appropriate action within the [*] period provided in paragraph (b) above, R-Pharm shall keep have the right, but not the duty, at its expense, to initiate an infringement or other Party reasonably informed appropriate suit. In exercising its rights pursuant to this paragraph (c), R-Pharm shall have the sole and exclusive right to select counsel and shall pay all expenses of the status and progress of such enforcement efforts, shall reasonably consider the other Party’s comments on any such efforts. At the request of the enforcing Party, the other Party shall provide reasonable assistance in connection therewithsuit, including by executing reasonably appropriate documentswithout limitation attorneys’ fees and court costs. If necessary, cooperating in discovery and joining Scynexis shall join as a party to the suit and shall participate only to the extent that such participation is required as a result of its being a named party to the suit or being the holder of any patent at issue or being the owner or licensor of any Patents at issue. At R-Pharm’s request, Scynexis shall offer reasonable assistance to R-Pharm in connection therewith at no charge except for reimbursement of reasonable out-of-pocket expenses incurred in rendering such assistance. Without limiting the generality of the preceding sentence, Scynexis shall cooperate fully in order to enable R-Pharm to institute any action if requiredhereunder. Scynexis shall have the right to be represented in any such suit by its own counsel at its own expense. [*] = 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.
(d) In Any recovery obtained by either or both Scynexis and R-Pharm in connection with or as a result of any such proceedingaction contemplated by this Section 9.3, whether by settlement or otherwise, shall be shared in order as follows:
(i) the Party bringing party which initiated and prosecuted the action shall not enter into any settlement admitting the invalidity of, or otherwise impairing the other Party’s rights in, the Portola Patents or Joint Patents without the prior written consent recoup all of the other Party.
(e) Any recoveries resulting from such an action relating to a claim of Product Infringement shall be first applied against payment of each Party’s its costs and expenses incurred in connection therewithwith the action;
(ii) the other party shall then, provided that to the extent that such possible, recover its costs and expenses were shared by incurred in connection with the Parties [*] pursuant to Section 9.3(a), action; and
(iii) the amount of any recovery remaining shall then such reimbursement shall be similarly shared. Any such recoveries in excess of such costs and expenses (the “Remainder”) will be shared by the Parties as follows: (a) if Portola has not exercised the Opt-Out Option, such Remainder shall be treated as Collaboration Operating Profit and shared by the Parties in accordance with Section 8.3; and (b) if Portola has exercised the Opt-Out Option, then such Remainder shall be [*], provided that [*].
(f) Portola shall have the exclusive right to enforce the Portola Patents [*] for any Infringement that is not a Product Infringement, without obligations to Biogen Idec except (i) as provided in Section 9.2 with respect to Infringements constituting reissues, reexaminations, appeals to appropriate patent offices and/or courts, interferences, derivation proceeding, post-grant review proceedings and foreign oppositions or similar proceedings, and (ii) Portola shall not enter into any settlement admitting the invalidity of, or otherwise impairing Biogen Idec’s rights in, the Portola Patents or Joint Patents without the prior written consent of Biogen Idec. Portola shall [*] or [*] with respect to any infringement, expressly including any infringement [*], [*].
Appears in 1 contract
Sources: Development, License and Supply Agreement (Scynexis Inc)
Patent Enforcement. (a) Product Infringement of Xenon Patent Rights and Joint Patent Rights.
(i) Each Party will shall notify the other within [*] promptly after becoming aware of (A) any alleged or threatened infringement by a Third Party of any of the Portola Patents Xenon Patent Right or Joint Patents in the Territory of which such Party becomes awarePatent Right, including any “patent certification” filed in the United States under 21 U.S.C. §355(b)(2) or 21 U.S.C. §355(j)(2) with respect to any Product or similar provisions in other jurisdictions and of (a “Patent Certification Notice”), or (B) any declaratory judgment, opposition, judgment action by a Third Party that is developing or similar action commercializing a Compound or Product alleging the invalidity, unenforceability or non-infringement of any of the Portola Patents Xenon Patent Right or Joint Patents Patent Right (collectively, an “Infringement”). Any such Infringement that (xA) arises with respect to a [*], or (y) arises from [*] or [*] in the Licensed Field (or any other [*] within the scope of the [*]) shall be deemed a B), “Product Infringement”).
(bii) Biogen Idec Neurocrine shall have the first right to bring and control any legal action in connection with any Product Infringement in the Territory at its own expense and as it reasonably determines appropriate, and Xenon shall have the right to be represented in any such action by counsel of its choice. If Neurocrine does not bring such legal action within [†] days after the notice provided pursuant to Section 9.3(a)(i) or in the case of a Patent Certification Notice, within [†] days of receipt of the same, then upon Neurocrine’s written consent, Xenon shall have the right to bring and control any legal action in connection with such Product Infringement in the Territory as it reasonably determines appropriate (provided that Biogen Idec shall not have the right to enforce any [*] with respect to infringing conduct that is outside the scope of the [*]), which right shall be [*] with respect to Product Infringements concerning [*], and Portola shall have the right to be represented in any such action by counsel of its choice and at its own expense. Biogen Idec shall bear all other [*] = 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. reasonable costs incurred in connection with such legal action, provided that, in the event Portola does not exercise its Opt-Out Option, then such expenses incurred with respect to any Patents Rights in the Profit Share Territory shall be shared on the basis of [*] to Biogen Idec and [*] to Portola as [*].
(ciii) The enforcing Party shall keep the other Party reasonably informed of the status and progress of such enforcement efforts, shall reasonably consider the other Party’s comments on any such efforts. At the request and expense of the enforcing PartyParty bringing the action under Section 9.3(a)(ii), the other Party shall provide reasonable assistance in connection therewith, including by executing reasonably appropriate documents, cooperating in discovery and joining as a party to the action if required.
(d) . In connection with any such proceeding, the Party bringing the action under Section 9.3(a)(ii) shall not enter into any settlement admitting the invalidity of, or otherwise impairing the other Party’s rights in, the Portola Patents Xenon Patent Rights or Joint Patents Patent Rights without the prior written consent of the other Party, which shall not be unreasonably withheld, conditioned or delayed.
(eiv) Any recoveries resulting from such an enforcement action under Section 9.3(a)(ii) relating to a claim of Product Infringement in the Territory shall be first applied against payment of each Party’s costs and expenses in connection therewith, provided that to the extent that such costs and expenses were shared by the Parties [*] pursuant to Section 9.3(a), then such reimbursement shall be similarly shared. Any such recoveries in excess of such costs and expenses (the “Remainder”) will shall be shared by the Parties as follows: (a) if Portola has not exercised Neurocrine is the Opt-Out OptionParty bringing the action, Neurocrine will retain such Remainder shall excess recoveries, which will be treated as Collaboration Operating Profit and shared by deemed Net Sales of the Parties in accordance with applicable Product subject to royalty payments to Xenon under Section 8.3; and (b) if Portola has exercised the Opt-Out Option, then such Remainder shall be [*], provided that [*].
(f) Portola shall have the exclusive right to enforce the Portola Patents [*] for any Infringement that is not a Product Infringement, without obligations to Biogen Idec except (i) as provided in Section 9.2 with respect to Infringements constituting reissues, reexaminations, appeals to appropriate patent offices and/or courts, interferences, derivation proceeding, post-grant review proceedings and foreign oppositions or similar proceedings8.7, and (ii) Portola shall not enter into any settlement admitting if Xenon is the invalidity ofParty bringing the action, or otherwise impairing Biogen Idec’s rights in, the Portola Patents or Joint Patents without the prior written consent Xenon will receive [†] and Neurocrine will receive [†] of Biogen Idec. Portola shall [*] or [*] with respect to any infringement, expressly including any infringement [*], [*]such excess recoveries.
Appears in 1 contract
Sources: License and Collaboration Agreement (Xenon Pharmaceuticals Inc.)
Patent Enforcement. (a) Each Party will shall promptly notify the other within [*] Party, if (i) it becomes aware of any alleged or threatened infringement of any Licensed Patent by a Third Party Party’s development, manufacture, commercialization or exploitation of any of the Portola Patents a Compound or Joint Patents Product in the Territory of which such Party becomes aware, including any “patent certification” filed Field in the United States under 21 U.S.C. §355(b)(2) or 21 U.S.C. §355(j)(2) or similar provisions in other jurisdictions SynBio Territory, and of any related declaratory judgment, opposition, or similar action alleging the invalidity, unenforceability or non-infringement of any of the Portola Licensed Patents or Joint Patents (collectively, an “Infringement”). Any such Infringement that (x) arises with respect to a [*]in the Field in the SynBio Territory, or (yii) arises from [*] it becomes aware of any alleged or [*] threatened infringement of any SynBio Product Patent by a Third Party’s development, manufacture, commercialization or exploitation of a Compound or Product in the Licensed Field (ImmuneOnco Territory, and any related declaratory judgment, opposition, or similar action alleging the invalidity, unenforceability or non-infringement of any other [*] within the scope of the [*]SynBio Product Patents in the ImmuneOnco Territory (each in (i) shall be deemed or (ii), a “Product Infringement”). Promptly upon receipt of any such notice, the Parties (together with their respective intellectual property counsel) will confer with respect to whether and how to pursue an infringement action, subject to the terms and conditions set forth in clauses (b) through (f) below.
(b) Biogen Idec As between the Parties, SynBio shall have the first right (but not the obligation) to bring and control any legal action to enforce the Licensed Patent against any Product Infringement in the SynBio Territory, at its own expense as it reasonably determines appropriate after consultation with ImmuneOnco. If SynBio does not bring such legal action within [***] after the notice provided pursuant to Section 9.3(a), ImmuneOnco shall have the right (but not the obligation) to bring and control any legal action in connection with such Product Infringement in the SynBio Territory at its own expense; but after consultation with SynBio and subject to the prior written consent of SynBio, which consent shall not be unreasonably conditioned, delayed or withheld.
(c) As between the Parties, ImmuneOnco shall have the first right (but not the obligation) to bring and control any legal action to enforce the SynBio Product Patent against any Product Infringement in the ImmuneOnco Territory, at its own expense as it reasonably determines appropriate (provided that Biogen Idec after consultation with SynBio, but subject to the prior written consent of SynBio, which consent shall not have the right to enforce any be unreasonably conditioned, delayed or withheld. If ImmuneOnco does not bring such legal action within [***] with respect after the notice provided pursuant to infringing conduct that is outside the scope of the [*]Section 9.3(a), which right shall be [*] with respect to Product Infringements concerning [*], and Portola SynBio shall have the right (but not the obligation) to be represented bring and control any legal action in any such action by counsel of its choice and connection therewith in the ImmuneOnco Territory at its own expense. Biogen Idec shall bear all other [*] = Certain confidential information contained , but after consultation with ImmuneOnco and such step-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. reasonable costs incurred in connection with such legal action, provided that, in the event Portola does not exercise its Opt-Out Option, then such expenses incurred with respect to any Patents Rights in the Profit Share Territory right shall be shared on subject to the basis prior written consent of [*] to Biogen Idec and [*] to Portola as [*]ImmuneOnco, which consent shall not be unreasonably conditioned, delayed or withheld.
(cd) The enforcing Party shall keep the other Party reasonably informed of the status and progress of such enforcement efforts, shall reasonably consider the other Party’s comments on any such efforts. At the request and expense of the enforcing Party bringing an action under Section 9.3(b) or 9.3(c) above or 9.3(f) below (the “Enforcing Party”), the other Party shall provide reasonable assistance in connection therewith, including by executing reasonably appropriate documents, cooperating in discovery and joining as a party to the action if required.
(d) required by Applicable Laws to pursue such action. In connection with any such proceedingenforcement action, the Enforcing Party bringing shall keep the other Party reasonably informed on the status of such action and shall not enter into any settlement admitting the invalidity or non-infringement of, or otherwise impairing the other Party’s rights in, in the Portola Licensed Patents or Joint SynBio Product Patents without the prior written consent of the other Party.consent
(e) Any recoveries resulting from such an enforcement action relating to a claim of Product Infringement of Licensed Patents in the SynBio Territory or of SynBio Product Patents in the ImmuneOnco Territory shall be first applied against payment of each Party’s costs and expenses in connection therewith, provided that to the extent that such costs and expenses were shared by the Parties [*] pursuant to Section 9.3(a), then such reimbursement shall be similarly shared. Any such recoveries in excess of such costs and expenses (the “Remainder”) will shall be shared retained by the Parties as follows: (a) Enforcing Party; provided that if Portola has not exercised SynBio is the Opt-Out Option, such Remainder shall be treated as Collaboration Operating Profit and shared by Enforcing Party of Licensed Patents in the Parties in accordance with Section 8.3; and (b) if Portola has exercised the Opt-Out OptionSynBio Territory, then such Remainder excess recoveries shall be deemed Net Sales and subject to royalty payment to ImmuneOnco under Section 8.5, and if ImmuneOnco is the Enforcing Party of SynBio Product Patents in the ImmuneOnco Territory, then [*]**] shall be paid by ImmuneOnco to SynBio, provided that and if SynBio is the Enforcing Party of SynBio Product Patents in the ImmuneOnco Territory, then [*]**] shall be paid by SynBio to ImmuneOnco.
(f) Portola ImmuneOnco shall have the exclusive right to bring and control any legal action to enforce (i) the Portola Licensed Patents [*] for against any Infringement infringement that is not a Product Infringement, without obligations and (ii) the Licensed Patents against any infringement in the ImmuneOnco Territory, at ImmuneOnco’s own expense and as ImmuneOnco reasonably determines appropriate, and ImmuneOnco shall have the right to Biogen Idec except retain all recoveries. SynBio shall have the exclusive right to bring and control any legal action to enforce (i) as provided in Section 9.2 with respect to Infringements constituting reissues, reexaminations, appeals to appropriate patent offices and/or courts, interferences, derivation proceeding, post-grant review proceedings and foreign oppositions or similar proceedingsthe SynBio Product Patents against any infringement that is not a Product Infringement, and (ii) Portola shall not enter into any settlement admitting the invalidity of, or otherwise impairing Biogen Idec’s rights in, the Portola Patents or Joint Patents without the prior written consent of Biogen Idec. Portola shall [*] or [*] with respect to any infringement, expressly including SynBio Product Patent against any infringement [*]in the SynBio Territory, [*].at SynBio’s own expense and as SynBio reasonably determines appropriate, and SynBio shall have the right to retain all recoveries 9.4
Appears in 1 contract
Sources: License and Collaboration Agreement (Instil Bio, Inc.)
Patent Enforcement. (a) Each Within and outside the Field, Kamada shall have the primary right, but not the obligation, to carry out actions against any Third Party will notify the other within [*] arising from such Third Party’s actual or anticipated infringement of any infringement by Patent(s) within the scope of the Kamada Licensed Patent Rights or defend against a Third Party of any of the Portola Patents or Joint Patents in the Territory of which such Party becomes aware, including any “patent certification” filed in the United States under 21 U.S.C. §355(b)(2) or 21 U.S.C. §355(j)(2) or similar provisions in other jurisdictions and of any Party’s declaratory judgment, opposition, or similar judgment action alleging the invalidity, unenforceability or non-infringement of any of the Portola Patents or Joint Patents (collectively, an “Infringement”). Any such Infringement that (xPatent(s) arises with respect to a [*], or (y) arises from [*] or [*] in the Licensed Field (or any other [*] within the scope of the [*]) Kamada Licensed Patent Rights, at Kamada’s expense. If Kamada determines that Baxter is an indispensable party to the action, Kamada shall be deemed a “Product Infringement”.
(b) Biogen Idec shall have the right provide written notice to bring B▇▇▇▇▇ and control any legal action B▇▇▇▇▇ hereby consents to participate in connection with such Product Infringement in the Territory as it reasonably determines appropriate (provided that Biogen Idec shall not have the right to enforce any [*] with respect to infringing conduct that is outside the scope of the [*])action. In such event, which right shall be [*] with respect to Product Infringements concerning [*], and Portola Baxter shall have the right to be represented in any such action by using counsel of its choice and own choice, at its own expense. Biogen Idec If Kamada brings an action within the Baxter Territory for infringement by a Third Party within the Field that results in a Litigation Award, then the Litigation Award shall bear all be shared by the Parties as provided in Section 5.4. Any recovery against a Third Party by Kamada in an action relating to infringement outside the Field and/or outside the Baxter Territory shall be retained by Kamada to the extent such recovery addresses such infringement outside the Field and/or outside the Baxter Territory. Notwithstanding the foregoing, Kamada agrees that it shall not enter into any settlement, consent, order, consent judgment or other voluntary final disposition of any action it brings under this Section 3.2 relating to the Field and in the Baxter Territory without the prior written consent of Baxter (which consent shall not be unreasonably withheld, conditioned or delayed). [*****] = Certain confidential information contained in Confidential portions of this document, marked by brackets, has document have been omitted redacted and filed separately with the Securities and Exchange Commission pursuant to Rule 406 of the Securities Act of 1933, as amended. reasonable costs incurred in connection with such legal action, provided that, in the event Portola does not exercise its Opt-Out Option, then such expenses incurred with respect to any Patents Rights in the Profit Share Territory shall be shared on the basis of [*] to Biogen Idec and [*] to Portola as [*]Commission.
(c) The enforcing Party shall keep the other Party reasonably informed of the status and progress of such enforcement efforts, shall reasonably consider the other Party’s comments on any such efforts. At the request of the enforcing Party, the other Party shall provide reasonable assistance in connection therewith, including by executing reasonably appropriate documents, cooperating in discovery and joining as a party to the action if required.
(d) In connection with any such proceeding, the Party bringing the action shall not enter into any settlement admitting the invalidity of, or otherwise impairing the other Party’s rights in, the Portola Patents or Joint Patents without the prior written consent of the other Party.
(e) Any recoveries resulting from such an action relating to a claim of Product Infringement shall be first applied against payment of each Party’s costs and expenses in connection therewith, provided that to the extent that such costs and expenses were shared by the Parties [*] pursuant to Section 9.3(a), then such reimbursement shall be similarly shared. Any such recoveries in excess of such costs and expenses (the “Remainder”) will be shared by the Parties as follows: (a) if Portola has not exercised the Opt-Out Option, such Remainder shall be treated as Collaboration Operating Profit and shared by the Parties in accordance with Section 8.3; and (b) if Portola has exercised the Opt-Out Option, then such Remainder shall be [*], provided that [*].
(f) Portola shall have the exclusive right to enforce the Portola Patents [*] for any Infringement that is not a Product Infringement, without obligations to Biogen Idec except (i) as provided in Section 9.2 with respect to Infringements constituting reissues, reexaminations, appeals to appropriate patent offices and/or courts, interferences, derivation proceeding, post-grant review proceedings and foreign oppositions or similar proceedings, and (ii) Portola shall not enter into any settlement admitting the invalidity of, or otherwise impairing Biogen Idec’s rights in, the Portola Patents or Joint Patents without the prior written consent of Biogen Idec. Portola shall [*] or [*] with respect to any infringement, expressly including any infringement [*], [*].
Appears in 1 contract
Patent Enforcement. (a) Each Party will notify BioStar and Asahi shall each give immediate notice to the other within [*] of any infringement of the Patent Rights, BioStar Technology or Asahi Improvements by a Third Party of any of the Portola Patents or Joint Patents in the Territory of third party which such Party becomes aware, including any “patent certification” filed in the United States under 21 U.S.C. §355(b)(2) or 21 U.S.C. §355(j)(2) or similar provisions in other jurisdictions and of any declaratory judgment, opposition, or similar action alleging the invalidity, unenforceability or non-infringement of any of the Portola Patents or Joint Patents (collectively, an “Infringement”). Any such Infringement that (x) arises with respect may come to a [*], or (y) arises from [*] or [*] in the Licensed Field (or any other [*] within the scope of the [*]) shall be deemed a “Product Infringement”its attention.
(b) Biogen Idec Asahi shall have the first right, but not the obligation, to institute and conduct any legal action in the Territory against such third party infringers of the Patent Rights or BioStar Technology, and may enter into settlement agreements with the approval of BioStar not to be unreasonably withheld. Any amounts recovered by Asahi as a result of an infringement action based on the BioStar Technology or the Patent Rights shall be allocated as follows:
(a) Asahi shall first be paid 200% of its costs incurred in conducting such legal action, and (b) any remaining amounts shall be deemed to be Net Sales Value earned in the quarter in which such recovered amounts were paid and subject to the running royalty set forth in Paragraph 4.2.
(c) In the event that Asahi decides not to commence actions or proceedings against an infringer pursuant to Paragraph 6.2(b) above, BioStar, at BioStar's expense, shall have the right to bring initiate and control pursue such action; provided, however, that Asahi shall cooperate with and assist BioStar in such action, at Asahi's expense, to the extent that such cooperation and assistance are reasonably available. Any amounts recovered by BioStar as a result of such legal action shall be used first to pay to BioStar 200% of its costs incurred in conducting such legal action and any remaining amounts shall be shared equally by the Parties.
(d) BioStar shall have the first right, but not the obligation, to institute and conduct any legal action in connection with such Product Infringement in outside the Territory as it reasonably determines appropriate (provided that Biogen Idec shall not have the right to enforce against any [*] with respect to infringing conduct that is outside the scope third party infringers of the [*])Asahi Improvements and may enter into settlement agreements with the approval of Asahi, which right not to be unreasonably withheld. Any amounts recovered by BioStar as a result of such infringement shall be [*] with respect retained solely by BioStar.
(e) In the event that BioStar decides not to Product Infringements concerning [*]commence actions or proceedings against an infringer pursuant to Paragraph 6.2(d) above, and Portola Asahi, at Asahi's expense, shall have the right to be represented initiate and pursue such action; provided, however, that BioStar shall cooperate with and assist Asahi in any such action by counsel of its choice and at its own expense. Biogen Idec shall bear all other [*] = 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. reasonable costs incurred in connection with such legal action, provided thatat BioStar's expense, in the event Portola does not exercise its Opt-Out Option, then such expenses incurred with respect to any Patents Rights in the Profit Share Territory shall be shared on the basis of [*] to Biogen Idec and [*] to Portola as [*].
(c) The enforcing Party shall keep the other Party reasonably informed of the status and progress of such enforcement efforts, shall reasonably consider the other Party’s comments on any such efforts. At the request of the enforcing Party, the other Party shall provide reasonable assistance in connection therewith, including by executing reasonably appropriate documents, cooperating in discovery and joining as a party to the action if required.
(d) In connection with any such proceeding, the Party bringing the action shall not enter into any settlement admitting the invalidity of, or otherwise impairing the other Party’s rights in, the Portola Patents or Joint Patents without the prior written consent of the other Party.
(e) Any recoveries resulting from such an action relating to a claim of Product Infringement shall be first applied against payment of each Party’s costs and expenses in connection therewith, provided that to the extent that such costs and expenses were shared by the Parties [*] pursuant to Section 9.3(a), then such reimbursement shall be similarly shared. Any such recoveries in excess of such costs and expenses (the “Remainder”) will be shared by the Parties as follows: (a) if Portola has not exercised the Opt-Out Option, such Remainder shall be treated as Collaboration Operating Profit and shared by the Parties in accordance with Section 8.3; and (b) if Portola has exercised the Opt-Out Option, then such Remainder shall be [*], provided that [*].
(f) Portola shall have the exclusive right to enforce the Portola Patents [*] for any Infringement that is not a Product Infringement, without obligations to Biogen Idec except (i) as provided in Section 9.2 with respect to Infringements constituting reissues, reexaminations, appeals to appropriate patent offices and/or courts, interferences, derivation proceeding, post-grant review proceedings and foreign oppositions or similar proceedings, and (ii) Portola shall not enter into any settlement admitting the invalidity of, or otherwise impairing Biogen Idec’s rights in, the Portola Patents or Joint Patents without the prior written consent of Biogen Idec. Portola shall [*] or [*] with respect to any infringement, expressly including any infringement [*], [*].cooperation and
Appears in 1 contract