Common use of Patent Litigation Clause in Contracts

Patent Litigation. (a) RE shall have the right, but not the obligation, to commence any action at law or in equity at its own expense against any third party for infringement of one or more of the Licensed Patents. With respect to any legal actions instituted, (i) RE may join Casella in such action and include it as a named party in the action if Casella is a necessary party under applicable Law; (ii) Casella may, at its option and expense, participate in such action (e.g., as a party in the action or otherwise); (iii) Casella shall assist RE in the prosecution of such litigation to the extent reasonably requested and RE shall reimburse Casella for its reasonable out of pocket costs and expenses incurred in connection with such assistance unless Casella voluntarily joins in such action in which case Casella shall bear all of its costs and expenses; and (iv) except as provided in the following sentence RE shall retain any recovery in such action. If Casella joins in such action and has paid for all of its own costs and expenses, including legal fees, RE and Casella shall share in proportion to the damages for the acts of infringement outside and inside the Franchise Territory, respectively, in such action after each Parties’ expenses and legal fees have been deducted from the recovery. (b) If, however, RE elects not to institute such an action against a third party with respect to infringement within the Franchise Territory, it shall promptly notify Casella in writing and Casella shall have the right, but not the obligation, to institute action at its own expense against such third party. With respect to any such legal actions instituted by Casella, (i) Casella may join RE in such action and include it as a named party in the action if RE is a necessary party under applicable Law; (ii) RE may, at its option and expense, participate in such action (e.g., as a party in the action or otherwise); (iii) RE shall assist Casella in the prosecution of such litigation to the extent reasonably requested and Casella shall reimburse RE for its reasonable costs and expenses incurred in connection with such assistance unless RE voluntarily joins in such action in which case RE shall bear all of its costs and expenses; and (iv) Casella shall retain any recovery in such action related to infringement in the Franchise Territory, with any recovery relating the territories outside the Franchise Territory being provided to and retained by RE should it join in the action and pay its own legal fees and costs.

Patent Litigation. (aA) RE In the event any party hereto receives notice of alleged infringement of any LICENSED PATENT RIGHTS in the FIELD, it shall promptly notify the other party in writing of such infringement. While BD is an exclusive licensee and paying royalties under paragraph 2(A) of Article III, it shall have the right, but not the obligation, to commence any action at law or in equity at its own expense bring suit and to control the conduct thereof against any third party for infringement of one or more of the Licensed Patents. With respect alleged infringer, and to any legal actions instituted, (i) RE may join Casella in such action and include it as a named party in the action if Casella is a necessary party under applicable Law; (ii) Casella may, at its option and expense, participate in such action (e.g., LICENSOR as a party to such suit, in the action or otherwise); (iii) Casella which event BD shall assist RE in the prosecution of such litigation to the extent reasonably requested hold LICENSOR free, clear and RE shall reimburse Casella for its reasonable out of pocket harmless from any and all costs and expenses incurred in connection with of such assistance unless Casella voluntarily joins litigation, including attorneys' fees. In the event BD exercises the right to bring suit herein conferred, it shall have the right to first reimburse itself out of any sums recovered in such action suit or in which case Casella shall bear settlement thereof for all of its costs and expenses; expenses of every kind and character, including attorneys' fees, and if after such reimbursement, any recovery shall remain, twenty-five percent (iv25%) except thereof shall be paid to LICENSOR. It is understood that, if BD brings suit against an infringer as provided in herein, and the following sentence RE assistance of LICENSOR'S employees is required or LICENSOR'S employees are deposed therein, then BD shall retain any recovery in such action. If Casella joins in such action and has paid for all of its own costs and expenses, including legal fees, RE and Casella shall share in proportion to the damages compensate LICENSOR for the acts reasonable time and expenses of infringement outside LICENSOR'S employees except for the actual time such employees are being deposed as a fact witness, and inside the Franchise Territory, respectively, in such action payment shall be made by BD promptly after each Parties’ expenses and legal fees have been deducted from the recoveryinvoiced. (bB) IfIf BD does not bring suit against said infringer, howeveras herein provided, RE elects not to institute within one hundred twenty (120) days after receipt of such an action against a third party with respect to infringement within the Franchise Territorynotice, it shall promptly notify Casella in writing and Casella LICENSOR shall have the right, but shall not the obligationbe obligated, to institute action bring suit for such alleged infringement, and to join BD as a party to such suit only if a court of competent jurisdiction determines BD is an indispensable party to such suit, in which event LICENSOR shall hold BD free, clear and harmless from any ** Certain portions of this exhibit have been omitted based upon a request for confidential treatment that has been filed with the Commission. The omitted portions have been filed separately with the Commission. and all costs and expenses of such litigation, including attorneys' fees. It is understood that, if LICENSOR brings suit against an infringer as provided herein, and the assistance of BD's employees is required or BD's employees are deposed therein, then LICENSOR shall compensate BD for the reasonable time and expenses of BD's' employees, except for actual time such employees are being deposed as a fact witness, and payment shall be made by LICENSOR promptly after invoiced. In the event LICENSOR exercises the right to bring suit for such alleged infringement, any sums recovered in any suit or settlement shall belong to LICENSOR. However, after first deducting all costs and expenses of every kind and character, including attorneys' fees and if after such reimbursement of Licensor any recovery remains, twenty-five percent (25%) of any such remaining recovery received by LICENSOR shall be considered as royalty payments as though paid by BD and shall be credited to BD against earned royalties payable by BD on PATENTED PRODUCTS. (C) Any VALID CLAIM held to be invalid or unenforceable by a court of competent jurisdiction shall be considered canceled from the LICENSED PATENT RIGHTS effective as of the date BD or the third party receives a final judgment in such legal action, which is unappealed or unappealable. (D) Each party shall always have the right to be represented by counsel of its own selection and at its own expense against such third partyin any suit instituted by the other party for infringement, under the terms hereof. With respect Either party has the right, within ninety (90) days of the filing of the original complaint, to join in, but not control, any such legal actions instituted infringement suit brought by Casellathe other party and shall share equally in the cost and expenses of such litigation, including attorneys' fees, and any sums recovered. ** Certain portions of this exhibit have been omitted based upon a request for confidential treatment that has been filed with the Commission. The omitted portions have been filed separately with the Commission. (A) If BD is sued by a third party in any country charging infringement of a patent based on a PATENTED PRODUCT, wherein such claim of infringement is based on a feature or features owned by LICENSOR under the LICENSED PATENT RIGHTS, and on such feature(s) BD is paying royalties to LICENSOR under paragraph 2(A) of Article III, BD shall promptly notify LICENSOR. (B) In the event of (i) Casella may join RE a final adjudication in any such action and include it as a named party in the action if RE is a necessary party under applicable Law; suit enjoining BD from making, using, or selling PATENTED PRODUCTS based solely on features which make such products PATENTED PRODUCTS or holding BD liable for damages based on such features or (ii) RE may, at its option and expense, participate a settlement of such suit requiring payment of damages by BD relative to such features in such action (e.g.country, an amount shall be deducted by BD from future royalties sufficient to reimburse itself for one-half its damages and legal expenses incurred and paid by BD in such suit, but in no event shall BD's royalty payments to LICENSOR be reduced below a [**] royalty payable on such PATENTED PRODUCT in any country. 3. While this Agreement is in effect, should BD find it necessary, or an exercise of reasonable business prudence, to obtain a license under any patent rights from a third party in a particular country in order to render marketable the PATENTED PRODUCT, because the PATENTED PRODUCT contains a feature or feature under the LICENSED PATENT RIGHTS that is also covered by the patent rights of the third party, it shall notify LICENSOR of such decision. If such a third party license is obtained by BD, or as a result of a settlement entered into with respect to patent rights dominant to the rights herein granted, BD is required to pay and does pay royalties to such third party in the action or otherwise); (iii) RE shall assist Casella respect of BD's sales of such PATENTED PRODUCT in the prosecution particular country, the applicable royalties payable to LICENSOR under paragraph 2(A) of such litigation Article 3, with respect to the extent reasonably requested and Casella particular country, pursuant to this AGREEMENT may be reduced by BD by such payments, but in no event shall reimburse RE for its reasonable costs and expenses incurred in connection with BD's royalty payments to LICENSOR be reduced below a [**] royalty payable on such assistance unless RE voluntarily joins PATENTED PRODUCT in such action in which case RE shall bear all country. ** Certain portions of its costs and expenses; and (iv) Casella shall retain any recovery in such action related to infringement in this exhibit have been omitted based upon a request for confidential treatment that has been filed with the Franchise Territory, Commission. The omitted portions have been filed separately with any recovery relating the territories outside the Franchise Territory being provided to and retained by RE should it join in the action and pay its own legal fees and costsCommission.

Patent Litigation. (aA) RE In the event either party hereto receives notice of alleged infringement of any of the LICENSED PATENT, it shall promptly notify the other party in writing of such infringement. BD shall have the right, but not the obligation, to commence any action at law or in equity at its own expense bring suit and to control the conduct thereof against any third party for infringement of one or more of the Licensed Patents. With respect alleged infringer, and to any legal actions instituted, (i) RE may join Casella in such action and include it as a named party in the action if Casella is a necessary party under applicable Law; (ii) Casella may, at its option and expense, participate in such action (e.g., CR as a party to such suit, in the action or otherwise); (iii) Casella which event BD shall assist RE in the prosecution of such litigation to the extent reasonably requested hold CR free, clear and RE shall reimburse Casella for its reasonable out of pocket harmless from any and all costs and expenses incurred in connection with of such assistance unless Casella voluntarily joins in such action in which case Casella shall bear all of its costs and expenses; and (iv) except as provided in the following sentence RE shall retain any recovery in such action. If Casella joins in such action and has paid for all of its own costs and expenseslitigation, including legal attorneys' fees. In the event BD exercises the right to bring suit herein conferred, RE and Casella it shall share in proportion have the right to the retain all damages for the acts of infringement outside and inside the Franchise Territory, respectively, in such action after each Parties’ expenses and legal fees have been deducted from the recoveryrecovered. (bB) IfIf BD does not bring suit against said infringer, howeveras herein provided, RE elects not to institute within one hundred twenty (120) days after receipt of such an action against a third party with respect to infringement within the Franchise Territorynotice, it shall promptly notify Casella in writing and Casella CR shall have the right, but shall not the obligationbe obligated, to institute action bring suit for such alleged infringement, and to join BD as a party to such suit only if a court of competent jurisdiction determines BD is a necessary party to such suit, in which event CR shall hold BD free, clear and harmless from any and all costs and expenses of such litigation, including attorneys' fees. In the event CR exercises the right to bring suit for such alleged infringement, it shall have the right to retain all damages recovered. (C) Each party shall always have the right to be represented by counsel of its own selection and at its own expense against such third party. With respect to in any such legal actions suit instituted by Casellathe other for infringement, under the terms hereof. Either party has the right, within ninety (i90) Casella may days of the filing of the original complaint, to join RE in such action in, but not control, any infringement suit brought by the other party and include it as a named party shall share equally in the action if RE is a necessary party under applicable Law; (ii) RE may, at its option cost and expense, participate in such action (e.g., as a party in the action or otherwise); (iii) RE shall assist Casella in the prosecution expenses of such litigation to the extent reasonably requested litigation, including attorneys' fees, and Casella shall reimburse RE for its reasonable costs and expenses incurred in connection with such assistance unless RE voluntarily joins in such action in which case RE shall bear all of its costs and expenses; and (iv) Casella shall retain any recovery in such action related to infringement in the Franchise Territory, with any recovery relating the territories outside the Franchise Territory being provided to and retained by RE should it join in the action and pay its own legal fees and costssums recovered.

Patent Litigation. (aA) RE In the event either party hereto receives notice of alleged infringement of any of the PATENT RIGHTS, covering the DEVICES, it shall promptly notify the other party in writing of such infringement. BECTON shall have the right, but not the obligation, to commence any action at law or in equity at its own expense bring suit and to control the conduct thereof against any third party for infringement of one or more of the Licensed Patents. With respect alleged infringer, and to any legal actions instituted, (i) RE may join Casella in such action and include it as a named party in the action if Casella is a necessary party under applicable Law; (ii) Casella may, at its option and expense, participate in such action (e.g., LICENSOR as a party to such suit, in the action or otherwise); (iii) Casella which event BECTON shall assist RE in the prosecution of such litigation to the extent reasonably requested hold LICENSOR free, clear and RE shall reimburse Casella for its reasonable out of pocket harmless from any and all costs and expenses of such litigation, including attorneys' fees. In the event BECTON exercises the right to bring suit herein conferred, LICENSOR shall have the right to receive twenty-five percent (25%) of the damages recovered after a deduction for all legal expenses by BECTON, including attorneys' fees, incurred in connection with such assistance unless Casella voluntarily joins and paid by BECTON in such action in which case Casella lawsuit and BECTON shall bear all of its costs and expenses; and (iv) except as provided in have the following sentence RE shall right to retain any recovery in such action. If Casella joins in such action and has paid for all of its own costs and expenses, including legal fees, RE and Casella shall share in proportion to the remaining damages for the acts of infringement outside and inside the Franchise Territory, respectively, in such action after each Parties’ expenses and legal fees have been deducted from the recoverythereafter. (bB) IfIf BECTON does not bring suit against said infringer, howeveras herein provided, RE elects not to institute within one hundred twenty (120) days after receipt of such an action against a third party with respect to infringement within the Franchise Territorynotice, it shall promptly notify Casella in writing and Casella LICENSOR shall have the right, but shall not the obligationbe obligated, to institute action bring suit for such alleged infringement, and to join BECTON as a party to such suit only if a court of competent jurisdiction determines BECTON is a necessary party to such suit, in which event LICENSOR shall hold BECTON free, clear and harmless from any and all costs and expenses of such litigation, including attorneys' fees. In the event LICENSOR exercises the right to bring suit for such alleged infringement, BECTON shall have the right to receive twenty-five percent (25%) of all damages recovered after deduction for all legal expenses, including attorneys' fees, incurred and paid by LICENSOR in such lawsuit and LICENSOR shall have the right to retain any remaining damages thereafter. (C) In any litigation under Paragraph I of this ARTICLE in which a third [Confidential Treatment requested for redacted portion of document] party challenges validity of those VALID CLAIMS alleged to be infringed, or any litigation in which BECTON in a particular country challenges validity of those VALID CLAIMS covering the LICENSED PRODUCT in a particular country, then upon filing of such suit by a third party or BECTON, fifty-percent (50%) of all the earned and minimum royalty payments, attributed to the country in which the lawsuit is brought, which would otherwise be paid to LICENSOR, with respect to LICENSED PRODUCT made or sold in the country affected by such lawsuit, shall be deposited in an interest bearing escrow account. All monies in the escrow account, together with all accrued interest, in the country affected by such litigation, shall be retained by BECTON if those VALID CLAIMS are found invalid or unenforceable by a court of proper jurisdiction in an unappealed or unappealable decision, and, if at least one VALID CLAIM is found not invalid by a court of proper jurisdiction in an unappealed or unappealable decision, all monies in the interest bearing escrow account, together with all accrued interest, in the country affected by such litigation, shall be released to LICENSOR. (D) Any VALID CLAIM held to be invalid, or unenforceable shall be considered canceled from the PATENT RIGHTS effective as of the date BECTON or the third party had received judgment in such legal action, subject however, to reinstatement in the PATENT RIGHTS in the event that such VALID CLAIM is held valid or enforceable by a court of proper jurisdiction in an unappealed or unappealable decision. (E) Each party shall always have the right to be represented by counsel of its own selection and at its own expense against in any suit instituted by the other for infringement, under the terms hereof. Either party has the right, within ninety (90) days of the filing of the original complaint, to join in, but not control, any such infringement suit brought by the other party and shall share equally in the cost and expenses of such litigation, including attorneys' fees, and any sums recovered. (A) If BECTON is sued by a third party, in a country, charging infringement of a patent relating to LICENSED PRODUCTS resulting from the making, using, or selling by BECTON, of LICENSED PRODUCTS, BECTON shall promptly notify LICENSOR. Upon filing of such suit by a third party, fifty-percent (50%) of all the earned and minimum royalty payments, attributable to the country in which the lawsuit was brought, which would otherwise be paid to LICENSOR, with respect to LICENSED PRODUCT made or sold in the country affected by such lawsuit, shall be deposited in an interest bearing escrow account in the United States. (B) In the event of (i) a final adjudication in any suit enjoining BECTON from making, using, or selling the LICENSED PRODUCT or holding BECTON liable for damages or (ii) a settlement of such suit requiring payment of damages by BECTON, an amount shall be deducted by BECTON from the escrow account described in Paragraph 2 (A) of this ARTICLE, sufficient to reimburse itself for all damages and legal expenses incurred and paid by BECTON in such suit. After such deduction, any funds remaining in the escrow account, together with all earnings on such account, shall be released and paid over to LICENSOR. [Confidential Treatment requested for redacted portion of document] (C) In the event of a final adjudication in any such suit which holds the patent of such third party invalid or valid but not infringed, BECTON shall deduct an amount from the escrow account described in Paragraph 2 (A) of this ARTICLE, equal to its reasonable legal expenses incurred and paid by BECTON in such suit that are not fully recovered as a result of final adjudication. After such deduction, any funds remaining in the escrow account, shall be released and paid over to LICENSOR. 3. While this AGREEMENT is in effect, should BECTON find it necessary, or an exercise of reasonable business prudence, to obtain a license under any patent rights from a third party in a particular country in order to render marketable the LICENSED PRODUCT manufactured by or for, and/or sold by, BECTON, or used by its customers or to use the TECHNICAL INFORMATION, it shall notify LICENSOR of such decision. If such a third party license is obtained by BECTON, or as a result of a settlement entered into with respect to patent rights dominant to the rights herein granted, BECTON is required to pay and does pay royalties to a party other than LICENSOR in respect of BECTON's sales of the LICENSED PRODUCT in the particular country, the applicable prospective royalties payable to LICENSOR with respect to the particular country, pursuant to this AGREEMENT shall be reduced by BECTON to an amount equal to the amount of royalties paid to such third party. With respect to any such legal actions instituted by Casella, (i) Casella may join RE in such action and include it as a named party in the action if RE is a necessary party under applicable Law; (ii) RE may, at its option and expense, participate in such action (e.g., as a party in the action or otherwise); (iii) RE shall assist Casella in the prosecution of such litigation to the extent reasonably requested and Casella shall reimburse RE for its reasonable costs and expenses incurred in connection with such assistance unless RE voluntarily joins in such action in which case RE shall bear all of its costs and expenses; and (iv) Casella shall retain any recovery in such action related to infringement in the Franchise Territory, with any recovery relating the territories outside the Franchise Territory being provided to and retained by RE should it join in the action and pay its own legal fees and costs.