SUCH ACTION USING
COUNSEL OF ITS OWN CHOICE; PROVIDED, HOWEVER, THAT IF SUCH ACTION IS DIRECTED TO
THE SUBJECT OF THE PATENT RIGHTS OF THE OTHER PARTY (I.E., THE BIOMARIN PATENT
RIGHTS OR THE GENZYME PATENT RIGHTS), SUCH OTHER PARTY MAY PARTICIPATE IN THE
DEFENSE AND/OR SETTLEMENT THEREOF AT ITS OWN EXPENSE WITH COUNSEL OF ITS CHOICE.
EXCEPT AS AGREED IN WRITING BY GENZYME AND BIOMARIN, THE CONTROLLING PARTY SHALL
NOT ENTER INTO ANY SETTLEMENT RELATING TO A COLLABORATION PRODUCT, IF SUCH
SETTLEMENT ADMITS THE INVALIDITY OR UNENFORCEABILITY OF ANY PATENT RIGHTS WITHIN
THE BIOMARIN PATENT RIGHTS OR THE GENZYME PATENT RIGHTS, AS APPLICABLE, OF THE
OTHER PARTY.
THE CONTROLLING PARTY AGREES TO KEEP THE OTHER PARTY HERETO
REASONABLY INFORMED OF ALL MATERIAL DEVELOPMENTS IN CONNECTION WITH ANY SUCH
ACTION.
ANY COST, LIABILITY OR EXPENSE (INCLUDING AMOUNTS PAID IN SETTLEMENT)
INCURRED BY THE CONTROLLING PARTY AS A RESULT OF SUCH ACTION SHALL BE INCLUDED
IN DEVELOPMENT COSTS FOR THE COLLABORATION PRODUCT(S) THAT ARE THE SUBJECT OF
SUCH ACTION AND SHALL NOT BE SUBJECT TO THE LIMITATIONS OF SECTIONS 1.11, 4.2
AND 5.1.3 ABOVE PROVIDED THAT THE OTHER PARTY CONSENTS TO INCURRENCE OF SUCH
COST, LIABILITY OR EXPENSE, WITH SUCH CONSENT NOT TO BE UNREASONABLY WITHHELD,
DELAYED OR CONDITIONED.
9.7 ENFORCEMENT OF PATENT RIGHTS.
9.7.1
ENFORCEMENT.
SUBJECT TO THE PROVISIONS OF THIS
SECTION 9.7, IN THE EVENT THAT BIOMARIN OR GENZYME REASONABLY BELIEVES THAT ANY
BIOMARIN PATENT RIGHTS, BIOMARIN TECHNOLOGY, GENZYME PATENT RIGHTS, GENZYME
TECHNOLOGY, BIOMARIN/GENZYME PATENT RIGHTS OR BIOMARIN/GENZYME TECHNOLOGY
NECESSARY FOR THE MANUFACTURE, USE OR SALE OF A COLLABORATION PRODUCT IN THE
FIELD IS INFRINGED OR MISAPPROPRIATED BY A THIRD PARTY OR IS SUBJECT TO A
DECLARATORY
[**] = Portions of this exhibit have been omitted pursuant to a confidential
treatment request.
An unredacted version of this exhibit has been filed
separately with the Commission.
26
JUDGMENT ACTION ARISING FROM SUCH INFRINGEMENT IN A COUNTRY, IN EACH CASE WITH
RESPECT TO THE MANUFACTURE, SALE OR USE OF A PRODUCT POTENTIALLY COMPETITIVE
WITH A COLLABORATION PRODUCT WITHIN THE FIELD, GENZYME OR BIOMARIN
(RESPECTIVELY) SHALL PROMPTLY NOTIFY THE OTHER PARTY HERETO.
PROMPTLY AFTER
SUCH NOTICE THE PARTIES SHALL MEET TO DISCUSS THE COURSE OF ACTION TO BE TAKEN
WITH RESPECT TO AN ENFORCEMENT ACTION (AS DEFINED BELOW) WITH RESPECT TO SUCH
INFRINGEMENT OR MISAPPROPRIATION, INCLUDING THE CONTROL THEREOF AND SHARING OF
COSTS AND EXPENSES RELATED THERETO, FOR THE PURPOSES OF ENTERING INTO A
LITIGATION AGREEMENT SETTING FORTH THE SAME ("LITIGATION AGREEMENT").
IF THE
PARTIES DO NOT ENTER SUCH LITIGATION AGREEMENT, THE PARTY WHOSE PATENT RIGHTS OR
TECHNOLOGY IS SO ALLEGEDLY INFRINGED OR MISAPPROPRIATED, OR IS SUBJECT TO SUCH
DECLARATORY JUDGMENT ACTION, (FOR PURPOSES OF THIS SECTION 9.7, THE "OWNER")
SHALL HAVE THE INITIAL RIGHT (BUT NOT THE OBLIGATION) TO ENFORCE THE
INTELLECTUAL PROPERTY RIGHTS WITHIN SUCH PATENT RIGHTS OR TECHNOLOGY, OR DEFEND
ANY DECLARATORY JUDGMENT ACTION WITH RESPECT THERETO (FOR PURPOSES OF THIS
SECTION 9.7, AN "ENFORCEMENT ACTION"); PROVIDED THAT THE OWNER AGREES TO
INDEMNIFY THE OTHER PARTY FOR ANY