EXACT LICENSED IMPROVEMENTS,
IN THE GENZYME FIELD, AND FOR EXACT AND EXACT LICENSED IMPROVEMENTS, IN THE
EXACT FIELD; OR FOR GENZYME AND RETAINED PATENT RIGHTS, IN THE GENZYME CORE
FIELD, AND FOR EXACT AND RETAINED PATENT RIGHTS IN ALL OTHER FIELDS).
NEITHER
PARTY WILL HAVE ANY RIGHT TO TAKE ANY MEASURES TO STOP ANY INFRINGEMENT OR
UNAUTHORIZED USE OF ANY SECONDARY PATENT RIGHTS AND OTHER TRANSFERRED TECHNOLOGY
NOT INCLUDING THE PRIMARY INTELLECTUAL PROPERTY RIGHTS, EXACT LICENSED
IMPROVEMENTS, OPTIONED TECHNOLOGY, JOINT COLLABORATION TECHNOLOGY OR RETAINED
PATENT RIGHTS OUTSIDE ITS EXCLUSIVE FIELD (BY OWNERSHIP OR LICENSE) (INCLUDING
INITIATING ANY ACTIONS OR DELIVERING ANY FORM OF NOTIFICATION OR WARNING TO
THIRD PARTIES) WITHOUT THE PRIOR WRITTEN CONSENT OF THE OTHER PARTY.
(IV)
IF EITHER PARTY DESIRES TO INITIATE ANY ACTION AS CONTEMPLATED BY
SECTION 12.3(B)(III), THE PARTIES WILL MEET IN GOOD FAITH TO DISCUSS ENFORCEMENT
STRATEGIES.
AFTER SUCH CONSULTATION, THE ENFORCING PARTY WILL DETERMINE, IN ITS
COMMERCIALLY REASONABLE DISCRETION, HOW TO PROCEED WITH RESPECT TO SUCH ALLEGED
INFRINGEMENT OR MISAPPROPRIATION AT SUCH TIME; PROVIDED THAT (A) SUCH ENFORCING
PARTY IS UNDER NO OBLIGATION TO TERMINATE SUCH INFRINGEMENT OR MISAPPROPRIATION,
AND (B) SUCH ENFORCING PARTY WILL KEEP THE OTHER PARTY REASONABLY INFORMED AND
WILL COORDINATE AND CONSULT WITH THE OTHER PARTY REGARDING SUCH MEASURES.
(C)
COOPERATION.
IN THE EVENT EITHER PARTY BRINGS AN ENFORCEMENT ACTION
PURSUANT TO SECTION 12.3(B), THE OTHER PARTY WILL COOPERATE REASONABLY AT
[********], INCLUDING BEING JOINED AS A PARTY-PLAINTIFF, PROVIDING GOOD FAITH
TESTIMONY AND EXECUTING ALL DOCUMENTS NECESSARY FOR A PARTY TO INITIATE AN
ACTION AND TO PROSECUTE AND MAINTAIN SUCH ACTION.
THE NON-LITIGATING PARTY WILL
HAVE THE RIGHT, [********], TO RETAIN ITS OWN COUNSEL TO MONITOR SUCH
LITIGATION.
(D)
RECOVERIES.
IF A PARTY OBTAINS FROM A THIRD PARTY INFRINGER, IN
CONNECTION WITH AN ACTION BROUGHT PURSUANT TO SECTION 12.3(B), ANY DAMAGES,
LICENSE FEES, ROYALTIES OR OTHER COMPENSATION (INCLUDING ANY AMOUNT RECEIVED IN
SETTLEMENT OF SUCH ACTION), THEN ANY AMOUNTS RECOVERED WILL FIRST BE APPLIED TO
THE REIMBURSEMENT OF BOTH PARTIES' REASONABLE OUT-OF-POCKET COSTS, EXPENSES AND
LEGAL FEES, INCLUDING AMOUNTS ONE PARTY HAS REIMBURSED TO THE OTHER.
THE
REMAINING BALANCE WILL BE ALLOCATED [********].
PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED SEPARATELY WITH THE
SECRETARY OF THE COMMISSION PURSUANT TO THE COMPANY'S APPLICATION REQUESTING
CONFIDENTIAL TREATMENT UNDER RULE 24B-2 OF THE EXCHANGE ACT; [*] DENOTES
OMISSIONS.
36
12.4
CLAIMED INFRINGEMENT OF THIRD PARTY INTELLECTUAL PROPERTY
RIGHTS.
(A)
NOTICE.
IN THE EVENT THAT A THIRD PARTY AT ANY TIME PROVIDES WRITTEN
NOTICE OF A CLAIM TO, OR BRINGS AN ACTION AGAINST, EITHER PARTY OR ANY OF SUCH
PARTY'S RESPECTIVE AFFILIATES OR LICENSEES, CLAIMING INFRINGEMENT OF ITS PATENT
RIGHTS OR UNAUTHORIZED USE OR MISAPPROPRIATION OF ITS KNOW-HOW, BASED UPON USE
OF TECHNOLOGY ("INFRINGEMENT CLAIM"), SUCH PARTY WILL PROMPTLY NOTIFY THE OTHER
PARTY OF THE INFRINGEMENT CLAIM OR THE COMMENCEMENT OF SUCH ACTION, ENCLOSING A
COPY OF THE INFRINGEMENT CLAIM AND ALL PAPERS SERVED.
EACH PARTY AGREES TO MAKE
REASONABLY AVAILABLE TO THE OTHER PARTY ITS ADVICE AND COUNSEL