Common use of Challenge to the Patent Rights by Licensee Clause in Contracts

Challenge to the Patent Rights by Licensee. COH may terminate this Agreement or, notwithstanding Section 3.3, a sublicense issued hereunder, as applicable, upon written notice to Licensee in the event that Licensee or any of its Affiliates or Sublicensee directly or indirectly asserts a Patent Challenge, provided that any such termination shall be applicable only with respect to the entity asserting such Patent Challenge and all of such entity’s Affiliates, and that this Agreement shall remain in place and in full force and effect with respect to all other entities. “Patent Challenge” means any challenge in a legal or administrative proceeding to the patentability, validity or enforceability of any of the Patent Rights (or any claim thereof), including by: (a) filing or pursuing a declaratory judgment action in which any of the Patent Rights is alleged to be invalid or unenforceable; (b) citing prior art against any of the Patent Rights, filing a request for or pursuing a re-examination of any of the Patent Rights (other than with COH’s written agreement), or voluntarily becoming a party to or pursuing an interference; or (c) filing or pursuing any re-examination, opposition, cancellation, nullity or other like proceedings against any of the Patent Rights; but excluding any challenge raised as a defense against a claim, action or proceeding asserted by COH against Licensee, its Affiliates, Sublicensees, or any downstream customers or users of any Licensed Products or Licensed Services. In lieu of exercising its rights to terminate under this Section 7.3, COH may elect upon written notice to increase the payments due under all of Article 4 by one hundred and fifty percent (150%), which election will be effective retroactively to the date of the commencement of the Patent Challenge. Licensee acknowledges and agrees that this Section 7.3 is reasonable, valid and necessary for the adequate protection of COH’s interest in and to the Patent Rights, and that would not have granted to Licensee the licenses under those Patent Rights, without this Section 7.3. COH will have the right at any time in its sole discretion to strike this Section 7.3 in its entirety from this Agreement, and COH will have no liability whatsoever as a result of the presence or absence of this Section 7.3.

Challenge to the Patent Rights by Licensee. COH (a) The Parties acknowledge and agree that they are entering the Agreement in lieu of enforcing their respective patent rights, defenses and remedies concerning the Patent Rights under relevant laws, including without limitation under 35 U.S.C. 100-376 et seq. By entering the Agreement each Party waives its Patent Rights in favor of proceeding under the terms of the Agreement. Each Party further acknowledges that each and every term in the Agreement, including but not limited to the fees, milestone payments and the royalties set forth in Article 4 herein, reflects the value of avoiding the risk and uncertainty associated with litigating the Patent Rights and the risk of being subject to certain rights, defenses and/or remedies. (b) The Parties acknowledge and agree that Licensor may terminate this the Agreement orat Licensor's sole and absolute discretion, notwithstanding Section 3.3, a sublicense issued hereunder, as applicable, upon written notice to Licensee in the event that Licensee or any of its Affiliates or Sublicensee Sublicensees challenges, directly or indirectly, the validity, enforceability and/or scope of any claim within the Patent Rights in a court or patent office or other governmental agency. In the event of termination by Licensor pursuant to this Section 6.3(b), any fees, milestone payments and/or royalties or other payment owed to Licensor prior to such termination shall become payable and shall be non-refundable. (c) The Parties further agree that in the event Licensee or any of its Affiliates or Sublicensees directly or indirectly asserts files a Patent Challenge, provided that any such termination shall be applicable only with respect to the entity asserting such Patent Challenge and all of such entity’s Affiliates, and that this Agreement shall remain in place and in full force and effect with respect to all lawsuit or other entities. “Patent Challenge” means any challenge in a legal or administrative proceeding to challenge the patentabilityvalidity, validity or enforceability and/or scope of any of claim within the Patent Rights in a court or patent office or other governmental agency, and thereby obtains a final non-appealable judgment upholding the validity and enforceability of the challenged Patent Rights and finding at least one claim of such Patent Rights to be infringed by Licensee or any one of its Affiliates or Sublicensees, Licensee shall: (i) reimburse Licensor all of its attorneys' fees and expenses expended in connection with defending such lawsuit or other proceeding, and (ii) pay to Licensor modified fees for the period commencing on the filing date of such lawsuit or proceeding and thereafter during the Term; such modified fees shall be calculated by multiplying each fee, milestone payment and royalty payment in Article 4 by the value three, and shall constitute additional consideration to Licensor for Licensee's (or any claim thereof), including by: (aAffiliates' or Sublicensees') filing or pursuing a declaratory judgment action in which any of decision to exercise the Patent Rights is alleged to be invalid or unenforceable; (b) citing prior art against any of notwithstanding the Patent Rights, filing a request for or pursuing a re-examination of any of the Patent Rights (other than with COH’s written agreement), or voluntarily becoming a party to or pursuing an interference; or (c) filing or pursuing any re-examination, opposition, cancellation, nullity or other like proceedings against any of the Patent Rights; but excluding any challenge raised as a defense against a claim, action or proceeding asserted by COH against Licensee, its Affiliates, Sublicensees, or any downstream customers or users of any Licensed Products or Licensed ServicesAgreement. In lieu of exercising its rights to terminate under this Section 7.3, COH may elect upon written notice to increase the payments due under all of Article 4 by one hundred and fifty percent (150%), which election will be effective retroactively to the date of the commencement of the Patent Challenge. Licensee acknowledges and agrees that this Section 7.3 is reasonable, valid and necessary for the adequate protection of COH’s interest in and to the Patent Rights, and that would not have granted to Licensee the licenses under those Patent Rights, without this Section 7.3. COH will have the right at any time in its sole discretion to strike this Section 7.3 in its entirety from this Agreement, and COH will have no liability whatsoever as a result of the presence or absence of this Section 7.3.ARTICLE 7: