Contest of Validity. (a) In the event Licensee or its Sublicensee(s) (or a third party on its behalf) files any action contesting the validity or enforceability of any Patent Rights and the provision in Section 7.3(d) is unenforceable, the Licensee (or its Sublicensee(s), if such Sublicensee filed the action) shall pay a royalty rate of one and a half (1.5) times the royalty rate specified in Section 3.2 for all Net Sales. Moreover, should the outcome of such contest determine that any claim of the Patent Rights challenged is both valid and would be infringed by a Licensed Product, Licensed Process, or Licensed Service sold by Licensee (or its Sublicensee(s) if such Sublicensee filed the action), if not for the license granted by this Agreement, Licensee (or its Sublicensee(s), if such Sublicensee filed the action) shall thereafter, and for the remaining term of this Agreement, pay a royalty rate of two (2) times the royalty rate specified in Section 3.2 for all Net Sales.
(b) In the event that Licensee or its Sublicensee(s) contests the validity or enforceability of any Patent Rights during the term of this Agreement, Licensee agrees (and shall require its Sublicensee(s) to agree) to pay to Licensor all royalties due under the Agreement during the period of challenge. For the sake of clarity, such amounts shall not be paid into any escrow or other account, but directly to Licensor, and shall not be refunded.
(c) In the event that a validity or non-infringement challenge of any Patent Rights brought by Licensee is successful, Licensee shall have no right to recoup any royalties paid before or during the period challenge.
Contest of Validity. In the event Licensee or its sublicensee(s) contest the validity or enforceability of any Licensed Patent, Licensee and its sublicensee(s) shall continue to pay royalties with respect to that patent as if such contest were not underway until the patent is adjudicated invalid or unenforceable by a court of last resort.
Contest of Validity. In the event Geron contests the validity of any Licensed Patent, Geron shall continue to pay royalties with respect to that patent as if such contest were not underway until the patent is adjudicated invalid or unenforceable by a court of last resort.
Contest of Validity. 11.1. Sublicensee shall provide […***…] at least […***…] prior written notice before filing any action that contests the validity of any Patent Rights during the term of this Agreement.
11.2. In the event that Sublicensee files any action contesting the validity of any Patent Rights, Sublicensee shall pay a royalty rate of […***…] specified in Section 3.2 or 3.3 of this Agreement, as applicable, for all Products and Services sold during the pendency of such action. Moreover, should the outcome of such contest determine that any claim of the Patent Rights challenged is valid and would be infringed by a Licensed Product sold by Sublicensee, if not for the Sublicensee granted by this Agreement, Sublicensee shall thereafter, for the remaining term of this Agreement, pay a royalty rate of […***…] specified in Section 3.2. or 3.3 of this Agreement, as applicable.
11.3. In the event that Sublicensee contests the validity of any Patent Rights during the term of this Agreement, Sublicensee agrees to pay to Sublicensor all royalties due under this Agreement during the period of the challenge. For the sake of clarity, such amounts shall not be paid into any escrow or other account, but directly to Sublicensor, and shall not be refunded.
Contest of Validity. In the event Panacela or a third party contests the validity of any Licensed Patent, Panacela shall continue to pay royalties with respect to that patent as if such contest were not underway to an escrow agent mutually agreed to by the parties, to be held in a separate interest bearing account in accordance with the terms of a mutually acceptable escrow agreement between the parties in form and substance as is customary for such purposes, until such time as a court of last resort adjudicates the validity or invalidity of such patent. If such court of last resort confirms the invalidity or unenforceability of such patent, then all royalties previously paid by Panacela into escrow pursuant to this paragraph, together with all interest accrued thereon and any other amounts earned in respect thereof (collectively, the “Escrow Funds”), shall be promptly paid to Panacela. If such court of last resort confirms the validity or enforceability of such patent, then the Escrow Funds shall be promptly paid to CCF and/or CCF and CCIA, as applicable.
Contest of Validity a. Sublicensee must provide Sublicensor and Overlicensor at least three (3) months prior written notice before filing any action that contests the validity, enforceability or patentability of any patent included in the Patent Rights during the term of this Sublicense Agreement. Sublicensee shall include with such written notice an identification of all prior art Sublicensee believes invalidates any claim of the Licensed Patent, claim charts mapping such prior art against all claims asserted to be invalid, and an identification of all legal grounds for such assertion of invalidity (for example, anticipation, obviousness, indefiniteness, lack of written description, lack of enablement).
b. In the event Sublicensee files any action contesting the validity of any Licensed Patent, the filing party shall pay to Sublicensor or Overlicensor, as appropriate, a royalty rate of two (2) times the royalty rate specified in Section 3.2 of the Exclusive License and Schedule 2 to the Exclusive License for all Products sold during the pendency of such action. Moreover, should the outcome of such contest determine that any claim of a Licensed Patent challenged is valid and would be infringed by a Product sold by Sublicensee (if Sublicensee filed the action) if not for the license granted by this Sublicense Agreement, Sublicensee (if Sublicensee filed the action) shall thereafter, and for the remaining term of this Sublicense Agreement, pay a royalty rate of three (3) times the royalty rate specified in Section 3.2 of the Exclusive License and Schedule 2 to the Exclusive License.
c. In the event that Sublicensee contests the validity of any Licensed Patent during the term of this Sublicense Agreement, Licensee agrees to pay to Sublicensor or Overlicensor, as appropriate all royalties due under the Exclusive License during the period of challenge. For the sake of clarity, such amounts shall not be paid into any escrow or other account, but directly to Sublicensor or Overlicensor, as appropriate, and shall not be refunded.
d. Sublicensee will have no right to recoup any royalties paid before contesting the validity of any patent included in the Patent Rights, or during the period of such contest.
Contest of Validity. In the event TomoTherapy contests the validity of any Licensed Patent, TomoTherapy shall continue to pay royalties with respect to that patent as if such contest were not underway until the patent is adjudicated invalid or unenforceable by a court of last resort.
Contest of Validity. In the event Licensee intends to contest the validity or enforceability of any Licensed Patent, Licensee shall give ISURF ninety (90) days prior written notice. Licensee shall continue to make all payments to ISURF, without the right to pay in escrow, with respect to that Licensed Patent as if such contest or any third party contest, opposition, interference or post-grant proceeding regarding any Licensed Patent were not underway until the Licensed Patent is finally adjudicated invalid or unenforceable by a court of last resort. For purposes of clarity, no payment made to ISURF is refundable or may be offset.
Contest of Validity. In the event Discovery contests the validity of any Licensed Patent or Ancillary Patent, Discovery shall continue to pay royalties with respect to that patent as if such contest were not underway until the patent is adjudicated invalid or unenforceable by a court of last resort.
Contest of Validity. Licensee must provide XXXX at least [***] months prior written notice before filing any proceeding that contests the validity of any Licensed Patent during the term of this Agreement. In the event Licensee files any such proceeding, Licensee agrees to pay to XXXX, directly and not into any escrow or other account, all royalties and other amounts due in view of Licensee’s activities under the Agreement during the period of challenge. Should the outcome of such contest determine that any claim of a Licensed Patent challenged by Licensee is valid, Licensee will thereafter, and for the remaining term of this Agreement, pay a royalty rate of [***] times the royalty rate specified in Section 4B of this Agreement and the entirety of XXXX’x legal (including attorney) fees and costs incurred during such proceeding.
