Licensee Suit. Licensee shall have the first right to institute suit, and may name University for standing purposes, provided however, University may be named as a party only if (a) Licensee’s and University’s respective counsel recommend that such action is necessary in their reasonable opinion to achieve standing, or absent such recommendation, a court of competent jurisdiction finds that such action is necessary to achieve standing; (b) University is not the first named party in the action, and (c) the pleadings and any public statements about the action state that Licensee has the right to join University as a party. If Licensee institutes suit, it will provide written notice to University 30 days prior to the initiation of such suit. Licensee will bear the entire cost of prosecuting the litigation, and any recovery in excess of reasonable attorney’s fees for outside counsel, expert witness fees, and court costs incurred in litigation related to patent enforcement shall be shared 80%/20% between Licensee and University, respectively.
Licensee Suit. If ULRF does not elect to, within 45 days after Licensee notifies ULRF pursuant to Section 11.1 of a particular infringement, pursue a suit pursuant to either of Sections 11.2 or 11.3, Licensee may institute and prosecute a suit so long as it conforms with the requirements of this Section and Licensee or a Sublicensee is diligently developing or making Sales of Licensed Products or Licensed Services. Licensee will diligently pursue the suit and will bear the entire cost of the litigation, and will indemnify ULRF for any costs, expenses, and counsel fees incurred by ULRF. Licensee will keep ULRF reasonably apprised of all developments in the suit, and will seek ULRF’s input and approval on any substantive submissions or positions taken in the litigation regarding the scope, validity and enforceability of the Licensed Patent. Licensee will not prosecute, settle or otherwise compromise any such suit in a manner that adversely affects the interests of ULRF or UofL without ULRF’s prior written consent. ULRF may be named as a party only if: (a) Licensee’s, ULRF’s and UofL’s respective counsel recommend that such action is necessary in their reasonable opinion to achieve standing; (b) ULRF is not the first named party in the action; and (c) the pleadings and any public statements about the action state that Licensee is pursuing the action and that Licensee has the right to join ULRF as a party plaintiff thereto.
Licensee Suit. If neither Section 13.2 nor 13.3 apply, GOOGLE may institute and prosecute a suit so long as it conforms with the requirements of this Section. GOOGLE will diligently pursue the suit and GOOGLE will bear the entire cost of the litigation, including expenses and counsel fees incurred by STANFORD. GOOGLE will keep STANFORD reasonably apprised of all developments in the suit, and will seek STANFORD’s input and approval on any substantive submissions or positions taken in the litigation regarding the scope, validity and enforceability of the Licensed Patent. GOOGLE will not prosecute, settle or otherwise compromise any such suit in a manner that adversely affects STANFORD’s interests without STANFORD’s prior written consent. STANFORD may be named as a party only if
(A) GOOGLE’s and STANFORD’s respective counsel recommend that such action is necessary in their reasonable opinion to achieve standing;
(B) STANFORD is not the first named party in the action; and
(C) the pleadings and any public statements about the action state that GOOGLE is pursuing the action and that GOOGLE has the right to join STANFORD as a party.
Licensee Suit. If neither Section 13.4 nor 13.5 apply in that Stanford elects not to participate in a suit, either or both Licensee(s) may institute and prosecute a suit so long as it conforms with the requirements of this Section 13.6. The Licensee(s) will reach agreement on the institution and prosecution of such suit and the sharing of such costs among themselves and will diligently pursue the suit and the Licensee(s) instituting the suit will bear the entire cost (including necessary expenses incurred by Stanford) of the litigation. The Licensee(s) will keep Stanford reasonably apprised of all developments in the suit, and will seek Stanford’s input and approval on any substantive submissions or positions taken in the litigation regarding the scope, validity and enforceability of the Licensed Patents. The Licensee(s) will not prosecute, settle or otherwise compromise any such suit in a manner that adversely affects Stanford’s interests without Stanford’s prior written consent. Stanford may be named as a party only if
(A) The Licensee(s) and Stanford’s respective counsel recommend that such action is necessary in their reasonable opinion to achieve standing;
(B) Stanford is not the first named party in the action; and
(C) the pleadings and any public statements about the action state that the Licensee(s) is pursuing the action and that the Licensee(s) has the right to join Stanford as a party.
Licensee Suit. Licensee will have the first right to institute suit, and may name ULRF as a party to such suit for standing purposes. If Licensee decides to institute suit, it will notify ULRF in writing and, in such a case, (a) ULRF will assign and hereby does assign to Licensee all rights, causes of action, and damages resulting from the alleged infringement, (b) Licensee will bear the entire cost of the litigation and will reimburse ULRF for any costs, expenses, and counsel fees reasonably incurred by ULRF, and (c) from any recovery or damages derived therefrom, Licensee will first be reimbursed its out-of-pocket costs and attorney fees, and the remaining sums will be split, with [***] percent ([***]%) of such remaining sums going to Licensee, and [***] percent ([***]%) of such remaining sums going to ULRF. In the event that a non-cash cross license is awarded or a non-cash settlement is reached, both Parties agree to negotiate appropriate compensation in good faith. Licensee will not prosecute, settle or otherwise compromise any such suit in a manner that adversely affects the interests of ULRF without ULRF’s prior written consent.
Licensee Suit. (a) So long as Licensee remains the exclusive Licensee of the Licensed Patent Rights in the Field in the Territory, Licensee, to the extent permitted by law, shall have the right, under its own control and at its own expense, to prosecute any third party infringement of the Licensed Patent Rights in the Field in the Territory, subject to Section 8.5 below. If required by law, Salk shall permit any action under this Section 8.4 to be brought in its name, including being joined as a party-plaintiff, provided that Licensee shall hold Salk harmless from, and indemnify Salk against, any costs, expenses, or liability that Salk incurs in connection with such action.
(b) Prior to commencing any such action, Licensee shall consult with Salk and shall consider the views of Salk regarding the advisability of the proposed action and its effect on the public interest. Licensee shall not enter into any settlement, consent judgment, or other voluntary final disposition of any infringement action under this Section without the prior written consent of Salk. Licensee’s selection of counsel (to represent Licensee and Salk in such an action) shall be subject to Salk’s approval, which shall not be unreasonably withheld.
Licensee Suit. If neither Section 14.4 nor 14.5 apply, Licensee may institute and prosecute a suit so long as it conforms with the requirements of this Section and Licensee is developing or selling Licensed Product. Licensee will diligently pursue the suit and Licensee will bear the entire cost of the litigation, including expenses and counsel fees incurred by Stanford. Licensee will keep Stanford reasonably apprised of all developments in the suit, and will seek Stanford’s input and approval on any substantive submissions or positions taken in the litigation regarding the scope, validity and enforceability of the Licensed Patent. Licensee will not prosecute, settle or otherwise compromise any such suit in a manner that adversely affects Stanford’s interests without Stanford’s prior written consent. Stanford may be named as a party only if
(A) Licensee’s and Stanford’s respective counsel recommend that such action is necessary in their reasonable opinion to achieve standing;
(B) Stanford is not the first named party in the action; and
(C) the pleadings and any public statements about the action state that Licensee is pursuing the action and that Licensee has the right to join Stanford as a party.
Licensee Suit. In the absence of a University suit pursuant to Article 10.2 or absent an agreement to institute a suit jointly pursuant to Article 10.3, the Licensee may institute suit. The Licensee shall keep the University reasonably apprised of the status and progress of any litigation, and the University agrees to join such suit as requested by the Licensee as necessary for standing purposes and to otherwise reasonably cooperate with the Licensee. The University shall assign and does hereby assign to the Licensee all rights, causes of action, and damages resulting from the alleged infringement. The Licensee shall bear the entire cost of such litigation and any recovery or settlement shall be divided between the parties as follows: (i) first, to reimburse any legal or other out of pocket expenses incurred by the parties, in proportion to the amount of such expenses; (ii) second, any remaining amount of recovery or settlement shall be shared according to the terms of Articles 3 and 4 of this Agreement, as appropriate (i.e. recovered damages which are designated as lost sales shall be treated as Net Sales, and recovered damages which are designated as lost sublicensing income shall be treated as Sublicense Income), and any punitive or other additional damages will be retained by Licensee.
Licensee Suit. If neither Section 13.4 nor 13.5 apply, LICENSEE may institute and prosecute a suit so long as it conforms with the requirements of this Section and LICENSEE is diligently developing or selling Licensed Product. LICENSEE will diligently pursue the suit and LICENSEE will bear the entire cost of the litigation, including expenses and counsel fees incurred by ACADEMIA SINICA. LICENSEE will keep ACADEMIA SINICA reasonably apprised of all developments in the suit, and will seek ACADEMIA SINICA’s input and approval on any substantive submissions or positions taken in the litigation regarding the scope, validity and enforceability of the Licensed Patent. LICENSEE will not prosecute, settle or otherwise compromise any such suit in a manner that adversely affects ACADEMIA SINICA’s interests without ACADEMIA SINICA’s prior written consent. ACADEMIA SINICA may be named as a party only if
(a) LICENSEE’s and ACADEMIA SINICA’s respective counsel recommend that such action is necessary in their reasonable opinion to achieve standing;
(b) ACADEMIA SINICA is not the first named party in the action; and
(c) the pleadings and any public statements about the action state that LICENSEE is pursuing the action and that LICENSEE has the right to join ACADEMIA SINICA as a party.
Licensee Suit. The Licensee has the first right to institute and prosecute alone a suit based on any suspected infringement. The University may be named as a party to any such suit, but only if:
(a) Licensee’s and the University’s respective legal counsel recommend that such action is necessary in their reasonable opinion to achieve standing;
(b) The University is not the first named party in the action; and
(c) The pleadings and any public statements about the action state that Licensee is pursuing the action and that Licensee has the right to join the University as a party. If the Licensee (i) decides to institute suit or (ii) wishes to preserve its first right to institute and has developed a detailed plan to institute suit in the future, it shall provide written notice to the University within a commercially reasonable time, but no later than [***] after the date when a party receives notice of infringement. Licensee shall keep University reasonably apprised as to its plans related to instituting suit, and once a suit is instituted, of the status and progress of any litigation. [***].
