Common use of Litigation by Sublicensee Clause in Contracts

Litigation by Sublicensee. Any Sublicense must include the following clauses: (A) In the event sublicensee brings an action seeking to invalidate any Licensed Patent: (1) sublicensee will double the payment paid to the ImmuMetrix during the pendency of such action. Moreover, should the outcome of such action determine that any claim of a patent challenged by the sublicensee is both valid and infringed by a Licensed Product, sublicensee will pay triple times the payment paid under the original Sublicense; (2) sublicensee will have no right to recoup any royalties paid before or during the period challenge; (3) any dispute regarding the validity of any Licensed Patent shall be litigated in the courts located in Santa Xxxxx County, and the parties agree not to challenge personal jurisdiction in that forum; (4) sublicensee shall not pay royalties into any escrow or other similar account. (B) Sublicensee will provide written notice to Stanford at least three months prior to bringing an action seeking to invalidate a Licensed Patent. Sublicensee will include with such written notice an identification of all prior art it believes invalidates any claim of the Licensed Patent. Notwithstanding the foregoing, in the event a sublicensee files a counterclaim asserting invalidity of one or more Licensed Patents in response to an actual suit by Stanford, such sublicensee shall not be deemed to have brought an action to invalidate a Licensed Patent and this Section 4.5 shall not apply. S09-367 : GWK

Litigation by Sublicensee. Any Sublicense must include the following clauses: (A) In the event sublicensee brings an action seeking to invalidate any Licensed Patent: (1) sublicensee will double the payment paid to the ImmuMetrix LogicBio during the pendency of such action. Moreover, should the outcome of such action determine that any claim of a patent challenged by the sublicensee is both valid and infringed by a Licensed Product, sublicensee will pay triple times the payment paid under the original Sublicense; (2) sublicensee will have no right to recoup any royalties paid before or during the period challenge; (3) any dispute regarding the validity of any Licensed Patent shall be litigated in the courts located in Santa Xxxxx County, and the parties agree not to challenge personal jurisdiction in that forum;; and [***] PORTIONS OF THIS EXHIBIT HAVE BEEN REDACTED PURSUANT TO A CONFIDENTIAL TREATMENT REQUEST. AN UNREDACTED VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE COMMISSION. EXECUTION VERSION (4) sublicensee shall not pay royalties into any escrow or other similar account. (B) Sublicensee will provide written notice to Stanford at least three months prior to bringing an action seeking to invalidate a Licensed Patent. Sublicensee will include with such written notice an identification of all prior art it believes invalidates any claim of the Licensed Patent. Notwithstanding the foregoing, in the event a sublicensee files a counterclaim asserting invalidity of one or more Licensed Patents in response to an actual suit by Stanford, such sublicensee shall not be deemed to have brought an action to invalidate a Licensed Patent and this Section 4.5 shall not apply. S09-367 : GWK.

Litigation by Sublicensee. Any Sublicense must include the following clauses: (A) In the event sublicensee a Sublicensee brings an action seeking to invalidate any Licensed Patent, excluding any invalidity claim directed to any of the Licensed Patents made as a counterclaim or defense in an action brought against the Sublicensee by Stanford outside of the Licensed Field of Use: (1) sublicensee Sublicensee will double the payment paid to the ImmuMetrix Syncopation during the pendency of such actionaction with respect to sales of Licensed Product covered by such challenged patent. Moreover, should the outcome of such action determine that any claim of a patent Licensed Patent challenged by the sublicensee Sublicensee is both valid and infringed by a Licensed Product, sublicensee Sublicensee will pay triple times the payment paid under the original SublicenseSublicense with respect to sales of Licensed Product covered by such challenged patent; (2) sublicensee Sublicensee will have no right to recoup any royalties paid before or during the period challenge; (3) any dispute regarding the validity of any Licensed Patent shall be litigated in the courts located in Santa Xxxxx Clara County, and the parties agree not to challenge personal jurisdiction in that forum;; and (4) sublicensee Sublicensee shall not pay royalties into any escrow or other similar accountaccount that would prevent payment to Stanford hereunder. (B) The Sublicensee will provide written notice to Stanford at least three months [***] prior to bringing an action seeking to invalidate a Licensed Patent. Sublicensee will include , excluding with such written notice an identification of all prior art it believes invalidates respect to any invalidity claim directed to any of the Licensed Patent. Notwithstanding the foregoing, in the event a sublicensee files Patents made as a counterclaim asserting invalidity of one or more Licensed Patents defense in response to an actual suit by Stanford, such sublicensee shall not be deemed to have brought an action to invalidate a brought against the Sublicensee by Stanford outside of the Licensed Patent and this Section 4.5 shall not apply. S09-367 : GWKField of Use.

Litigation by Sublicensee. Any Sublicense (and any further sublicense permitted under Section 4.1 under the Licensed Patents and authorized by Company to its sublicensee) must include the following clauses: (A) In the event sublicensee brings initiates an action seeking to invalidate any Licensed Patent: (1) sublicensee will double [***] the payment paid of royalties owed to the ImmuMetrix Stanford based on Net Sales made by such sublicensee of any Licensed Product covered by such challenged Licensed Patent during the pendency of such action. Moreover, should the outcome of such action determine that any claim of a patent challenged by the sublicensee is both valid and infringed by a Licensed Product, sublicensee will pay triple [***] times the payment paid under royalties owed to Stanford based on Net Sales made by such sublicensee of such Licensed Product covered by the original Sublicensesuch challenged Licensed Patent from and after such determination; (2) sublicensee will have no right to recoup any royalties paid before or during the period challengeof such challenge action; (3) any dispute regarding the validity of any Licensed Patent shall be litigated in the courts located in Santa Xxxxx County, and the parties agree not to challenge personal jurisdiction in that forum;; and (4) sublicensee shall not pay royalties into any escrow or other similar account. (B) Sublicensee will provide written notice to Stanford at least three months prior to bringing initiating an action seeking to invalidate a Licensed Patent. Sublicensee will include with such written notice an identification of all prior art it believes invalidates any claim of the Licensed Patent. Notwithstanding the foregoing, . (C) The foregoing provisions of this Section 4.4 shall not apply in the event that a sublicensee files a counterclaim asserting invalidity of one or more patents within the Licensed Patents in response to an actual patent infringement suit by Stanford, such sublicensee shall not be deemed or on behalf of Stanford with respect to have brought an action to invalidate a Licensed Patent and this Section 4.5 shall not apply. S09-367 : GWKPatents.

Litigation by Sublicensee. Any Sublicense and Further Sublicense must include the following clauses: (A) In the event sublicensee brings an action seeking to invalidate any Licensed Patent: (1) sublicensee will double [****] the payment paid to the ImmuMetrix Surrozen during the pendency of such action. Moreover, should the outcome of such action determine that any claim of a patent challenged by the sublicensee is both valid and infringed by a Licensed Product, sublicensee will pay triple times [****] the payment paid under the original Sublicense; (2) sublicensee will have no right to recoup any royalties paid before or during the period challenge; (3) any dispute regarding the validity of any Licensed Patent shall be litigated in the courts located in Santa Xxxxx County, and the parties agree not to challenge personal jurisdiction in that forum;; and (4) sublicensee shall not pay royalties into any escrow or other similar account. (B) Sublicensee will provide written notice to Stanford at least three months [****] prior to bringing an action seeking to invalidate a Licensed Patent. Sublicensee will include with such written notice an identification of all prior art it believes invalidates any claim of the Licensed Patent. [****]. (C) Notwithstanding the foregoing, in the event a sublicensee files a counterclaim or defense asserting the invalidity of one or more Licensed Patents in response to an actual infringement suit in the Other Field of Use directed to the Licensed Patents initiated by Stanford, such sublicensee shall not be deemed to have brought an action seeking to invalidate a Licensed Patent and this Section 4.5 Sections 4.4(A) and (B) above shall not apply. S09-367 : GWK.