Patent Challenges. Notwithstanding the foregoing, if a LICENSED PARTY initiates an action or proceeding challenging the validity or scope of PATENT RIGHTS or that a LICENSED PRODUCT practices the PATENT RIGHTS, the following shall apply:
a) JHU may terminate this AGREEMENT upon written notice to LICENSEE and/or the LICENSED PARTY.
b) No payments or reports required by this AGREEMENT shall be suspended or delayed during any challenge to PATENT RIGHTS and no such payments shall be subject to refund or recoupment for any reason.
c) Not less than ninety (90) days prior to initiating any challenge to a PATENT RIGHTS, the party challenging PATENT RIGHTS (the “Challenging Party”) shall provide written notice of the expected challenge to JHU which shall include a clear statement of the factual and legal basis for the challenge, and an identification of all prior art, documents, products, or other matter the Challenging Party believes to provide a basis for such challenge.
d) If such action or proceeding determines that at least one claim of the PATENT RIGHTS is a VALID CLAIM or practiced by a LICENSED PRODUCT, LICENSEE and the Challenging Party shall, thereafter, pay to JHU three times all payment amounts which LICENSEE and Challenging Party would otherwise be required to be paid under this AGREEMENT, other than PATENT COSTS. LICENSEE shall not be obligated to pay increased charges if it is not a party to the challenge to PATENT RIGHTS, has not assisted or facilitated the challenge, and has fully cooperated with JHU in the defense of such challenge.
Patent Challenges. (a) Each Party will [***] notify the other in the event that any Third Party [***] (any such Third Party action, a “Patent Challenge”).
(b) [***]. Upon the controlling Party’s request and at controlling Party’s reasonable expense, the other Party agrees to join in any such effort and, in any event, to cooperate with the controlling Party. The non-controlling Party will have the right, at its own cost and expense and by counsel of its choice, to be represented in any such effort, subject to the controlling Party’s right to control such effort. If an initially controlling Party does not take steps to defend a Patent Challenge within a commercially reasonable time, or elects not to continue any such defense, then such Party shall timely advise the other Party in writing (in any event no less than [***] days prior to the date on which the initial mandatory notice is due under 37 C.F.R. §42.8, as applicable or equivalent thereof) and the other Party will have the right, but not the obligation, to bring and control any effort in defense of such Patent Challenge at its sole cost and expense.
Patent Challenges. If MorphoSys or its Affiliate or Sublicensee challenges in a court or before a patent office the validity, enforceability or scope of any Licensed Patents existent as of the Effective Date, and within […***…] days after written notice from Xencor calling MorphoSys’s attention to this the challenge is not irrevocable withdrawn, then […***…], and Xencor may terminate this Agreement and any license granted hereunder immediately. Notwithstanding the foregoing, MorphoSys or its Affiliate shall be permitted to take any action reasonably required in order to comply with any applicable law, regulation or court order in any proceeding that is not initiated directly or indirectly by MorphoSys or its Affiliate, whether or not such proceeding relates to any challenge or dispute concerning the validity of the Licensed Patents in a patent office proceeding or court of law.
Patent Challenges. Subject to Section 8.3(f), if ADAPTIMMUNE or any of its AFFILIATES brings or supports, directly or indirectly, a challenge, claim or position before a judicial or administrative body or other governmental forum asserting or supporting that any of the claims of the LTC PATENT RIGHTS is invalid or unenforceable, including as part of any litigation or re-examination, opposition, interference or re-issue proceeding, and the outcome of such challenge, claim or position is that such claims of the LTC PATENT RIGHTS are valid and enforceable, then (a) the running royalty rates set forth in Section 4.3 and the MINIMUM ANNUAL ROYALTY obligation under Section 4.2 shall increase ***% of the amounts provided therein; and (ii) ADAPTIMMUNE shall reimburse LTC for any attorneys’ fees incurred by LTC and/or its AFFILIATES in connection with such challenge, claim or position. But, this Section 3.13 shall NOT apply to any assertion of failure of consideration in any action or proceeding subject to Section 14.1(a), in which ADAPTIMMUNE is defending against any assertion by LTC of breach of this LICENSE or asserting a breach of this LICENSE by LTC.
Patent Challenges. (a) By Cynosure.
(i) Cynosure and Cynosure Affiliates shall not bring, pursue or maintain, or cause or encourage any Cynosure Sublicensee or Third Party to bring, pursue or maintain (in each case including in connection with any action brought by Palomar to enforce Cynosure’s obligation to pay royalties hereunder), any claim or other assertion in any court or other governmental forum of competent jurisdiction (including any patent office) seeking a judgment or other decision that any claims of the Axxxxxxx Patents are invalid or unenforceable or not patentable or otherwise not proper (any such claim or other assertion, an “Axxxxxxx Patent Challenge”). In the event that any Axxxxxxx Patent Challenge is brought, pursued or maintained in contravention of this Section 8.6(a), Cynosure and Cynosure Affiliates each understands and agrees that, in addition and without prejudice to any of Palomar’s other rights or remedies hereunder, (i) Cynosure and Cynosure Affiliates shall be in material breach of this Agreement, and (ii) Cynosure and Cynosure Affiliates shall reimburse Palomar for all reasonable costs and expenses of attorneys, professionals and accountants incurred by Palomar and MGH to respond to and defend any such Axxxxxxx Patent Challenge.
(ii) At any time in Palomar’s sole discretion or in the event that (x) the enforceability or legitimacy of the prohibition on Axxxxxxx Patent Challenges contained in Section 8.6(a) is challenged in any court or other governmental forum by Cynosure, any Cynosure Affiliates or any Third Party (including any governmental agency), or (y) such prohibition is held to be unenforceable or otherwise not legal by any court or other governmental agency of competent jurisdiction, then Palomar may elect by written notice to Cynosure, in its sole discretion, at any time, to replace such prohibition in full with the following provision: with respect to any Axxxxxxx Patent Challenge, if either (1) it is determined by a court or other governmental agency of competent jurisdiction, unappealable or unappealed within the time allowed for appeal, that any of the claims of the Axxxxxxx Patents subject to such Axxxxxxx Patent Challenge are not held invalid or unenforceable, or (2) such Axxxxxxx Patent Challenge is not maintained or diligently pursued after being brought before any such determination, in addition and without prejudice to any of Palomar’s other rights or remedies hereunder, (i) from the date such Axxxxxxx Patent Challenge is fi...
Patent Challenges. For the purposes of this Section 8.8, a “Yale Patent Challenge” shall mean any action or proceeding (including any patent opposition or re-examination proceeding) challenging or denying the validity, patentability, and/or enforceability of any of the “LICENSED PATENTS” (as defined in the Yale Agreement) under which a Yale Patent Sublicensee is a SUBLICENSEE (as defined in the Yale Agreement) in a court of competent jurisdiction or with any governmental agency with authority over such LICENSED PATENTS anywhere in the world; and a “Yale Patent Sublicensee” shall mean Licensee or any of its Affiliates or Sublicensees. Except to the extent the following is unenforceable under the Laws of a particular jurisdiction, in the event that (i) any Yale Patent Sublicensee brings a Yale Patent Challenge anywhere in the world, or (ii) any Yale Patent Sublicensee knowingly assists another party in bringing a Yale Patent Challenge anywhere in the world (except as required under a court order or subpoena), then the following would apply:
Patent Challenges a) During the Term, and only to the extent that Patent Challenges are permitted to be restricted under applicable law in the respective jurisdiction, Licensee or its Affiliates will not knowingly engage, participate, request, solicit, financially support any Patent Challenge, or otherwise bring any judicial action or administrative proceeding to challenge a Patent’s validity or enforceability. For clarity, this limitation does not apply to Licensee’s participation in the defense of any Patent as outlined in Sections 4.4-4.5.
b) If, except as permitted by Section 4.7(a), Licensee or its Affiliates engages, participates, requests, solicits, financially supports, or otherwise bring any judicial action or administrative proceeding to challenge a Patent’s validity or enforceability during the Term, Licensee will pay all legal fees, expenses and other costs incurred by KeyGene in or related to such Patent Challenge, irrespective of the outcome of such challenge. In addition Licensee’s financial obligations under Section 3.4 (Royalty) and Section 3.5 (Minimum Annual Royalty) shall [***].
c) If, except as permitted by Section 4.7(a), Licensee or any of its Affiliates engages, participates, requests, solicits, financially supports, or otherwise bring any judicial action or administrative proceeding to challenge a Patent’s validity or enforceability during the Term, KeyGene will have the right (but not the obligation) to terminate all rights, and licenses granted to Licensee and its Affiliates under this Agreement immediately upon notice to Licensee.
Patent Challenges. For the avoidance of doubt, the provisions of this Section 7.7 shall apply in respect of challenges by a Third Party of the validity or enforceability (whether pursuant to an inter partes review, the Xxxxx-Xxxxxx Act or any other relevant regulatory or statutory framework that may govern) of Patents addressed in this Section 7.7 as though such challenge of the validity or enforceability of such Patents constituted an infringement or alleged infringement of such Patents.
Patent Challenges. (a) Syneron and Syneron Subsidiaries shall not directly or indirectly (i) bring, pursue, maintain, assert or raise, (ii) cause or support any Syneron Sublicensee to bring, pursue, maintain, assert or raise or (iii) cause or support any Third Party to bring, pursue, maintain, assert or raise, in each case any claim, counterclaim, defense or other contention or assertion in any court or other governmental forum of competent jurisdiction (including any patent office) seeking a judgment or other decision that any claims of the Xxxxxxxx Patents are invalid or unenforceable or not patentable (any such claim or other assertion, a “Patent Challenge”). For clarity, compelled testimony (including oral, documentary or other testimony in response to any Third Party subpoena) shall not amount to a “Patent Challenge” hereunder, provided that (a) Syneron provides Palomar with advance written notice of such testimony as early as practicable, and (b) such testimony is limited to the scope required by law to the extent possible.
(b) Syneron acknowledges and agrees that the provisions of this Section 7.4 are reasonable, valid and necessary for the adequate protection of Palomar’s interest in and to the Xxxxxxxx Patents, and that Palomar would not have granted to Syneron and its Affiliates the non-exclusive sublicense under the Xxxxxxxx Patents provided for in Section 2 or otherwise entered into the Settlement Agreement without all of the provisions of this Section 7.4. Palomar shall have the right, at any time in its sole discretion, to strike this Section 7.4 in part or in full from this Agreement, and Palomar shall have no liability of any kind whatsoever as a result of the presence or absence of this Section 7.4. This Section 7.4 shall not be understood or applied to alter any standing or jurisdictional requirements that may apply to any Patent Challenge.
Patent Challenges. UHN will have the right to terminate this Agreement in full upon [***] prior written notice to Avro in the event that Avro or any of its Affiliates or Sublicensees (to the extent related to rights granted to a Sublicensee under this Agreement) institutes any claim in a legal or administrative proceeding challenging the validity of any Licensed Patents (except as a defense against a claim, action or proceeding asserted by UHN against Avro or its Affiliates or Sublicensees) (a “Patent Challenge”); provided, with respect to any such Patent Challenge by any Sublicensee of Avro, UHN will not have the right to terminate this Agreement under this Section 8.9 if Avro (a) causes such Patent Challenge to be terminated or dismissed or (b) if permitted in accordance with applicable Law, terminates such Sublicensee’s sublicense to the Licensed Patents being challenged by the Sublicensee, in each case ((a) and (b)) within [***] of UHN’s notice to Avro under this Section 8.9. Notwithstanding the foregoing, UHN’s termination right under this Section 8.9 will not apply to any Affiliate of Avro that first becomes an Affiliate of Avro after the Effective Date of this Agreement in connection with a License Transfer, where such Affiliate of Avro was undertaking activities in connection with a Patent Challenge prior to such License Transfer.
