Right to Bring Action or Defend. (a) Licensor has the sole right and discretion to prevent or axxxx any actual or threatened misappropriation or infringement and attempt to resolve any claims relating to the Other Licensed Patents, New Licensed Patent and Licensed Know-How, including by (a) prosecuting or defending any inter partes review, post-grant review, covered business method patent review, opposition, derivation, interference, declaratory judgment, federal district court, US Patent and Trademark Office, US International Trade Commission, or other proceeding of any kind, and (b) taking any other lawful action that Licensor, in its sole discretion, believes is reasonably necessary to protect, enforce, or defend any Other Licensed Patent, New Licensed Patent or Licensed Know-How. Licensor has the right to prosecute or defend any such proceeding in Licensor’s own name or, if required by applicable Law or otherwise necessary or desirable for such purposes, in the name of Licensee and may join Licensee as a party if a court of competent jurisdiction determines Licensee is an indispensable party to such proceeding. Licensor shall bear its own costs and expenses in all such proceedings and have the right to control the conduct thereof and be represented by counsel of its own choice therein. (b) Licensee shall and hereby does irrevocably and unconditionally waive any objection to Licensor’s joinder of Licensee to any proceeding described in Section 7.2(a) on any grounds whatsoever, including on the grounds of personal jurisdiction, venue, or forum non conveniens. If Licensor brings or defends any such proceeding, Licensee shall cooperate in all respects with Licensor in the conduct thereof, and assist in all reasonable ways, including having its employees testify when requested, and make available for discovery or trial exhibit relevant records, papers, information, samples, specimens, and the like, at Licensee’s own cost, subject to Licensor’s reimbursement of all out-of-pocket expenses incurred by Licensee in providing Licensee such assistance. (c) If requested to do so by Licensee, Licensor may (in its sole right and discretion) attempt to prevent or axxxx any actual or threatened misappropriation or infringement and attempt to resolve any claims relating to the Miromatrix Origin Patents, including by (a) prosecuting or defending any inter partes review, post-grant review, covered business method patent review, opposition, derivation, interference, declaratory judgment, federal district court, US Patent and Trademark Office, US International Trade Commission, or other proceeding of any kind, and (b) taking any other lawful action that Licensor, in its sole discretion, believes is reasonably necessary to protect, enforce, or defend any Miromatrix Origin Patents. Licensor has the right to prosecute or defend any such proceeding in Licensor’s own name or, if otherwise necessary or desirable for such purposes, in the name of Licensee and may join Licensee as a party. Licensor shall have the right to control the conduct thereof, subject to Licensee having the option to provide input to Licensor. Licensor shall bear its own costs and expenses in all such proceedings and have the right to control the conduct thereof and be represented by counsel of its own choice therein.
Appears in 2 contracts
Samples: Patent and Know How License Agreement (Miromatrix Medical Inc.), Patent and Know How License Agreement (Miromatrix Medical Inc.)
Right to Bring Action or Defend. (a) 9.2.1 Other than claims pertaining to an Improvement, Licensor has the sole right and discretion to prevent or axxxx xxxxx any actual or threatened misappropriation or infringement and attempt to resolve any claims relating to the Other Licensed Patents, New Licensed Patent Assets and Licensed Know-Howhow, including by (a) prosecuting or defending any inter partes review, post-grant review, covered business method patent review, opposition, derivation, interference, declaratory judgment, federal district court, US Patent and Trademark Office, US International Trade Commission, Commission or other proceeding of any kind, and (b) taking any other lawful action that Licensor, in its sole discretion, believes is reasonably necessary necessary, to protect, enforce, enforce or defend any Other Licensed Patent, New Licensed Patent Asset or Licensed Know-Howhow. Licensor has the right to prosecute or defend any such proceeding in Licensor’s own name or, if required by applicable Law or otherwise necessary or desirable for such purposes, in the name of Licensee and may join Licensee as a party if a court of competent jurisdiction determines Licensee is an indispensable party to such proceeding. Licensor shall bear its own costs and expenses in all such proceedings and have the right to control the conduct thereof and be represented by counsel of its own choice therein.
(b) 9.2.2 Licensee shall and hereby does irrevocably and unconditionally waive any objection to Licensor’s joinder of Licensee to any proceeding described in Section 7.2(a10.2(a) on any grounds whatsoever, including on the grounds of personal jurisdiction, venue, venue or forum non conveniens. If Licensor brings or defends any such proceeding, Licensee shall cooperate in all respects with Licensor in the conduct thereof, and assist in all reasonable ways, including having its employees testify when requested, requested and make available for discovery or trial exhibit relevant records, papers, information, samples, specimens, and the like, at Licensee’s own cost, like subject to Licensor’s reimbursement of all any out-of-pocket expenses incurred on an on-going basis by Licensee in providing Licensee such assistance.
(c) If requested to do so by Licensee, Licensor may (in its sole right and discretion) attempt to prevent or axxxx any actual or threatened misappropriation or infringement and attempt to resolve any claims relating to the Miromatrix Origin Patents, including by (a) prosecuting or defending any inter partes review, post-grant review, covered business method patent review, opposition, derivation, interference, declaratory judgment, federal district court, US Patent and Trademark Office, US International Trade Commission, or other proceeding of any kind, and (b) taking any other lawful action that Licensor, in its sole discretion, believes is reasonably necessary to protect, enforce, or defend any Miromatrix Origin Patents. Licensor has the right to prosecute or defend any such proceeding in Licensor’s own name or, if otherwise necessary or desirable for such purposes, in the name of Licensee and may join Licensee as a party. Licensor shall have the right to control the conduct thereof, subject to Licensee having the option to provide input to Licensor. Licensor shall bear its own costs and expenses in all such proceedings and have the right to control the conduct thereof and be represented by counsel of its own choice therein.
Appears in 1 contract
Right to Bring Action or Defend. (ai) Licensor has Tactile shall have the sole right first right, but not the obligation, to institute, prosecute, and discretion control any action, suit, or proceeding with respect to prevent infringement or axxxx any actual or threatened misappropriation or infringement and attempt to resolve any claims relating to of the Other Licensed Patents, New Licensed Patent and Licensed Know-HowIP in the Field within the Territory, including by any declaratory judgment action (a) prosecuting collectively an “Infringement Claim”), at its own expense, using counsel of its own choosing. If Tactile is funding the Infringement Claim, Tactile may enter into any settlement or defending any inter partes review, post-grant review, covered business method patent review, opposition, derivation, interference, declaratory judgment, federal district court, US Patent and Trademark Office, US International Trade Commission, consent judgment or other proceeding voluntary final disposition of such Infringement Claim without the prior written consent of Sun provided such settlement is only within the Field within the Territory and has no implications on any Sun intellectual property or sales of Products outside the Field or Territory at which time Sun’s prior written consent is required (which may not be unreasonably withheld, delayed or conditioned). If Tactile is not funding the Infringement Claim, no settlement or consent judgment or other voluntary final disposition of such Infringement Claim may be entered into by Tactile without the prior written consent of Sun (which may not be unreasonably withheld, delayed or conditioned).
(ii) If Tactile does not exercise such right within 90 days of any kindnotice provided by Sun under Section 8(a), then Sun shall have the right, but not the obligation, to pursue such Infringement Claim.
(iii) Each Party shall cooperate and (b) taking any assist the other lawful action that Licensor, in its sole discretion, believes is reasonably necessary to protect, enforce, or defend any Other Licensed Patent, New Licensed Patent or Licensed Know-How. Licensor has the right to prosecute or defend pursuing any such proceeding Infringement Claim, including joining in Licensor’s own name or, any action or providing power of attorney if required by applicable Law or otherwise necessary or desirable for such purposes, in the name of Licensee and may join Licensee as a party if a court of competent jurisdiction determines Licensee is an indispensable party to such proceedingnecessary. Licensor Each Party shall bear its own costs and expenses in connection with such pursuit. The controlling Party in any Infringement Claim brought under this Section shall provide the other Party, promptly following the controlling Party’s receipt or creation thereof, with copies of all documents filed or publicly disclosed in or in connection with such proceedings claim or action. Any amounts recovered pursuant to an Infringement Claim under this Section 8(b) or any settlement thereof shall be applied (1) first to reimburse the Party instituting, prosecuting and have the right to control the conduct thereof controlling such Infringement Claim and be represented by counsel of its own choice therein.
(b) Licensee shall Affiliates for their costs and hereby does irrevocably and unconditionally waive any objection to Licensor’s joinder of Licensee to any proceeding described in Section 7.2(a) on any grounds whatsoeverexpenses, including on reasonable attorneys’ fees, in connection therewith, (2) second to reimburse the grounds costs and expenses of personal jurisdiction, venue, or forum non conveniens. If Licensor brings or defends any the other party and its Affiliates in connection with such proceeding, Licensee shall cooperate in all respects with Licensor in the conduct thereof, and assist in all reasonable ways, including having its employees testify when requested, and make available for discovery or trial exhibit relevant records, papers, information, samples, specimens, and the like, at Licensee’s own cost, subject to Licensor’s reimbursement of all out-of-pocket expenses incurred by Licensee in providing Licensee such assistance.
(c) If requested to do so by Licensee, Licensor may (in its sole right and discretion) attempt to prevent or axxxx any actual or threatened misappropriation or infringement and attempt to resolve any claims relating to the Miromatrix Origin Patents, including by (a) prosecuting or defending any inter partes review, post-grant review, covered business method patent review, opposition, derivation, interference, declaratory judgment, federal district court, US Patent and Trademark Office, US International Trade Commission, or other proceeding of any kindInfringement Claim, and (b3) taking any other lawful action remaining amount shall be paid to the Party and its Affiliates that Licensorpursued the Infringement Claim; provided, in its sole discretionhowever, believes that if Tactile pursues and solely funds such Infringement Claim then it shall pay Sun 30% of such remaining proceeds and if an ongoing royalty is reasonably necessary to protect, enforce, or defend any Miromatrix Origin Patents. Licensor has part of the right to prosecute or defend any such proceeding in Licensor’s own name or, if otherwise necessary or desirable for such purposes, in the name of Licensee and may join Licensee as a party. Licensor Infringement Claim it shall have the right to control the conduct thereof, be subject to Licensee having the option to provide input to Licensor. Licensor shall bear its own costs Sublicensing Royalty and expenses in all such proceedings and have the right to control the conduct thereof and be represented by counsel sharing of its own choice thereinany one-time or lump sum payments under Section 3(c).
Appears in 1 contract
Right to Bring Action or Defend. (a) 8.2.1 Licensor has the sole right and discretion to prevent or axxxx xxxxx any actual or threatened misappropriation or infringement and attempt to resolve any claims relating to the Other Licensed Patents, New Licensed Patent Patents and Licensed Know-Howhow, including by (a) prosecuting or defending any inter partes review, post-grant review, covered business method patent review, opposition, derivation, interference, declaratory judgment, federal district court, US Patent and Trademark Office, US International Trade Commission, Commission or other proceeding of any kind, and (b) taking any other lawful action that Licensor, in its sole discretion, believes is reasonably necessary necessary, to protect, enforce, enforce or defend any Other Licensed Patent, New Licensed Patent or Licensed Know-Howhow. Licensor has the right to prosecute or defend any such proceeding in Licensor’s own name or, if required by applicable Law or otherwise necessary or desirable for such purposes, in the name of Licensee and may join Licensee as a party if a court of competent jurisdiction determines Licensee is an indispensable party to such proceedingparty. Licensor shall bear its own costs and expenses in all such proceedings and have the right to control the conduct thereof and be represented by counsel of its own choice therein.
(b) 8.2.2 Licensee shall and hereby does irrevocably and unconditionally waive any objection to Licensor’s joinder of Licensee to any proceeding described in Section 7.2(a) 6.2.1 on any grounds whatsoever, including on the grounds of personal jurisdiction, venue, venue or forum non conveniens. If Licensor brings or defends any such proceeding, Licensee shall cooperate in all respects with Licensor in the conduct thereof, and assist in all reasonable ways, including having its employees testify when requested, requested and make available for discovery or trial exhibit relevant records, papers, information, samples, specimens, and the like, at Licensee’s own cost, like subject to Licensor’s reimbursement on a monthly basis of all out-of-pocket expenses incurred on an on-going basis by Licensee or its employees in providing Licensee Licensor such assistance.
(c) If requested to do so by Licensee, Licensor may (in its sole right and discretion) attempt to prevent or axxxx any actual or threatened misappropriation or infringement and attempt to resolve any claims relating to the Miromatrix Origin Patents, including by (a) prosecuting or defending any inter partes review, post-grant review, covered business method patent review, opposition, derivation, interference, declaratory judgment, federal district court, US Patent and Trademark Office, US International Trade Commission, or other proceeding of any kind, and (b) taking any other lawful action that Licensor, in its sole discretion, believes is reasonably necessary to protect, enforce, or defend any Miromatrix Origin Patents. Licensor has the right to prosecute or defend any such proceeding in Licensor’s own name or, if otherwise necessary or desirable for such purposes, in the name of Licensee and may join Licensee as a party. Licensor shall have the right to control the conduct thereof, subject to Licensee having the option to provide input to Licensor. Licensor shall bear its own costs and expenses in all such proceedings and have the right to control the conduct thereof and be represented by counsel of its own choice therein.
Appears in 1 contract
Samples: Patent and Know How License Agreement (C-Bond Systems, Inc)
Right to Bring Action or Defend. (a) Licensor has the sole right and discretion to prevent bring an Action alleging the infringement, misappropriation, or axxxx other violation of any actual Licensed Patent or threatened misappropriation the Licensed Know-How, defend any declaratory judgment Action concerning any Licensed Patent or infringement the Licensed Know-How, and take any other lawful action reasonably necessary to protect, enforce, or defend any Licensed Patent or the Licensed Know-How, and control the conduct thereof and attempt to resolve any claims relating to the Other Licensed Patents, New any Licensed Patent and or the Licensed Know-How, including by (a) prosecuting or defending any inter partes review, post-grant review, covered business method patent review, opposition, derivation, interference, declaratory judgment, federal district courtdxxxxxxx xxxxx, US Patent and Trademark OfficeXXXXX, US International Trade Commission, or other proceeding Action of any kind, and (b) taking any other lawful action that Licensor, in its sole discretion, believes is reasonably necessary to protect, enforce, or defend any Other Licensed Patent, New Licensed Patent or Licensed Know-How. Licensor has the right to prosecute or defend any such proceeding Action in Licensor’s own name or, if required by applicable Law or otherwise necessary or desirable for such purposes, in the name of Licensee and may join Licensee as a party if a court of competent jurisdiction determines Licensee is an indispensable party to such proceedingAction. Licensor shall bear its own costs and expenses in all such proceedings Actions and have the right to control the conduct thereof and be represented by counsel of its own choice therein.
(b) Licensee shall and hereby does irrevocably and unconditionally waive any objection to Licensor’s joinder of Licensee to any proceeding Action described in Section 7.2(a18.2(a) on any grounds whatsoever, including on the grounds of personal jurisdiction, venue, or forum non conveniens. If Licensor brings or defends any such proceedingAction, Licensee shall cooperate in all respects with Licensor in the conduct thereof, and assist in all reasonable ways, including having its employees testify when requested, and make available for discovery or trial exhibit relevant records, papers, information, samples, specimens, and the like, at Licensee’s own cost, subject to Licensor’s reimbursement of all any out-of-pocket expenses reasonably incurred on an on-going basis by Licensee in providing Licensee such assistance.
(c) If requested to do so by Licensee, Licensor may (in its sole right and discretion) attempt to prevent or axxxx any actual or threatened misappropriation or infringement and attempt to resolve any claims relating to the Miromatrix Origin Patents, including by (a) prosecuting or defending any inter partes review, post-grant review, covered business method patent review, opposition, derivation, interference, declaratory judgment, federal district court, US Patent and Trademark Office, US International Trade Commission, or other proceeding of any kind, and (b) taking any other lawful action that Licensor, in its sole discretion, believes is reasonably necessary to protect, enforce, or defend any Miromatrix Origin Patents. Licensor has the right to prosecute or defend any such proceeding in Licensor’s own name or, if otherwise necessary or desirable for such purposes, in the name of Licensee and may join Licensee as a party. Licensor shall have the right to control the conduct thereof, subject to Licensee having the option to provide input to Licensor. Licensor shall bear its own costs and expenses in all such proceedings and have the right to control the conduct thereof and be represented by counsel of its own choice therein.
Appears in 1 contract
Right to Bring Action or Defend. (a) Licensor has the sole right and discretion to prevent bring an infringement or axxxx misappropriation action concerning any actual Licensed Patent or threatened misappropriation the Licensed Know-How, defend any declaratory judgment action concerning any Licensed Patent or infringement the Licensed Know-How, and take any other lawful action reasonably necessary to protect, enforce, or defend any Licensed Patent or the Licensed Know-How, and control the conduct thereof and attempt to resolve any claims relating to the Other Licensed Patents, New any Licensed Patent and or the Licensed Know-How, including by (a) prosecuting or defending any inter partes review, post-grant review, covered business method patent review, opposition, derivation, interference, declaratory judgment, federal district court, US Patent and Trademark Office, US International Trade Commission, or other proceeding of any kind, and (b) taking any other lawful action that Licensor, in its sole discretion, believes is reasonably necessary to protect, enforce, or defend any Other Licensed Patent, New Licensed Patent or Licensed Know-How. Licensor has the right to prosecute or defend any such proceeding in Licensor’s own name or, if required by applicable Law or otherwise necessary or desirable for such purposes, in the name of Licensee and may join Licensee as a party if a court of competent jurisdiction determines Licensee is an indispensable party to such proceeding. Licensor shall bear its own costs and expenses in all such proceedings and have the right to control the conduct thereof and be represented by counsel of its own choice therein.
(b) Licensee shall and hereby does irrevocably and unconditionally waive any objection to Licensor’s joinder of Licensee to any proceeding described in Section 7.2(a10.2(a) on any grounds whatsoever, including on the grounds of personal jurisdiction, venue, or forum non conveniens. If Licensor brings or defends any such proceeding, Licensee shall cooperate in all respects with Licensor in the conduct thereof, and assist in all reasonable ways, including having its employees testify when requested, and make available for discovery or trial exhibit relevant records, papers, information, samples, specimens, and the like, at Licensee’s own cost, subject to Licensor’s reimbursement of all out-of-pocket expenses incurred by Licensee in providing Licensee such assistance.
(c) If requested to do so by Licensee, Licensor may (in its sole right and discretion) attempt to prevent or axxxx any actual or threatened misappropriation or infringement and attempt to resolve any claims relating to the Miromatrix Origin Patents, including by (a) prosecuting or defending any inter partes review, post-grant review, covered business method patent review, opposition, derivation, interference, declaratory judgment, federal district court, US Patent and Trademark Office, US International Trade Commission, or other proceeding of any kind, and (b) taking any other lawful action that Licensor, in its sole discretion, believes is reasonably necessary to protect, enforce, or defend any Miromatrix Origin Patents. Licensor has the right to prosecute or defend any such proceeding in Licensor’s own name or, if otherwise necessary or desirable for such purposes, in the name of Licensee and may join Licensee as a party. Licensor shall have the right to control the conduct thereof, subject to Licensee having the option to provide input to Licensor. Licensor shall bear its own costs and expenses in all such proceedings and have the right to control the conduct thereof and be represented by counsel of its own choice therein.
Appears in 1 contract
Samples: Patent and Know How License Agreement (Global Innovative Platforms Inc.)
Right to Bring Action or Defend. (a) Subject to Section 9.3(b), Licensor has the sole right and discretion to prevent or axxxx any actual or threatened misappropriation or infringement and attempt to resolve any claims relating to the Other Licensed Patents, New Licensed Patent Patents and Licensed Know-How, including by (a) prosecuting or defending any inter inter-partes review, post-grant review, covered business method patent review, opposition, derivation, interference, declaratory judgment, federal district court, US Patent and Trademark Office, US International Trade Commission, or other proceeding of any kind, and (b) taking any other lawful action that Licensor, in its sole discretion, believes is reasonably necessary to protect, enforce, or defend any Other Licensed Patent, New Licensed Patent or Licensed Know-How. Licensor has the right to prosecute or defend any such proceeding in Licensor’s own name or, if required by applicable Law or otherwise necessary or desirable for such purposesLaw, in the name of Licensee and may join Licensee as a party if a court of competent jurisdiction determines Licensee is an indispensable party to such proceeding. Licensor shall bear its own costs and expenses in all such proceedings and have the right to control the conduct thereof and be represented by counsel of its own choice therein.
(b) Licensee shall and hereby does irrevocably and unconditionally waive any objection to Licensor’s joinder of Licensee to any proceeding described in Section 7.2(a) on any grounds whatsoever, including on the grounds of personal jurisdiction, venue, or forum non conveniens. If Licensor brings or defends any such proceeding, Licensee shall cooperate in all respects with Licensor in the conduct thereofall actions taken under this Section 9, and assist in all reasonable ways, including having its employees testify when requested, and make available for discovery or trial exhibit relevant records, papers, information, samples, specimens, and the like, at Licensee’s own cost, subject to Licensor’s reimbursement of all out-of-pocket expenses incurred by Licensee in providing Licensee such assistance.
(c) If requested to do so by Licensee, Licensor may (in its sole right and discretion) attempt to prevent or axxxx any actual or threatened misappropriation or infringement and attempt to resolve any claims relating to the Miromatrix Origin Patents, including by (a) prosecuting or defending any inter partes review, post-grant review, covered business method patent review, opposition, derivation, interference, declaratory judgment, federal district court, US Patent and Trademark Office, US International Trade Commission, or other proceeding of any kind, and (b) taking any other lawful action that Licensor, in its sole discretion, believes is reasonably necessary to protect, enforce, or defend any Miromatrix Origin Patents. Licensor has the right to prosecute or defend any such proceeding in Licensor’s own name or, if otherwise necessary or desirable for such purposes, in the name of Licensee and may join Licensee as a party. Licensor shall have the right to control the conduct thereof, subject to Licensee having the option to provide input to Licensor. Licensor shall bear its own costs and expenses in all such proceedings and have the right to control the conduct thereof and be represented by counsel of its own choice therein.
(b) If Licensor undertakes the enforcement or defense of any Licensed Patent:
(i) any recovery, damages, or settlement derived from such suit, action, or other proceeding shall be retained in its entirety by Licensor; and
(ii) Licensor may settle any such suit, action, or other proceeding, whether by consent order, settlement, or other voluntary final disposition, without the prior written approval of Licensee provided that Licensor shall not settle any such suit, action, or other proceeding in a manner that adversely affects the rights of any of Licensee concerning the Licensed Patents and Licensed Know-How without Licensee’s prior written consent, which consent may not be unreasonably withheld or delayed.
Appears in 1 contract
Samples: Patent and Know How License and Cooperation Agreement (Applied Dna Sciences Inc)
Right to Bring Action or Defend. (a) Licensor has the sole right and discretion discretion, but not the obligation, to prevent bring an infringement or axxxx misappropriation action concerning any actual Licensed Patent, Licensed Know-How, Licensed Marks, Trade Secret, Copyright, or threatened misappropriation Licensed Software, defend any declaratory judgment action or infringement US Patent and Trademark Office proceeding concerning any Licensed Patent, Licensed Know-How, Licensed Marks, Trade Secret, Copyright or Licensed Software and take any other lawful action reasonably necessary to protect, enforce, or defend any Licensed Patent, Licensed Know-How, Licensed Marks, Trade Secret, Copyright or Licensed Software, and control the conduct thereof and attempt to resolve any claims relating to the Other any Licensed PatentsPatent, New Licensed Patent and Licensed Know-How, Licensed Marks, Trade Secret, Copyright or Licensed Software, including by (a) prosecuting or defending any inter partes review, post-grant review, covered business method patent review, opposition, derivation, interference, declaratory judgment, federal district court, US Patent and Trademark Office, US International Trade Commission, or other proceeding of any kind, and (b) taking any other lawful action that Licensor, in its sole discretion, believes is reasonably necessary to protect, enforce, or defend any Other Licensed Patent, New Licensed Patent or Licensed Know-How, Licensed Marks, Trade Secret, Copyright or Licensed Software. Licensor has the right to prosecute or defend any such proceeding in Licensor’s own name or, if required by applicable Law or otherwise necessary or desirable for such purposes, in the name of Licensee and may join Licensee as a party if a court of competent jurisdiction determines Licensee is an indispensable party to such proceedingparty. Licensor shall bear its own costs and expenses in all such proceedings and have the right to control the conduct thereof and be represented by counsel of its own choice therein.
(b) Licensee shall and hereby does irrevocably and unconditionally waive any objection to Licensor’s joinder of Licensee to any proceeding described in Section 7.2(a9.2(a) on any grounds whatsoever, including on the grounds of personal jurisdiction, venue, or forum non conveniens. If Licensor brings or defends any such proceeding, Licensee shall cooperate in all respects with Licensor in the conduct thereof, and assist in all reasonable ways, including having its employees testify when requested, and make available for discovery or trial exhibit relevant records, papers, information, samples, specimens, and the like, at Licensee’s own cost, subject to Licensor’s reimbursement of all out-of-pocket expenses incurred by Licensee in providing Licensee such assistance.
(c) If requested In the event that Licensor determines that it does not intend to do so by Licensee, Licensor may (in its sole right and discretion) attempt to prevent defend any declaratory judgment action or axxxx any actual or threatened misappropriation or infringement and attempt to resolve any claims relating to the Miromatrix Origin Patents, including by (a) prosecuting or defending any inter partes review, post-grant review, covered business method patent review, opposition, derivation, interference, declaratory judgment, federal district court, US Patent and Trademark OfficeOffice proceeding, US International Trade Commission, Licensor shall inform Licensee of the determination within fifteen days of obtaining notice of such action or other proceeding of any kindproceeding, and (b) taking any other lawful Licensee shall then have the right, but not the obligation, to defend such action that Licensor, in its sole discretion, believes is reasonably necessary to protect, enforce, or defend any Miromatrix Origin Patents. Licensor has the right to prosecute or defend any such proceeding in LicensorLicensee’s own name or, if required by applicable Law or otherwise necessary or desirable for such purposes, in the name of Licensee Licensor and may join Licensee Licensor as a party. Licensor shall have the right to control the conduct thereof, subject to Licensee having the option to provide input to Licensor. Licensor shall bear its own costs and expenses in all such actions or proceedings and have the right to control the conduct thereof and be represented by counsel of its own choice therein.
(d) In the event that Licensor does not, within four months of obtaining notice of any infringement or misappropriation concerning any Licensed Patent, Licensed Know-How, Licensed Marks, Trade Secrets, Copyrights or Licensed Software, (i) secure cessation of such infringement or misappropriation, or (ii) enter suit against the infringing or misappropriating party, then Licensee shall then have the right, but not the obligation, to bring suit in Licensee’s own name or, if required by applicable Law or otherwise necessary or desirable for such purposes, in the name of Licensor and may join Licensor as a party. Licensee shall bear its own costs and expenses in all such actions or proceedings and have the right to control the conduct thereof and be represented by counsel of its own choice therein.
Appears in 1 contract
Samples: Intellectual Property License Agreement (CalAmp Corp.)