Validity Challenge. Should LICENSEE or a SUBLICENSEE, itself or through a third party, bring an action seeking to invalidate any REGENTS’ PATENT RIGHTS and notwithstanding the earned royalty rates listed above: LICENSEE or the SUBLICENSEE will pay royalties to REGENTS at the rate of two times Y percent (2xY%) of the NET SALES of all LICENSED PRODUCTS SOLD during the pendency of such action. Moreover, should the outcome of such action determine that any claim of a patent challenged by LICENSEE is both valid and infringed by a LICENSED PRODUCT, LICENSEE or the SUBLICENSEE will pay royalties at the rate of three times Y percent (3xY%) of the NET SALES of all LICENSED PRODUCTS SOLD, when Y is the royalty rate in 6.1,
(a) LICENSEE or the SUBLICENSEE will have no right to recoup any royalties paid before or during the period challenge,
(b) any dispute regarding the validity of any REGENTS’ PATENT RIGHTS will be litigated in the courts located in California, and the parties agree not to challenge personal jurisdiction in that forum, and;
(c) LICENSEE or the SUBLICENSEE will provide written notice to REGENTS at least three months prior to bringing an action seeking to invalidate any REGENTS’ PATENT RIGHTS. LICENSEE or the SUBLICENSEE will include with such written notice an identification of all prior art it believes invalidates any claim of REGENTS’ PATENT RIGHTS.
Validity Challenge. 13.6.1 In the event that a Third Party commences any re-examination, interference, opposition or nullity proceeding or challenges the validity or enforceability of, or opposes any extension of or the grant of a patent term extension request or a SPC with respect to, any Vitae Patent, BI Patent or Joint Patent (each such action a “Patent Challenge”) during the Term in any country of the Territory, then the Parties shall jointly take such legal action as is required to defend the validity of such particular Vitae Patents, BI Patents, or Joint Patents through patent litigation counsel jointly selected by the Parties. Each Party shall give all reasonable assistance (excluding financial assistance) to the other Party. Each Party may also be represented by counsel of its own selection at its own expense in any such legal action. Any settlement shall be subject to the Parties’ mutual agreement, which shall not be unreasonably withheld or delayed. BI shall be solely responsible for all costs in connection with such Patent Challenge.
13.6.2 For the avoidance of doubt, this Section 13.6 shall not apply to the defense of any Patent Challenge that is raised as a counter-claim or defense by a Third Party that is the subject of an infringement action pursuant to Section 13.3 above, in which case the defense of such Patent Challenge will be governed by such Section 13.3.
Validity Challenge. In the event that a Third Party commences any re-examination, interference, opposition or nullity proceeding or challenges the validity or enforceability of, or opposes any extension of or the grant of a PTE request or a SPC with respect to any Zealand Pharma Patent, Selected Zealand Pharma Patent or Collaboration Patent (each such action a “Patent Challenge”) during the Term in any country of the Territory, then the Parties shall jointly take such legal action, at BI’s expense, as is required to defend the validity of such particular Zealand Pharma Patent, Selected Zealand Pharma Patents or Collaboration Patent through patent litigation counsel jointly selected by the Parties. Each Party shall give all reasonable assistance (excluding financial assistance) to the other Party. Each Party may also be represented by counsel of its own selection at its own expense in any such legal or administrative action. Any settlement shall be subject to the Parties’ mutual agreement, which shall not be unreasonably withheld or delayed. For the avoidance of doubt, this Section 14.11 shall not apply to the defense of any Patent Challenge that is raised as a counter-claim or defense by a Third Party that is the subject of an infringement action pursuant to Section 14.9 or Section 14.10 above, in which case the defense of such Patent Challenge will be governed by such Sections. [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions. In the event that either Party intends to commence any reexamination, interference, opposition or nullity proceeding or challenge the validity or enforceability of, or opposes any extension of or the grant of a PTE request or a SPC with respect to, any Third Party Patent Rights in connection with its Development or Commercialization of a Product (“Offensive Patent Challenge”) during the Term in any country of the Territory, such Party shall notify the other Party thereof prior to taking any such action. In connection with any such Offensive Patent Challenge, BI and Zealand Pharma will reasonably cooperate with each other and will provide each other with any information or assistance that either may reasonably request. Zealand Pharma and BI shall keep each other reasonably informed of developments in any such Offensive Patent Challenge, including, to the extent permissible by law, the st...
Validity Challenge. If Licensee or a Sublicensee, itself or through a third party, institutes any proceeding that contests the validity of any Patent Right during the term of this Agreement, Licensee agrees to pay to The Regents, directly and not into any escrow or other account, all royalties and other amounts due in view of Licensee’s and its Sublicensees’ activities under this Agreement during the period of challenge and The Regents’ attorneys fees in defending such action. Should the outcome of such contest determine that any challenged patent claim is valid, Licensee (or its Sublicensee, as applicable) will thereafter, and for the remaining term of this Agreement, pay a royalty rate of [***] the royalty rate specified above and the entirety of The Regents’ legal (including attorney) fees and costs incurred during such proceeding. For clarity, in the case wherein a Sublicensee challenges the validity of the Patent Rights, so long as Licensee did not directly or indirectly induce, encourage, or otherwise assist such Sublicensee in its challenge of the Patent Rights, then Licensee’s royalty rate will not be tripled per the foregoing sentence and Licensee will not be obligated to pay for The Regents’ attorneys fees in defending such action against a Sublicensee (provided that, if the challenging Sublicensee fails to do so Licensee must terminate the applicable Sublicense).
Validity Challenge. If a third party challenges the validity of the Licensed Patent Rights in a declaratory relief action or proceeding, in an opposition action, in an interference action or proceeding or other than in connection with a suit or proceeding described in Section 8.6 (Infringement Actions), Licensee and TSRI shall confer regarding the need and desirability of defending such challenge, and each party may apply its own business judgment as to whether to defend any litigation applicable to the challenge. In the event that Licensee elects to defend the Licensed Patent Rights against a challenge to the validity of the Licensed Patent Rights, Licensee shall assume responsibility to defend against that challenge, in consultation with TSRI. ***Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions.
Validity Challenge. (a) In the event that a Third Party attacks the validity or enforceability of any particular Kissei Patents in the Territory (including by way of interference, opposition, reissue proceeding or reexamination, but not in response to any enforcement action taken pursuant to Section 12.1(b), whether such challenge is made as a counter-claim or as a separate action that may be consolidated with any such enforcement action, which challenge shall be addressed as provided in Section 12), then Kissei shall first have the right, but not the obligation, to take such legal action, at its discretion, as is required to defend the validity or enforceability of such particular Kissei Patents, and Elixir shall give all reasonable assistance (excluding financial assistance) to Kissei. Elixir may be represented by counsel of its own selection at its own expense in any such legal action but Kissei shall have the right to control the action with counsel of its own choice; provided, however, that Kissei shall not agree to any settlement of such action without the prior written consent of Elixir, such consent not to be unreasonably withheld or delayed. If Kissei does not take legal action as is required to defend the validity or enforceability of such particular Kissei Patents, Kissei shall provide at least thirty (30) days notice to Elixir prior to a corresponding deadline, if applicable, and Elixir may then, at its option, assume control and defence of such action at its expense. In the event that Elixir assumes control of the defence, Kissei shall give reasonable assistance (excluding financial assistance) to Elixir. Kissei may be represented by counsel of its own selection at its own expense in any such legal action, but Elixir shall have the right to control the action with counsel of its own choice; provided, however, that Elixir shall not agree to any settlement of such action without the prior written consent of Kissei, such consent not to be unreasonably withheld or delayed. * Confidential Treatment Requested
Validity Challenge. In the event that a Third Party challenges the validity of any particular Kitov Patents in the Territory, including by pre-grant opposition, post-grant opposition or revocation proceeding, Kitov will use reasonable efforts to allow Coeptis to provide input and comment on the conduct of the defense of such claim, and Coeptis shall give all reasonable assistance to Kitov in connection with such defense. Kitov has the right to control the suit and proceeding with respect to such defense of the Kitov Patents. In the event that Kitov assumes control and defense of a claim in the Territory, Kitov shall not agree to any settlement of the suit without the prior written consent of Coeptis, such consent not to be unreasonably withheld, conditioned or delayed. In the event that Kitov elects not to assume control or defense of such a suit or claim with respect to the Kitov Patents in the Territory, then Coeptis, at its discretion, may assume control or defense of such claim, at Coeptis’ cost. In the event that Coeptis assumes control or defense of any action, Kitov shall give all reasonable assistance to Coeptis, at Coeptis’s cost. Coeptis shall not agree to any settlement of the suit without the prior written consent of Kitov, not to be unreasonably withheld or delayed.
Validity Challenge. Despite Paragraph 10.2 (Breach), and in view of the representations set forth in Paragraph 12.3 (Representation of Conflict Avoidance Benefit), if LICENSEE or any LICENSEE AFFILIATE initiates one or more challenges, or assists either directly or indirectly in the initiation of one or more challenges to the validity or enforceability of any of the LICENSED PATENTS in any manner, including requesting a declaration of invalidity or unenforceability in a court, administrative or government proceeding, or other tribunal of competent jurisdiction, or by cooperating with a THIRD PARTY to do so, then OWNER may, at its discretion, terminate this AGREEMENT immediately upon written notice to LICENSEE. The termination may be as to the entirety of this AGREEMENT or as to the particular one or more LICENSED PATENTS involved. The invalidity or unenforceability of any LICENSED PATENTS will not create an obligation of OWNER to refund to LICENSEE any royalties or other fees paid by LICENSEE to OWNER.
Validity Challenge. If Licensee or a Sublicensee, itself or through a third party, institutes any proceeding that contests the validity of any Patent Right during the term of this Agreement, Licensee agrees to pay to The Regents, directly and not into any escrow or other account, all royalties and other amounts due in view of Licensee’s and its Sublicensees’ activities under this Agreement during the period of challenge and the entirety of The Regents’ legal (including attorney) fees and costs incurred during such proceeding. Should the outcome of such contest determine that any challenged patent claim is valid, Licensee (or its Sublicensee, as applicable) will thereafter, and for the remaining term of this Agreement, pay a royalty rate of three (3) times the royalty rate specified above.
Validity Challenge. In the event that the validity or enforceability of a Patent Right is challenged in any action under Section 8.2 or 8.3, if either Party is not a Party to the action, such Party may join or otherwise participate in the action at its own expense solely with respect to such challenge to the validity or enforceability of such Patent Rights.
