Litigation by Sublicensee Sample Clauses
The 'Litigation by Sublicensee' clause defines the rights and procedures for a sublicensee to initiate or participate in legal action concerning the licensed intellectual property. Typically, this clause outlines under what circumstances a sublicensee may bring a lawsuit, such as in cases of infringement, and may require the sublicensee to notify the original licensor or obtain their consent before proceeding. Its core function is to clarify the legal standing and responsibilities of sublicensees in protecting the licensed rights, thereby ensuring coordinated enforcement and minimizing conflicts between the parties involved.
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 ***** 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 ▇▇▇▇▇ 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.
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 ▇▇▇▇▇ 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 of royalties paid to Eidos 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, following such determination sublicensee will [*****] the payment of royalties paid under the original Sublicense;
(2) sublicensee will have no right to recoup any royalties paid before or during the pendency of such action;
(3) any dispute regarding the validity of any Licensed Patent shall be litigated in the courts located in Santa ▇▇▇▇▇ 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.
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 [*] 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 [*];
(2) sublicensee will [*] during the period challenge;
(3) any dispute regarding the validity of any Licensed Patent shall be [*], and the parties agree [*]; and
(4) sublicensee shall [*].
(B) Sublicensee will provide written notice to Stanford at least [*] prior to bringing an action seeking to invalidate a Licensed Patent. Sublicensee will include with such written notice [*].
(C) Notwithstanding the foregoing, in the event a sublicensee files a counterclaim asserting invalidity of one or more Licensed Patents in response to an actual infringement suit directed to the Licensed Patents by Stanford, such sublicensee shall not be deemed to have initiated an action to invalidate a Licensed Patent and Sections 4.4(A) and 4.4(B) above shall not apply.
Litigation by Sublicensee. Any sublicense must include the following clauses:
(A) In the event sublicensee brings any court action seeking to invalidate any Licensed Patent:
(1) sublicensee will [***] during the pendency of such action. Moreover, should the outcome of such action determine that any claim of a Licensed Patent challenged by the sublicensee is both valid and infringed by a Licensed Product, sublicensee will [***];
(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 ▇▇▇▇▇ 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 [***] 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.
Litigation by Sublicensee. Any sublicense must include the following clauses with respect to any Licensed Patent sublicensed to the sublicensee:
(A) In the event sublicensee brings an action seeking to invalidate any such Licensed Patent:
(1) sublicensee will [***] with respect to such 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 [***] with respect to such Licensed Patent under the original sublicense;
(2) sublicensee will have no right to recoup by reason of such action 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 ▇▇▇▇▇ County, and the parties agree not to challenge personal jurisdiction in that forum; S05-304, S11-202: SMN Exclusive (Equity) Agreement
(4) sublicensee shall not pay royalties into any escrow or other similar account, to the extent prohibited under Section 4.3(C) above.
(B) Sublicensee will provide written notice to Stanford at least [***] 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.
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 royalty payment owed to AcceleMed on Net Sales of Licensed Products covered by the challenged Licensed Patent sold by Sublicensee 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 royalty payment owed to AcceleMed on Net Sales of Licensed Products covered by the challenged Licensed Patent sold by Sublicensee after such determination, and sublicensee will have no right to recoup any royalties paid before or during the period challenge;
(2) any dispute regarding the validity of any Licensed Patent shall be litigated in the courts located in Santa ▇▇▇▇▇ County, and the parties agree not to challenge personal jurisdiction in that forum;
(3) sublicensee shall not pay royalties into any escrow or other similar account.
(B) Sublicensee will provide written notice to Nalu and 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.
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 [***] 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 [***];
(2) sublicensee will [***] during the period challenge;
(3) any dispute regarding the validity of any Licensed Patent shall be [***], and the parties agree [***]; and
(4) sublicensee shall [***]. *** Certain information in this agreement has been omitted and filed separately with the Securities and Exchange Commission. [***] indicates that text has been omitted and is the subject of a confidential treatment request.
(B) Sublicensee will provide written notice to Stanford at least [***] prior to bringing an action seeking to invalidate a Licensed Patent. Sublicensee will include with such written notice [***].
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 [***] 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 [***] under the original Sublicense;
(2) [***];
(3) any dispute regarding the validity of any Licensed Patent shall be litigated in the courts located in [***]; and
(4) sublicensee shall not pay royalties into any escrow or other similar account.
(B) Sublicensee will provide written notice to Stanford at least [***] prior to bringing an action seeking to invalidate a Licensed Patent. Sublicensee will include with such written notice [***].
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 initiates an action seeking to invalidate any Licensed Patent:
(1) sublicensee will [***] the payment of royalties owed to 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 [***] times the payment royalties owed to Stanford based on Net Sales made by such sublicensee of such Licensed Product covered by the such challenged Licensed Patent from and after such determination;
(2) sublicensee will have no right to recoup any royalties paid before or during the period of such challenge action;
(3) any dispute regarding the validity of any Licensed Patent shall be litigated in the courts located in Santa ▇▇▇▇▇ 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 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.
(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 or on behalf of Stanford with respect to Licensed Patents.