Common use of Litigation by Sublicensee Clause in Contracts

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.

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 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 Syncopation during the pendency of royalties owed such action with respect to Stanford based on Net Sales made by such sublicensee sales of any Licensed Product covered by such challenged Licensed Patent during the pendency of such actionpatent. 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 royalties owed paid under the original Sublicense with respect to Stanford based on Net Sales made by such sublicensee sales of such Licensed Product covered by the such challenged Licensed Patent from and after such determinationpatent; (2) sublicensee Sublicensee will have no right to recoup any royalties paid before or during the period of such challenge actionchallenge; (3) any dispute regarding the validity of any Licensed Patent shall be litigated in the courts located in Santa ▇▇▇▇▇ 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 initiating 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. (C) The foregoing provisions of this Section 4.4 shall not apply in the event that a sublicensee files Patents made as a counterclaim asserting invalidity or defense in an action brought against the Sublicensee by Stanford outside of one or more patents within the Licensed Patents in response to an actual patent infringement suit by or on behalf Field of Stanford with respect to Licensed PatentsUse.