Common use of Litigation by Sublicensee Clause in Contracts

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 paid to the ImmuMetrix LogicBio 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 [***] PORTIONS OF THIS EXHIBIT HAVE BEEN REDACTED PURSUANT TO A CONFIDENTIAL TREATMENT REQUEST. AN UNREDACTED VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE COMMISSION. EXECUTION VERSION (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 and Further 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 Surrozen 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. [****]. (C) Notwithstanding the foregoing, in the event a sublicensee files a counterclaim or defense asserting the invalidity of one or more Licensed Patents in response to an actual infringement suit in the Other Field of Use directed to the Licensed Patents initiated by Stanford, such sublicensee shall not be deemed to have brought an action seeking to invalidate a Licensed Patent and this Section 4.5 Sections 4.4(A) and (B) above shall not apply. S09-367 : GWK.