Common use of Litigation by Sublicensee Clause in Contracts

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 Sublicense must include the following clauses with respect to any Licensed Patent sublicensed to the sublicenseeclauses: (A) In the event the sublicensee brings an action seeking to invalidate any such Licensed Patent:Patent (excluding any counterclaim to an action first filed or dispute resolution proceeding first pursued by Stanford): (1) sublicensee will [***[ * ] with respect to such Licensed Patent Eiccose during the pendency of such action. Moreover, should the outcome of such action determine that any claim of a patent Licensed 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 sublicenseSublicense; (2) sublicensee will have no right to recoup by reason of such action any royalties paid before or during the period of 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 PatentPatent (excluding any counterclaim to an action first filed or dispute resolution proceeding first pursued by Stanford). Sublicensee will include with such written notice an [ * ] = Certain confidential information contained in this document, marked by brackets, is filed with the Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended. identification of all prior art it believes invalidates any claim of the Licensed Patent.