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 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.