EXECUTION VERSION
`
`Patent License Agreement
`
`between
`
`Saint Regis MohawkTribe
`
`and
`
`Allergan, Inc.
`
`Dated as of September 8, 2017
`
`Wr“ ory
`
`1
`
`SRMT 2087
`MYLAN PHARMACEUTICALSV. ALLERGAN
`IPR2016-01127
`
`

`

`SCHEDULES
`
`E.D, Texas Litigations
`Schedule 1.17
`IPR Proceeding(s)
`Schedule 1,31
`Schedule 1.32(a) Licensed Patents
`Schedule 1.43
`Prior Settlement Agreements
`Schedule 1.55
`Valid Claims
`
`:
`
`e GFil
`
`

`

`PATENT LICENSE AGREEMENT
`
`This Patent License Agreement (this “Agreement") is made and entered into as of
`September 8, 2017 (the “Effective Date") by and between the Saint Regis Mohawk Tribe, a
`federally recognized sovereign Native American tribe (“Licensor”), and Allergan,
`Inc., a
`corporation organized under the laws ofthe State of Delaware, having a business address at Morris
`Corporate Center II], 400 Interpace Parkway, Parsippany, New Jersey 07054 (“Allergan”).
`Licensor and Allergan are sometimesreferred to herein individually as a “Party" and collectively
`as the “Parties.”
`
`RECITALS
`
`WHEREAS,Licensoris the sole and exclusive owner of, and has the right to
`license to, Allergan the Licensed Patents (as defined herein); and
`
`WHEREAS,Licensor wishes to grant to Allergan, and Allergan wishes to take, a
`license under the Licensed Patents to develop, commercialize and otherwise exploit Licensed
`Products.
`
`NOW, THEREFORE,in consideration of the premises and the mutual promises
`and conditions set forth herein, and other good and valuable consideration, the receipt and
`sufficiency of which are hereby acknowledged, the Parties, intending to be legally bound, do
`hereby agree as follows:
`
`ARTICLE|
`DEFINITIONS
`
`Unless otherwise specifically provided herein, the following terms shall have the
`following meanings:
`
`“Action” means any action, suit, arbitration, legal process, investigation, claim,
`11
`proceeding (including enforcement proceeding), demand or other similar dispute or dispute
`resolution method (whether federal, state, local ortribal),
`
`12
`
`“Administrative Proceeding” has the meaning set forth in Section 5.1.1.
`
`“Affiliate” means, with respect to a Person, any Person that, directly or indirectly,
`13
`through one or more intermediaries, controls, is controlled by or is under common control with
`suchfirst Person but only for so long as such Person controls, is controlled by or is under common
`control with such first Person. For purposes of this definition, “control” and, with correlative
`meanings, the terms “controlled by” and “under common control with” means: (a) the possession,
`directly or indirectly, of the power to direct the management or policies of a business entity,
`whether through the ownership of voting securities, by contract relating to voting rights or
`corporate governance,or otherwise; or (b) the ownership, directly or indirectly, of more than 50%
`of the voting securities or other ownership interest of a business entity (or, with respect to a limited
`partnership or other similar entity, its general partner or controlling entity). For clarity, each
`Component of Licensor shall be deemed an Affiliate of Licensor under this Agreement.
`
`|
`
`9/a li tl EVfw.
`
`(ieafl?
`
`

`

`14.
`
`15
`
`1.6
`
`“Agreement”has the meaning set forth in the preamble hereto.
`
`“Allergan” has the meaning set forth in the preamblehereto.
`
`“Allergan Indemnitees” has the meaning set forth in Section 8.1.2.
`
`“Applicable Law” means applicable international, foreign, federal, state and local
`1.7.
`laws, rules, and regulations, including any mules, regulations, guidelines, or other requirements of
`any Governmental Entity that may be in effect from time to time. For clarity, with respect to all
`representations, warranties, covenants and other obligations of Licensor hereunder and anyrights,
`remedies or privileges of Allergan hereunder, the term “Applicable Law”shall include all tribal
`laws, rules, and regulations.
`
`“Business Day" means a day other than a Saturday, Sunday, or a day on which
`1.8
`bankinginstitutions in New York, New York are permitted or required to be closed.
`
`“Calendar Quarter” means each successive period of three calendar months
`19
`commencing on January | and ending on December 31, except that the last Calendar Quarter of
`the Royalty Term shall end on the last day of the Royalty Term,
`
`“Competing Product” means any Generic Equivalent or any product other than a
`1.10
`Licensed Product that is developed or approved by the FDA for any indication thatincludes oris
`the sameas any indication for which any Licensed Product is approved by the FDA.
`
`“Component of Licensor” means any company, corporation, enterprise, authority,
`1.11
`division, subdivision, branch or other agency, instrumentality or other government component of
`Licensor.
`
`1.12
`
`“Confidential Information” has the meaning set forth in Section 6.1.
`
`1.13
`
`“Contested PTO Proceeding” has the meaningsetforth in Section 5.3.
`
`1.14
`
`“Dispute” has the meaning set forth in Section 10.7.
`
`115
`
`“Dispute Resolution Parties” has the meaning set forth in Section 10,7,
`
`1,16
`
`“Dollars” or “S” means United States Dollars.
`
`1.17
`
`“E.D. Texas Litigations” means the cases listed on Schedule 1.17,
`
`1.18
`
`“Effective Date” has the meaningset forth in the preamble.
`
`“Exploit” means to make, have made,use, offer to sell, sell import or otherwise
`1.19
`exploit. The term “Exploitation” has a corresponding meaning,
`
`“FDA” meansthe United States Food and Drug Administration and any successor
`1.20
`agencythereto.
`
`121
`
`“Force Majeure Event” has the meaningset forth in Section 10.1.
`
`:
`
`_ie
`
`o/% i 7 ie ar
`
`f
`
`

`

`“GAAP” means United States generally accepted accounting principles
`1.22
`consistently applied.
`
`“Generic Equivalent” means any Third Party productor application approved by
`1.23
`the FDA forsale, or for which FDA approval for sale is being sought,
`in the U.S.in reliance, in
`wholeorin part, on the prior FDA approval (or on safety or efficacy data submitted in support of
`the prior FDA approval) of a Licensed Product,
`including without limitation Third Party
`applications filed and/or approved pursuant to Section 505(b)(2) or Section 505(j) of the Food,
`Drug, and Cosmetics Act, as amended (21 U.S.C. 355(b)(2) and 21 U.S.C, 355(j), respectively),
`including products for which Restasis® or Restasis MultiDose™ is the reference listed drug.
`
`“Governmental Entity” means any applicable supra-national, federal, national,
`1.24
`regional, state, provincial, or local regulatory agencies,authorities, instrumentalities, departments,
`bureaus, commissions, councils, courts, or other governmententities. For clarity, with respect to
`all representations, warranties, covenants and other obligations of Licensor hereunder and any
`rights, remedies or privileges of Allergan hereunder, the term Governmental Entity shall include
`any tribal regulatory agencies, authorities, instrumentalities, departments, bureaus, commissions,
`councils, courts, or other government entities and entities exercising executive,
`legislative,
`judicial, taxing, regulatory or administrative powers or functionsofor pertaining to a government.
`
`125
`
`“Grantees” has the meaning set forth in Section 10.8.1(a).
`
`“Hatch-Waxman Act” means the U.S. “Drug Price Competition and Patent Term
`1.26
`Restoration Act” of 1984,as set forth at 21 U.S.C. §355 ef seq.
`
`1.27.
`
`“Indemnified Party” has the meaningsetforth in Section 8.2.1.
`
`“Indemnifying Party” means the Party from which indemnification is sought
`1.28
`pursuant to Section 8.1.
`
`1.29
`
`“Infringement”has the meaningset forth in Section 5.2.1.
`
`1.30
`
`“Infringement Action” has the meaningset forth in Section 5.2.2.
`
`“IPR Proceeding(s)” means that certain inter-partes review proceedings as set
`1.31
`forth on Schedule 1.31.
`
`“Licensed Patents” means (a) the United States Patents listed on Schedule 1.32(a)
`1.32
`and any and all extensions or restorations by existing or future extension or restoration
`mechanisms, including revalidations, reissues, re-examinations and extensions of the foregoing
`patents.
`
`“Licensed Product” means any product, including an authorized generic, approved
`1.33
`by the FDA for sale in the United States under, or otherwise relating or referring to, NDA No.
`050790 and/or No, 021023, including any supplements, amendments or replacement applications
`relating to any ofthe foregoing.
`
`1.34
`
`“Licensor” has the meaningset forth in the preamble hereto.
`
`o/sfrihcAye al?
`
`

`

`1.35
`
`“Licensor Indemnitees” has the meaningset forth in Section 8.1.1.
`
`lien,
`“Lien” means any mortgage, deed of trust, hypothecation, assignment,
`1.36
`pledge, charge, deposit arrangement, security interest or other security arrangement, claim of
`ownership or other right, contractual restriction, easement, right-of-way, option, conditional sale
`or other title retention agreement or encumbrance, preference,priority, or preferential arrangement
`of any kind or nature whatsoever, including whether statutory, a product of agreement, or by
`operation of law or otherwise.
`
`1.37
`
`“Losses” has the meaningset forth in Section 8.1.1.
`
`“Non-Commercial Organizations” means academic or other not-for-profit
`1.38
`entities that are primarily engaged in research, teaching, education, and patient care incidental to
`the foregoing, but are not engaged in the manufacture, development or commercialization of
`pharmaceutical or other medicinal products, including diagnostics or medical devices.
`
`1.39
`
`“Party” and “Parties” each has the meaning set forth in the preamble hereto.
`
`“Patents” means: (a) all national, regional and international patents and patent
`1.40
`applications, including provisional patent applications; (b) all patent applications that claim
`priority to any patent or patent applications in clause (a), including divisionals, continuations,
`continuations-in-part,
`provisionals,
`converted
`provisionals,
`and
`continued
`prosecution
`applications; (c) any and all patents that have issued or in the future issue from the foregoing patent
`applications ((a) and (b)), including utility models, petty patents, innovation patents and design
`patents and certificates of invention; and (d) any and all extensions or restorations by existing or
`future extension or restoration mechanisms, including revalidations, reissues, re-examinations and
`extensions (including any supplementary protection certificates and the like) of the foregoing
`patents or patent applications ((a), (b), and (c)).
`
`141
`
`“Payment Account” meansthe accountlisted in Section 4.1.
`
`“Person” means an individual, sole proprietorship, partnership,limited partnership,
`142
`limited liability partnership, corporation, limited liability company, business trust, joint stock
`company,trust, unincorporated association, joint venture or other similar entity or organization,
`including a Governmental Entity.
`
`“Prior Settlement Agreements” means the settlement agreements and covenants
`1.43
`not to sue relating to the Licensed Patents entered into by Allergan ofany ofits Affiliates prior to
`the Effective Date, as set forth in Schedule 1.43.
`
`1.44
`
`“Protected Assets” has the meaningset forth in Section 10.8.1.
`
`“Royalty Term” means the period beginning January 1, 2018 and ending on the
`1.45
`earlier of (a) the day there ceases to be any Valid Claim and(b) the last day of the Term.
`
`“SEC Form” means any Form 10-Q or Form 10-K filed by Allergan ple with the
`1.46
`Securities and Exchange Commission and reporting net revenue for the Restasis®. “Form 10-Q”
`
`

`

`and “Form 10-K” mean, respectively, the quarterly report and annual report required to be filed by
`Allergan pursuantto Section 13 and 15(d) of the Securities Exchange Act of 1934.
`
`“Tax Return” means any report, return, declaration, claim for refund, information
`1.47
`return, statement, designation, election, estimated tax filing, notice or certificate filed or required
`to be filed with any Governmental Entity or in connection with the determination, assessment,
`reporting, withholding, collection or payment of any taxes, including any schedule or attachment
`thereto and including any amendments thereof.
`
`148
`
`“Term”has the meaningset forth in Section 9.1.1.
`
`1.49
`Affiliates.
`
`“Third Party” means any Person other than Licensor, Allergan and their respective
`
`1.50
`
`“Third Party Claims” has the meaningset forth in Section 8.1.1.
`
`the Patent Assignment
`“Transaction Documents” means this Agreement,
`151
`Agreement between the Licensor and Allergan dated as of the Effective Date, and each other
`agreement, documentor instrument executed in connection herewith or related to the Transactions.
`
`“Transactions” means,collectively, the grant of rights and other matters described
`1.52
`in this Agreement and each other transaction described in the Transaction Documents.
`
`“Tribal Party” means the Licensor or any Component of Licensor, and “Tribal
`1.53
`Parties” means Licensor and all Components of Licensor, collectively.
`
`“United States” or “U.S.” means the United States of America andits territories
`1.54
`and possessions (including the District of Columbia and Puerto Rico).
`
`“Valid Claim” means any ofthe claims listed on Schedule 1.55 excluding any
`1.55
`such claim that has (a) expired or been abandoned, revoked, dedicated to the public, disclaimed,
`or allowed to lapse, (b) been caused to be invalid, unpatentable or unenforceable through
`disclaimer, reissue, reexamination, or otherwise, or (c) been held invalid, unpatentable or
`unenforceable by a Governmental Entity from whose judgment no appeal is allowed or timely
`taken. If in an Infringement Action, Allergan asserts and prosecutes to successful adjudication by
`district court one or more claims covered by this Agreementbutis not listed in Schedule 1.55,
`then those claimswill be considered a “Valid Claim” from the date of such adjudication forward.
`For clarity, a settlement or covenant notto sue on any claim is not an adjudication.
`
`1.56
`
`“Withholding Taxes” has the meaning set forth in Section 4.4.
`
`ARTICLE 2
`GRANT OF RIGHTS
`
`Grants to Allergan. Subject to the terms and conditions of this Agreement,
`2.1.
`including the Retention of Rights set forth in Section 2.4, Licensor hereby grants to Allergan an
`irrevocable, perpetual, transferable and exclusive (including with regard to Licensor) license, with
`the rightto grant sublicenses through multipletiers ofsublicensees in accordance with Section2.3,
`
`.
`
`o/Si7 Lem.
`
`le pi
`if
`
`

`

`under the Licensed Patents to Exploit Licensed Products for all FDA-approved uses in the United
`States. Licensor further grants Allergan all licenses and other rights (including sublicense rights
`relating to any Generic Equivalent) under the Licensed Patents related, necessary or useful for
`Allergan to settle any Infringement Actions under Section 5.2 or to comply with its obligations, or
`to exercise its rights under, any Prior Settlement Agreement.
`
`Confirmatory Patent License. Licensor shall, if requested to do so by Allergan,
`2.2.
`promptly enter into confirmatory license agreements in the form reasonably requested by Allergan
`(and consistent with the terms of this Agreement, including the scope of the license grants in
`Section 2.1) for purposes of recording the licenses granted under this Agreement with the United
`States Patent and Trademark Office as Allergan considers appropriate; provided that Allergan shall
`reimburse the reasonable out-of-pocket costs incurred by Licensor performing activities under this
`Section 2.2. Until the execution of any such confirmatory licenses, so far as may be legally
`possible and consistent with the terms of this Agreement, including the scope of license grants in
`Section 2.1, Licensor and Allergan shall have the samerights in respect of the Licensed Patents
`and be under the sameobligations to each other in all respects as ifthe said confirmatory licenses
`had been executed.
`
`Permitted Sublicensing. Allergan shall have the right to grant sublicenses,
`2.3.
`through multiple tiers ofsublicensees, under the license granted in Section 2.1, to its Affiliates and
`other Persons,
`including sublicenses for the purpose of settling any dispute or proceeding
`pertaining to the Licensed Patents, or to comply with Prior Settlement Agreements.
`
`Retention of Rights. Licensor retains all rights under the Licensed Patents not
`2.4
`expressly granted hereunder, including the right to use and practice the Licensed Patents for
`research, scholarly use, teaching, education, patient care incidental to the foregoing, sponsored
`research foritself and in collaborations with Non-Commercial Organizations ("Non-Commercial
`Uses”), provided that Licensor shall not directly or indirectly develop, market or license any
`Competing Product or engagein or license activities that would and/orare intended to result in a
`Competing Product.
`
`ARTICLE 3
`DEVELOPMENT, COMMERCIALIZATION AND REGULATORYACTIVITIES
`
`InGeneral. During the Term,Allergan (by itselfor through its Affiliates orits or
`3.1
`their sublicensees) shall have the sole and exclusive rightin the United States,at its sole cost and
`expense, to Exploit Licensed Products under the Licensed Patents, including to: (a) develop (or
`have developed);
`(b) manufacture (or have manufactured);
`(c) commercialize (or have
`commercialized); and (d) prepare, submit, obtain, and maintain approvals (includingthe setting of
`the overall regulatory strategy therefor), and conduct communications with the Governmental
`Entities with respect to, Licensed Products.
`
`ARTICLE 4
`PAYMENTS AND RECORDS
`
`In partial consideration of the rights granted by Licensor to
`Upfront Payment.
`4.1
`Allergan hereunder Allergan shall pay Licensor a nonrefundable and noncreditable upfront amount
`
`6 9/sfi7 be— ie ali
`
`

`

`of thirteen million seven hundred fifty thousand dollars ($13,750,000) on the Effective Date to the
`
`following payment account (the “Payment Account”):
`
`In partial consideration of the nghts granted by Licensor to
`Quarterly Royalty.
`4.2
`Allergan hereunder and subjectto the terms and conditionsset forth in this Agreement, during the
`Royalty Term, nolater than ten (10) Business Days following the end of each Calendar Quarter,
`Allergan shall pay Licensor a nonrefundable and noncreditable amount equal to three million
`seventy hundred fifty thousand dollars ($3,750,000) for each Calendar Quarter of the Royalty
`Term. For clarity, no royalty payments are due underthis Section 4.3 with respect to Calendar
`Quarters preceding the Royalty Term.
`
`Mode of Payment. All Payments to either Party under this Agreement shall be
`4.3
`made by deposit of Dollars in the Payment Account unless the receiving Party designates by notice
`to the paying Party a different accountat least thirty (30) days prior to the date that any payment
`is due hereunder.
`
`imposts,
`levies,
`Each Party is responsible for its own taxes, duties,
`Taxes.
`44
`assessments, deductions, fees, withholdings or similar charges imposed on or measured by net
`income or overall gross income (including branch profits), gross receipts, capital, ability or right
`to do business, property, and franchise or similar taxes pursuant to Applicable Law, Licensorshall
`furnish to Allergan a properly completed and validly executed Internal Revenue Service Form W-
`9, providing its employer identification number and certifying that it
`is exempt from backup
`withholding. The upfront paymentpursuantto Section 4.1, the quarterly royalty payments pursuant
`to Section 4.2 and all other amounts payable by Allergan to Licensor pursuant to this Agreement
`(each, a “Payment”) shall be paid free and clear of any and all taxes, except for any withholding
`of taxes, duties, levies, imposts, assessments, deductions, fees, and other similar charges required
`by Applicable Law (“Withholding Taxes”). Except as provided in this Section 4.4, Licensor shall
`be solely responsible for paying any and all taxes (other than Withholding Taxes required by
`Applicable Law to be deducted from Payments and remitted by Allergan) levied on accountof, or
`measured in whole or in part by reference to, any Payments it receives. Allergan shall deduct or
`withhold from the Payments any Withholding Taxesthatit is required by Applicable Law to deduct
`or withhold. Licensor shall indemnify and hold harmless Allergan for any withholding agent
`liability for Withholding Taxes, including interest and penalties thereon, Licensor shall comply
`
`7
`
`G&-1+
`3
`4
`Oe Ef”MWe
`
`(he
`afl?
`
`

`

`with backup withholding, withholding and reporting requirements relating to taxes under
`Applicable Law in relation to Payments hereunder.
`
`ARTICLE 5
`INTELLECTUAL PROPERTY
`
`$1 Maintenance and Prosecution of Patents,
`
`5.1.1 Patent Prosecution and Maintenance of Licensed Patents. As between
`the Parties, Allergan shall have the first right, but not the obligation, using counsel of its own
`choice and at its own expense, to prepare, file, prosecute and maintain the Licensed Patents in the
`United States and to direct and contro] the prosecution strategy with respectto the Licensed Patents
`(collectively, “Prosecution Control”) and to be responsible for (including the defense of) any
`related
`interference,
`re-issuance,
`re-examination,
`supplemental
`examination
`or other
`administrative proceedings (each, an “Administrative Proceeding”), and Allergan shall consider
`in good faith any requests and suggestions of Licensor with respect thereto. Licensorshall execute
`documents as necessary or reasonable in support of such patent prosecution, including powers of
`attomey.
`
`5.1.2. Where Licensoris required to appear in any Administrative Proceeding, or
`other proceeding as a necessary or indispensable party or in which Licensor's participation is
`necessary to assert defenses, claims, matters in avoidance or objections only assertable by Licensor
`or such assertions are to fulfill the purposes of this Agreement, Allergan shall reimburse Licensor
`for any reasonable costs of counsel or reasonable expenses incurred by Licensor in any
`Administrative Proceeding (including jointly with Allergan), or other proceeding. Licensor’s
`option to participate in Administratiye Proceedings is not intended to and shall not constitute a
`waiver of the Licensor’s sovereign immunity from suit. Licensor shall have sole and exclusive
`control over the means and manner in which its sovereign immunity is asserted or waived.
`
`If, as between the Parties, Allergan decides not to prepare, file, prosecute or
`§.1.3
`maintain a Licensed Patent in the United States or be responsible for any related Administrative
`Proceeding, Allergan shall provide reasonable prior written notice to Licensor of such intention
`and Licensor shall thereupon have the option to assume Prosecution Control of such Licensed
`Patent or responsibility for such related Administrative Proceeding at Licensor's sole cost and
`expense.
`
`5.1.4 Cooperation. Except as provided in Section 5.1.2, the non-prosecuting
`Party shall, and shall cause its Affiliates to, assist and cooperate with the prosecuting Party, as the
`prosecuting Party may reasonably request from timeto time, in the preparation,filing, prosecution
`and maintenance of the Licensed Patents and the conduct of any Administrative Proceeding under
`this Agreement; provided,that the prosecuting Party shall reimburse the non-prosecuting Party for
`its reasonable and verifiable out-of-pocket costs and expenses (excluding counsel fees) incurred
`in connection therewith
`
`§.1.5 Patent Term Extension. As between the Parties, Allergan shall have the
`right to make decisions regarding, and to apply for, patent term extensions pursuant to 35 U.S.C.
`§156 et. seq. or any other extensions that are now or becomeavailable in the future, wherever
`
`Mtl oe
`
`10
`
`

`

`applicable, for the Licensed Patents in connection with the Licensed Products, in each case
`including whether or not to do so. Licensor shall provide prompt and reasonable assistance, as
`requested by Allergan, including by taking such action as patent holder as is required under any
`Applicable Law to obtain such extension; provided, that Allergan shall reimburse the Licensorfor
`its reasonable and verifiable out-of-pocket costs and expenses incurred in connection therewith.
`
`5.1.6 Patent Listings. As between the Parties, Allergan shall have the sole right
`to makeall filings with Governmental Entities with respect to the Licensed Patents relating to the
`Licensed Products, including in the FDA’s Orange Book.
`
`5.2
`
`Enforcement of Patents.
`
`5.2.1 Notice. Each Party shall promptly notify the other Party in writing of(a)
`any actual, potential, alleged or threatened infringement of the Licensed Patents in the United
`States or (b) any certification filed under the Hatch-Waxman Act claiming that any Licensed
`Patents are invalid or unenforceable or claiming that any Licensed Patents would notbe infringed
`by the making, use, offer for sale, sale or import of a product for which an application under the
`Hatch-Waxman Acct is filed, in each case ((a) and (b)) of which such Party becomes aware (an
`“Infringement’’).
`
`5.2.2 Enforcement of Licensed Patents Against Generic Equivalents. With
`regard to any Infringementthat relates to a Generic Equivalent, as between the Parties, Allergan
`shall have the first right, but not the obligation, to control and prosecute and/or continue to
`prosecute any past, presentor future Infringement with respectto the Licensed Patents in an Action
`or Actions in United States federal court (“Infringement Action”), including as a defense or
`counterclaim in connection with any third party infringement claim, at Allergan’s sole cost and
`expense, using counsel ofits own choice.
`In the event Allergan prosecutes or is prosecuting any
`such Infringement Action, Licensor consents to join as a party to such Infringement Action and
`participate with its own independent counsel to protect the interests of the Tribe. With regard to
`the E.D. Texas Litigations, Licensor (i) consents to join as a party and (ii) shall not assert its
`sovereign immunity as to any claim, counter-claim or affirmative defense in the E.D. Texas
`Litigations. All such reasonable expenses attributable to the Licensor’s participation shall be
`reimbursed by Allergan so long as Allergan retains controlof the prosecution ofsuch Infringement
`Action, including the response to any defense or defense of any counterclaim raised in connection
`therewith and settlement activities as set forth in Section 5.2.4. Allergan will consider the
`reasonable input of Licensor regarding any such Infringement Action. If Allergan or its designee
`does not take steps to prosecute an Infringement (a) within ninety (90) days following the first
`notice provided above with respect to such Infringementor (b) five (5) Business Days before the
`time limit, ifany, under Applicable Lawfor filing ofsuch actions; provided suchfive (5) Business
`Days falls after the first such notice of such Infringementis provided, whichever comes first ((a)
`or (b)), then (i) Allergan shall so notify Licensor in writing and (ii) upon Allergan’s written consent
`(such consentnot to be unreasonably withheld, conditioned or delayed), Licensor may prosecute
`such Infringement Actionat its sole cost and expense.
`
`5.2.3 Enforcement of Licensed Patents Against Other Infringements. With
`regard to any Infringement that does not relate to a Generic Equivalent, as between the Parties,
`Licensorshall have thefirst right, but notthe obligation, to control and prosecute any past, present
`
`em Mi
`
`11
`
`

`

`or future Infringement with respect to the Licensed Patents, including as a defense or counterclaim
`in connection with any Third Party Infringement Claim, at Licensor’s sole cost and expense, using
`counsel of its own choice. In the event Licensor prosecutes any such Infringement, Licensorshall
`provide prompt written notice to Allergan and Allergan shall join as a party to such claim, suit or
`proceeding in the United States and participate with its own independent counselat its sole cost
`and expense; provided that Licensor shal! retain control of the prosecution of such Infringement,
`including the response to any defense or defense of any counterclaim raised in connection
`therewith. Notwithstanding the foregoing, Licensorwill reasonably consider the input of Allergan
`regarding any such Infringement action.
`If Licensor or its designee does not take commercially
`reasonable steps to prosecute an Infringement under this Section (a) within ninety (90) days
`following the first notice provided above with respect to such Infringementor (b)five (5) Business
`Days before the time limit, if any, under Applicable Law for filing of such actions; provided such
`five (5) Business Days falls after the first such notice of such Infringementis provided, whichever
`comes first ((a) or (b)), then (i) Licensor shall so notify Allergan in writing and(ii) upon Licensor’s
`written consent (such consent not to be unreasonably withheld, conditioned or delayed), Allergan
`may prosecute such Infringementat its sole cost and expense.
`
`§.2.4 Cooperation. The Parties shall cooperate fully in any Infringementaction
`pursuantto this Section 5.2. The Party that is not prosecuting such Infringement shall, and shall
`cause its Affiliates to, assist and cooperate with the prosecuting Party, as such prosecuting Party
`may reasonably request from time to time, in connection with its activities set forth in this Section
`5.2, including where necessary, furnishing a power of attorney solely for such purpose or joining
`in, or being named as a necessary or substitute party to, such action, providing access to relevant
`documents and other evidence and making its employees available at reasonable business hours;
`provided that the prosecuting Party shall reimburse such other Party for its reasonable and
`verifiable out-of-pocket costs and expenses incurred in connection therewith subject to Section
`5.5.2. Unless otherwise set forth herein, the Party entitled to prosecute any Infringement action
`under this Section 5.2 shall have the rightto settle such claim; provided that the prosecuting Party
`must obtain the other Party's written consent
`to any settlement (such consent not
`to be
`unreasonably withheld, conditioned or delayed),
`In connection with any activities with respect
`to an Infringement action prosecuted by a Party pursuantto this Section 5.2, the prosecuting Party
`shal! (a) consult with the other Party as to the strategy for the prosecution of such action, (b)
`consider in good faith any comments from the other Party with respect thereto and (c) keep the
`other Party reasonably informed of any material steps taken and provide copies ofall material
`documentsfiled in connection with such action.
`
`5.2.5 Recovery. Except as otherwise agreed by the Parties in connection with a
`cost sharing arrangement, any recovery realized as a result ofsuch Actions described abovein this
`Section 5.2 (whether by way of settlement or otherwise) shall be first allocated to reimburse the
`Parties for their costs and expenses in making such recovery (which amounts shall be allocated
`pro rata if insufficient to cover the totality of such expenses). Any remainder after such
`reimbursementis made shall be retained by the Partythat has exercised its right to bring the Action.
`
`Contested PTO Proceedings. Each Party shall promptly notify the other Party in
`5.3
`writing of any actual, potential, alleged or threatened assertion of invalidity, unenforceability or
`unpatentability including any infer partes review, post-grant review or derivation proceeding
`(each, a “Contested PTO Proceeding”) of any of the Licensed Patents by a Third Party of which
`
`_g-It
`
`;
`
`is
`
`12
`
`

`

`such Party becomes aware. As between the Parties, Allergan shall have (a) the first right, but not
`the obligation, to defend and control the defense ofthe validity, enforceability and patentability of
`the Licensed Patents in such Contested PTO Proceeding, atits sole cost and expense in the United
`States and using independent counselof its own choice, Licensor shall cooperate in the defense
`ofany such Contested PTO Proceedingin the United States with independent counselofits choice
`at its sole cost and expense; provided that Allergan shall retain control ofthe defense in such claim,
`suit or proceeding. This obligation to cooperateis not intended to and shall not constitute a waiver
`of Licensor’s sovereign immunity from suit and Licensor represents that it will and shall assert its
`sovereign immunity in any Contested PTO Proceeding, including in the IPR Proceedings. If
`Allergan orits designee elects (in a written communication submitted to Licensor) not to defend
`or control the defense of the Licensed Patents in a suit broughtin the United States or otherwise
`fails to initiate and maintain within a reasonable time the defense of any such claim, suit or
`proceeding, then Licensor may conduct and control the defense of any such claim, suit or
`proceeding at its sole cost and expense. The non-controlling Party shall, and shall