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`Case 2:15—cv-01455—WCB Document 547-2 Filed 11/21/17 Page 1 of 36 PageID #: 26505
`
`EXHIBIT C
`
`REDACTED
`
`

`

`Case 2:15-cv-01455-WCB Document 547-2 Filed 11/21/17 Page 2 of 36 PageID #: 26506
`Case 2:15—cv-01455—WCB Document 547-2 Filed 11/21/17 Page 2 of 36 PageID #: 26506
`
`EXECUTION VERSION
`
`Patent License Agreement
`
`between
`
`Saint Regis Mohawk Tribe
`
`Ind
`
`Allergen, lne.
`
`Dated as of September 8, 2017
`
`CONFIDENTIAL
`
`AGN_RES1 158858
`
`(0'fig MM7
`
`

`

`Case 2:15-cv-01455-WCB Document 547-2 Filed 11/21/17 Page 3 of 36 PageID #: 26507
`Case 2:15—cv-01455—WCB Document 547-2 Filed 11/21/17 Page 3 of 36 PageID #: 26507
`
`SCHEDULES
`
`SD. Texas Litigation:
`Schedule 1.17
`[PR Proceeding(s)
`Schedule [.31
`Schedule 1.32“) Licensed Patents
`Schedule 1.43
`Prior Settlement Agreements
`Schedule 1.55
`Valid Claims
`
`i
`
`gfi‘é/M
`
`CONFIDENTIAL
`
`AGN_RES1 158859
`
`

`

`Case 2:15-cv-01455-WCB Document 547-2 Filed 11/21/17 Page 4 of 36 PageID #: 26508
`Case 2:15—cv—01455-WCB Document 547-2 Filed 11/21/17 Page 4 of 36 PageID #: 26508
`
`PATENT LICENSE AGREEMENT
`
`This Patent License Agreement (this “Agreement") is made and entered into as of
`September 8, 20l7 (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 of the State of Delaware, having a business address at Morris
`Corporate Center III. 400 Interpace Parkway, Parsippany, New Jersey 07054 (“Allergen“).
`Licensor and Allergan are sometimes referred to herein individually as a “Party" and collectively
`as the “Parties."
`
`RECITALS
`
`WHEREAS, Licensor is the sole and exclusive owner of, and has the right to
`license to, Allergen the Licensed Patents (as defined herein); and
`
`WHEREAS, Licensor wishes to grant to Allergen, 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 1
`DEFINITIONS
`
`Unlss otherwise specifically provided herein, the following terms shall have the
`following meanings:
`
`“Action" means any action, suit, arbitration, legal process, investigation. claim,
`l.l
`proceeding (including enforcement proceeding), demand or other similar dispute or dispute
`resolution method (whether federal. state, local or tribal).
`
`1.2
`
`“Administrative Proceeding” has the meaning set forth in Section 5.|.l.
`
`“Affiliate" means, with respect to a Person, any Person that, directly or indirectly,
`L3
`through one or more intermediaries, controls, is controlled by or is under common control with
`such first 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.
`
`l
`
`9/3/1 ”(4? Wm
`
`WW7
`
`CONFIDENTIAL
`
`AGN_RES1158860
`
`

`

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`Case 2:15—cv—01455-WCB Document 547-2 Filed 11/21/17 Page 5 of 36 PagelD #: 26509
`
`1.4
`
`1.5
`
`1.6
`
`“Agreement" has the meaning set forth in the preamble hereto.
`
`“Allergen" has the meaning set forth in the preamble hereto.
`
`“Allergen lndemnitees“ has the meaning set forth in Section 8.1.2.
`
`"Applicable Law“ means applicable international, foreign, federal, state and local
`1.7
`laws, mles, and regulations, including any rules, 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 any rights,
`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
`banking institutions in New York, New York are permitted or required to be closed.
`
`“Calendar Quarter" means each successive period of three calendar months
`1.9
`commencing on January 1 and ending on December 31, except that the last Calendar Quarter of
`the Royalty Tenn 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 that includes or is
`the same as 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 1'1‘0 Proceeding" 1m the meaning set forth in Section 5.3.
`
`1.14
`
`“Dispute" has the meaning set forth in Section 10.7.
`
`1.15
`
`“Dispute Resolution Parties” has the meaning set forth in Section 10.7.
`
`1.16
`
`“Dollars" or “5" means United States Dollars.
`
`1.17
`
`"ED. Texas thlgatlom" means the cases listed on Schedule 1.17.
`
`1.18
`
`“Effective Date” has the meaning set 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" means the United States Food and Drug Administration and any successor
`1.20
`agency thereto.
`
`1.2]
`
`“Force Majeure Event" has the meaning set forth in Section 10.1.
`
`2
`
`MW:
`
`.. 61L 47/
`
`w“ .
`
`CONFIDENTIAL
`
`AGN_RES1158861
`
`

`

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`Case 2:15—cv—01455-WCB Document 547-2 Filed 11/21/17 Page 6 of 36 PageID #: 26510
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`“GAAP” means United States generally accepted accounting principles
`1.22
`consistently applied.
`
`“Generic Equivalent" means any Third Party product or application approved by
`1.23
`the FDA for sale, or for which FDA approval for sale is being sought,
`in the U.S. in reliance, in
`whole or in 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 5050) of the Food,
`Drug, and Cosmetics Act, as amended (2| U.S.C. 355(b)(2) and 21 U.S.C. 3550). respectively),
`including products for which Restasis® or Restasis MultiDoseTM is the reference listed dmg.
`
`“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 government entities. 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, instrurnentalities, departments, bureaus, commissions,
`councils, courts, or other government entities and entities exercising executive,
`legislative,
`judicial, taxing, regulatory or administrative powers or functions of or pertaining to a government.
`
`1.25
`
`“Grantees" has the meaning set forth in Section 10.8. 1 (a).
`
`“Hatch-Waxman Act" means the US. “Dmg Price Competition and Patent Term
`1.26
`Restoration Act” of 1984, as set forth at 21 U.S.C. §355 er seq.
`
`1.27
`
`“Indemnified Party” has the meaning set forth 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 meaning set forth in Section 5.2.1.
`
`1.30
`
`“Infringement Action" has the meaning set forth in Section 5.2.2.
`
`“I”! Proceeding(s)" means that certain inter-panes review proceedings as set
`1.31
`forth on Schedule 1.31.
`
`“Licensed Patents“ means (a) the United States Patents listed on Schedule 1.32“)
`1.32
`and any and all extensions or restorations by existing or future extension or restoration
`mechanisms, including revalidations, reissues, re-exarninations 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, NBA No.
`050790 and/or No. 021023, including any supplements, amendments or replacement applications
`relating to any of the foregoing
`
`1.34
`
`“Liecnsor” has the meaning set forth in the preamble hereto.
`
`CONFIDENTIAL
`
`AGN_RES1 158862
`
`Q/S/fl7M Wé/H
`
`

`

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`Case 2:15—cv-01455-WCB Document 547-2 Filed 11/21/17 Page 7 of 36 PageID #: 26511
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`1.35
`
`"Llcensor lndemnlteer" has the meaning set forth in Section 8.l.l.
`
`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 meaning set forth in Section 8.1 .l.
`
`“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 (it), 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 (12)), including utility models, petty patents, innovation patents and design
`patents and certificates of invention; and (d) any and all extensions or restoratiorrs 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)).
`
`1.41
`
`“Payment Account" means the account listed in Section 4.1.
`
`“Person“ means an individual, sole proprietorship, partnership, limited partnership,
`1.42
`limited liability partnership, corporation. limited liability company, business trust, joint stock
`company, trust. unincorporated Bsociation, joint venture or other similar entity or organization,
`including a Governmental Entity.
`
`"Prior Settlement Agreements” means the settlement agreements and covenants
`[.43
`not to sue relating to the Licensed Patents entered into by Allergen of any of its Affiliates prior to
`the Effective Date, as set forth in Schedule 1.43.
`
`1.44
`
`“Protected Assets" has the meaning set forth in Section 10.8.].
`
`“Royalty Term" means the period beginning January 1, 20l8 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 lO-Q or Form 10—K filed by Allergen plc with the
`1.46
`Securities and Exchange Commission and reporting net revenue for the Restasis®. “Form 10-Q"
`
`‘
`
`9/y/7Mfl‘é/l/H
`
`CONFIDENTIAL
`
`AGN_RES1 158863
`
`

`

`Case 2:15-cv-01455-WCB Document 547-2 Filed 11/21/17 Page 8 of 36 PageID #: 26512
`Case 2:15-cv—01455-WCB Document 547-2 Filed 11/21/17 Page 8 of 36 PageID #: 26512
`
`and “Form lo-K“ mean, respectively, the quarterly report and annual report required to be filed by
`Allergen pursuant to 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.
`
`1.48
`
`“Term“ has the meaning set forth in Section 9.1.1.
`
`1.49
`Affiliates.
`
`“Third Party" means any Person other than Licensor, Allergen and their respective
`
`1.50
`
`“Third Party Claims" has the meaning set forth in Section 8.1.1.
`
`the Patent Assignment
`‘Transaction Documents" means this Agreement,
`1.51
`Agreement between the Licensor and Allergan dated as of the Effective Date, and each other
`agreement, document or 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
`I
`Parties" means Licensor and all Components of Licensor, collectively.
`
`1.54
`
`“United States” or “v.5." means the United States of America and its territories
`
`and possessions (including the District of Columbia and Puerto Rico).
`
`“Valid Claim” means any of the 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 fi'orn whose judgment no appeal is allowed or timely
`taken. If in an Infringement Action, Allergan asserts and prosecute: to successful adjudication by
`district court one or more claims covered by this Agreement but is not listed in Schedule 1.55,
`then those claims will be considered a "Valid Claim“ from the date of such adjudication forward.
`For clarity, a settlement or covenant not to 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 limb in Section 2.4, Licensor hereby gents to Allergen an
`irrevocable, perpetual, transferable and exclusive (including with regard to Licensor) license, with
`the right to grant sublicensec through multiple tiers of sublicensees in accordance with Section 2.3,
`
`5
`
`fl WW9
`
`'
`
`C;/.'S’// 7
`
`CONFIDENTIAL
`
`AGN_RES1 158864
`
`

`

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`Case 2:15—cv—01455-WCB Document 547-2 Filed 11/21/17 Page 9 of 36 PageID #: 26513
`
`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 lnfringement Actions under Section 5.2 or to comply with its obligations. or
`to exercise its rights under, any Prior Settlement Agreement.
`
`Conflrmatory 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.l) for purposes of recording the licenses granted under this Agreement with the United
`States Patent and Trademark Office as Allergan considers appropriate; provided that All ergan 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 same rights in respect of the Licensed Patents
`and be under the same obligations to each other in all respects as if the said confirmatory licenses
`had been executed.
`
`Permitted Subllcenslng. Allergan shall have the right to grant sublicenses,
`2.3
`through multiple tiers ofsublicensees, under the license granted in Section 2. l , 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 nghn. 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 for itself 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 engage in or license activities that would and/or are intended to result in a
`Competing Product.
`
`DEVELOPMENT. COMMERCIALIZATION AND REGULATORY ACTIVITIES
`
`ARTICLE 3
`
`In General. During the Term, Allergan (by itself or through its Affiliates or its or
`3.]
`their sublicensees) shall have the sole and exclusive right in 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 (including the 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 comideration of the rights granted by Licensor to
`Upfront Payment.
`4.1
`Allergan hereunder Allergan shall pay Licensor a nonrefundable and noncreditable upfront amount
`
`CONFIDENTIAL
`
`AGN_RES1158865
`
`

`

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`
`of thirteen million seven hundred fifty thousand dollars ($8,750,000) on the Effective Date to the
`following payment account (the “Payment Account"):
`
`
`
`in partial consideration of the rights granted by Licensor to
`Quarterly Royalty.
`4.2
`Allergan hereunder and subject to the terms and conditions set forth in this Agreement, during the
`Royalty Term. no later than ten (10) Business Days following the end of each Calendar Quaner,
`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 under this Section 4.3 with reSpect to Calendar
`Quarters preceding the Royalty Term.
`
`4.3 Mode of Payment. All Payments to either Party under this Agreement shall be
`made by deposit of Dollars in the Payment Account unless the receiving Party designates by notice
`to the paying Party a different account at least thirty (30) days prior to the date that any payment
`is due hereunder.
`
`imposts,
`levies.
`Taxes. Each Party is responsible for its own taxes, duties,
`4.4
`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. Licensor shall
`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 payment pursuant to 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 account of, or
`measured in whole or in part by reference to, any Payments it receives. Allergan shall deduct or
`withhold from the Payments any Withholding Taxes that it 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
`
`M”
`[KL griffin
`
`96;};
`
`CONFIDENTIAL
`
`AGN_RES1158866
`
`

`

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`Case 2:15-cv—01455-WCB Document 547-2 Filed 11/21/17 Page 11 of 36 PageID #: 26515
`
`with backup withholding. withholding and reporting requirements relating to taxes under
`Applicable Law in relation to Payments hereunder.
`
`ARTICLE 5
`INTELLECTUAL PROPERTY
`
`5.1 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 control the prosecution strategy with respect to 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 ofLicensor with respect thereto. Licensor shall execute
`documents as necessary or reasonable in support of such patent prosecution, including powers of
`attorney.
`
`5.1.2 Where Licensor is 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 assemble 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 Procwding (including jointly with Allergan), or other proceeding. Licensor‘s
`option to participate in Administrative 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
`5.1.3
`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. l .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 time to 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-ofopocket costs and expenses (excluding counsel fees) incurred
`in connection therewith
`
`5.1.5 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.
`§l$6 et. seq. or any other extensions that are now or become available in the future, wherever
`
`CONFIDENTIAL
`
`AGN_RES1158867
`
`

`

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`
`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 Licensor for
`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 make all 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.] 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 not be infringed
`by the making, use, offer for sale, sale or import of a product for which an application under the
`l-Iatch-Waxman Act is filed, in each case ((a) and (b)) of which such Party becomes aware (an
`“lnfringcment").
`
`5.2.2 Enforcement of Licensed Patents Against Generic Equivalents. With
`regard to any Infiingement that 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, present or future Infringement with respect to 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 of its own choice.
`In the event Allergan prosecutes or is prosecuting any
`such Infringement Action, Licensor consmts 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 ED. 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 ED. Texas
`Litigations. All such reasonable expenses attributable to the Licensor‘s participation shall be
`reimbursed by Allergan so long as Allergen retains control of the prosecution of such 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 Allergen or its designee
`does not take steps to prosecute an Infiingernent (a) within ninety (90) days following the first
`notice provided above with respect to such lnfiingement or (b) five (5) Business Days before the
`time limit, ifany, under Applicable Law for filing ofsuch actions; provided such five (5) Business
`Days falls after the first such notice of such Infringement is provided, whichever comes first ((a)
`or (b)). then (i) Allcrgan shall so notify Licensor in writing and (ii) upon Allergan's written consent
`(such consent not to be unreasonably withheld, conditioned or delayed). Licensor may prosecute
`such Infiingement Action at 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.
`Licensor shall have the first right, but not the obligation, to control and prosecute any past, present
`
`'
`‘
`
`CONFIDENTIAL
`
`AGN_RES1 158868
`
`

`

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`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 Lioensor prosecutes any such Infringement, Licensor shall
`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 counsel at its sole cost
`and expense; provided that Licensor shall retain control of the prosecution of such Infringement,
`including the response to any defense or defense of any countaclaim raised in connection
`therewith. Notwithstanding the foregoing, Licensor will 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 lnfiingemcnt or (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 Infringement is 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 lnfringernent at its sole cost and expense.
`
`5.2.4 Cooperation. The Parties shall cooperate fully in any Infringement action
`pursuant to this Section 5.2. The Party that is not prosecuting such lnfiingement shall, and shall
`cause its Affiliates to, assist and cooperate with the prosecuting Party, as such prosecuting Party
`may reasonably requst from time to time, in connection with its activities set forth in this Section
`5.2, including where necessary, firmishing 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 right to 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 pursuant to this Section 5.2, the pro