EXCLUSIVITY PERIODS ACCORDED BY STATUTE;
F.
BARR AND ITS AFFILIATES WOULD COVENANT NOT TO CHALLENGE THE
VALIDITY OR ENFORCEABILITY OF ANY CLAIM OF THE PATENTS IN SUIT IN ANY CONTEXT OR
FORUM IN THE TERRITORY, INCLUDING BUT NOT LIMITED TO ANY COURT OR USPTO
PROCEEDING (INCLUDING REEXAMINATION PROCEEDINGS), INCLUDING, BUT NOT LIMITED TO,
INITIATING A DECLARATORY JUDGMENT ACTION WITH RESPECT TO ANY OF THE PATENTS IN
SUIT.
NOTWITHSTANDING THE FOREGOING, (1) IF CEPHALON, ITS AFFILIATES OR ANY
THIRD PARTY WITH RIGHTS TO ENFORCE THE PATENTS IN SUIT BRINGS AN ACTION AGAINST
BARR FOR INFRINGEMENT OF ANY OF THE PATENTS IN SUIT, BARR WOULD BE ABLE TO
ASSERT ANY DEFENSE OR COUNTERCLAIM (INCLUDING, WITHOUT LIMITATION, INVALIDITY OR
UNENFORCEABILITY) WITH RESPECT TO SAID PATENT ONLY, AND (2) WITH RESPECT TO
PRODUCTS OTHER THAN THE BARR PRODUCTS, BARR AND ITS AFFILIATES WOULD BE
PERMITTED TO FILE FOR THE PATENTS IN SUIT A "PARAGRAPH IV CERTIFICATION" UNDER
21 U.S.C. §355(J)(2)(A)(VII)(IV) (AS AMENDED OR REPLACED) CHALLENGING THE
VALIDITY OR ENFORCEABILITY OF OR ASSERTING THAT SUCH PRODUCTS DO NOT INFRINGE
ANY CLAIM OF THE PATENTS IN SUIT;
G.
BARR AND ITS AFFILIATES WOULD EACH REPRESENT, WARRANT, COVENANT
AND AGREE THAT IN THE EVENT THAT CEPHALON PREVAILS AGAINST WATSON AND THAT
DECISION IS NO LONGER SUBJECT TO APPEAL, THEN (1) THE PROVISIONS OF
SECTION 1(B) WOULD BE NULL AND VOID, AND (2) SECTION 1(A)(II) WOULD BE LIMITED
SUCH THAT THE LICENSE EFFECTIVE DATE WOULD ONLY INCLUDE THE DATE OF A FINAL
COURT DECISION OF INVALIDITY OR UNENFORCEABILITY AND NOT A FINAL COURT DECISION
OF NON-INFRINGEMENT; AND
H.
BARR WOULD STIPULATE THAT THE BARR PRODUCTS INFRINGE THE PATENTS
IN SUIT AND THAT THE PATENTS IN SUIT ARE VALID AND ENFORCEABLE.
NOTWITHSTANDING
THE FOREGOING, NO ADMISSION MADE IN THIS SECTION 4(H) (INCLUDING THOSE
ADMISSIONS REGARDING VALIDITY AND ENFORCEABILITY) SHALL APPLY OUTSIDE THE UNITED
STATES OR TO ANY PRODUCT OTHER THAN FENTORA® OR THE BARR PRODUCTS.
5.
No Litigation Assistance.
Barr would agree not to assist,
coordinate with, or otherwise help any third party in prosecuting, defending or
settling litigation regarding the Patents
**
Portions of the Exhibit have been omitted and have been filed separately
pursuant to an application for confidential treatment filed with the Securities
and Exchange Commission pursuant to Rule 24b-2 under the Securities Exchange Act
of 1934, as amended.
6
in Suit in any context or forum in the Territory, including but not limited to
any court or USPTO proceeding (including reexamination proceedings), except as
required by law.
6.
Regulatory Review of Agreements.
The Parties would agree to
submit the Agreement, and as applicable, this Term Sheet, to the U.S. Federal
Trade Commission ("FTC") and the U.S. Department of Justice ("DOJ") as required
by statute. To the extent Barr may have additional obligations to file the
Agreement or Term Sheet with the offices of the States' Attorneys General
("SAGs"), Barr represents that it will timely do so.
The Parties would agree
that if after submitting the Agreement, the FTC or DOJ or SAGs raise