THEN SYNTA MAY,
IN ITS DISCRETION, PROVIDE ROCHE WITH NOTICE OF SYNTA'S INTENT TO INITIATE A
SUIT OR TAKE OTHER APPROPRIATE ACTION.
IF SYNTA PROVIDES SUCH NOTICE AND ROCHE
DOES NOT INITIATE A SUIT OR TAKE SUCH OTHER APPROPRIATE ACTION WITHIN [***]
([***]) [***] ([***] ([***]) [***] IN THE CASE OF A PARAGRAPH IV CERTIFICATION)
AFTER RECEIPT OF SUCH NOTICE FROM SYNTA, THEN SYNTA SHALL HAVE THE RIGHT TO
INITIATE A SUIT OR TAKE OTHER APPROPRIATE ACTION THAT IT BELIEVES IS REASONABLY
REQUIRED TO PROTECT THE ROCHE INTELLECTUAL PROPERTY SOLELY OWNED BY ROCHE;
PROVIDED, HOWEVER, THAT SYNTA SHALL NOT INITIATE A LAWSUIT OR TAKE OTHER
ENFORCEMENT ACTION WITHOUT FIRST CONSULTING WITH ROCHE.
ANY SUIT BY SYNTA SHALL
BE EITHER IN THE NAME OF SYNTA OR ITS AFFILIATE, THE NAME OF ROCHE OR ITS
AFFILIATE, OR JOINTLY BY ROCHE, SYNTA AND THEIR RESPECTIVE AFFILIATES, AS MAY BE
REQUIRED BY APPLICABLE LAW IF THE RELEVANT COURT WOULD OTHERWISE LACK
JURISDICTION IF SUCH PARTY OR ITS AFFILIATE WERE ABSENT FROM SUCH SUIT.
FOR
THIS PURPOSE, ROCHE AGREES TO BE JOINED AS A PARTY TO THE SUIT AND SHALL EXECUTE
SUCH LEGAL PAPERS AND COOPERATE IN THE PROSECUTION
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934,
as amended.
41
OF SUCH SUIT AS MAY BE REASONABLY REQUESTED BY SYNTA, PROVIDED THAT SYNTA SHALL
PROMPTLY REIMBURSE ALL OUT-OF-POCKET EXPENSES (INCLUDING REASONABLE ATTORNEYS'
FEES AND EXPENSES) ACTUALLY INCURRED BY ROCHE IN CONNECTION WITH SUCH
COOPERATION.
8.3.4.
RIGHT TO ENFORCE THE JOINT PATENT RIGHTS AND JOINT
KNOW-HOW.
RESPONSIBILITY FOR PROTECTING (I.E., PREVENTING OR ABATING ACTUAL OR
THREATENED INFRINGEMENT OR MISAPPROPRIATION OF) OR OTHERWISE ENFORCING THE JOINT
PATENT RIGHTS AND THE JOINT KNOW-HOW SHALL BE DETERMINED IN THE SAME MANNER AS
THE SYNTA PATENT RIGHTS.
THE ENFORCING PARTY SHALL KEEP THE OTHER PARTY
INFORMED OF THE STATUS OF ALL ENFORCEMENT ACTIVITIES, AND SHALL CONSIDER IN GOOD
FAITH ALL COMMENTS OF THE OTHER PARTY REGARDING ANY ASPECT OF SUCH ENFORCEMENT.
THE ENFORCING PARTY SHALL NOT DISCONTINUE ENFORCEMENT OF JOINT PATENT RIGHT OR
JOINT KNOW-HOW WITHOUT PROVIDING PRIOR WRITTEN NOTICE TO, AND CONSULTATION WITH,
THE NON-ENFORCING PARTY.
8.3.5.
CONDUCT OF CERTAIN ACTIONS; COSTS.
THE PARTY
INITIATING SUIT SHALL HAVE THE SOLE AND EXCLUSIVE RIGHT TO SELECT COUNSEL FOR
ANY SUIT INITIATED BY IT PURSUANT TO SECTION 8.3.2, 8.3.3 OR 8.3.4.
THE
INITIATING PARTY SHALL ASSUME AND PAY ALL OF ITS OWN OUT-OF-POCKET COSTS
INCURRED IN CONNECTION WITH ANY LITIGATION OR PROCEEDINGS INITIATED BY IT
PURSUANT TO SECTION 8.3.2, 8.3.3 OR 8.3.4, INCLUDING THE FEES AND EXPENSES OF
THE LEGAL COUNSEL SELECTED BY IT.
THE OTHER PARTY SHALL HAVE THE RIGHT TO
PARTICIPATE AND BE REPRESENTED IN ANY SUCH SUIT BY THE INITIATING PARTY'S
COUNSEL, OR BY ITS OWN LEGAL COUNSEL AT ITS OWN EXPENSE.
8.3.6.
RECOVERIES.
IF ROCHE ASSUMES CONTROL OVER ANY SUIT
IN RESPONSE TO ANY INFRINGEMENT CLAIM, SYNTA SHALL BE