DATE ON WHICH SUCH INJUNCTIVE OR OTHER RELIEF MAY BE ENFORCED, OR OTHERWISE WHEN
CEPHALON PREVAILS IN THE ACTION DESCRIBED IN SUBSECTION (B) ABOVE, AND
(III) [**]. FOR PURPOSES OF CLARITY, NOTHING IN THIS AGREEMENT OR IN THE
PROVIGIL SETTLEMENT AGREEMENT SHALL OBLIGATE CEPHALON TO SEEK INJUNCTIVE OR
OTHER RELIEF TO STOP ANY OTHER MODAFINIL PARAGRAPH IV ANDA FILING ENTITY FROM
OFFERING TO SELL OR SELLING SUBJECT MODAFINIL PRODUCTS IN THE UNITED STATES.
2.4
NOTIFICATION TO FDA OF LICENSE. SUBJECT TO SECTION 2.3,
IMMEDIATELY UPON THE MODAFINIL LICENSE EFFECTIVE DATE, CEPHALON SHALL REASONABLY
COOPERATE WITH BARR IN NOTIFYING THE FDA THAT CEPHALON HAS GRANTED BARR THE
LICENSE SET FORTH IN SECTION 2.1, INCLUDING, BUT NOT LIMITED TO, BY FILING WITH
THE FDA SUCH DOCUMENTATION AS IS NECESSARY TO AFFIRM SUCH LICENSE.
2.5
INFRINGEMENT.
(A)
NOTICE REGARDING AND AUTHORITY TO TAKE ACTION AGAINST INFRINGERS.
BARR SHALL PROMPTLY NOTIFY CEPHALON OF ANY KNOWN INFRINGEMENT BY THIRD PARTIES
OF THE RIGHTS LICENSED TO BARR UNDER THIS AGREEMENT. IF ANY OF THE LISTED
PATENTS ARE INFRINGED, CEPHALON SHALL HAVE THE SOLE AND EXCLUSIVE RIGHT, BUT NOT
THE OBLIGATION, TO COMMENCE APPROPRIATE LEGAL ACTION TO ENJOIN SUCH INFRINGEMENT
AT ITS SOLE EXPENSE. BARR SHALL PROVIDE ITS COMPLETE COOPERATION TO CEPHALON, AT
CEPHALON'S EXPENSE. CEPHALON SHALL BE ENTITLED TO RETAIN ANY DAMAGES OR AWARDS
THAT MAY RESULT FROM ITS INITIATION OF ANY SUCH ACTION.
(B)
INFRINGEMENT OF THIRD PARTY PATENTS. EACH PARTY SHALL HAVE THE
RIGHT, BUT NOT THE OBLIGATION, TO DEFEND AGAINST A CLAIM ALLEGING INFRINGEMENT
BY ITS OWN PRODUCTS OF THE PATENTS AND PATENT APPLICATIONS OF THIRD PARTIES. FOR
PURPOSES OF CLARIFICATION, CEPHALON SHALL HAVE THE RIGHT, BUT NOT THE
OBLIGATION, TO DEFEND SUCH CLAIMS AGAINST PROVIGIL AND SUBJECT MODAFINIL PRODUCT
SOLD BY CEPHALON, AND BARR SHALL HAVE THE RIGHT, BUT NOT THE OBLIGATION, TO
**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
defend such claims against Barr Generic Modafinil Product sold by Barr (other
than Cephalon Supplied Modafinil Product where Cephalon elects to defend).
2.6
RESERVATION. CEPHALON RESERVES ALL RIGHTS NOT EXPRESSLY GRANTED
HEREUNDER, INCLUDING, WITHOUT LIMITATION, THE RIGHT TO ENFORCE THE LISTED
PATENTS AGAINST BARR PRIOR TO THE MODAFINIL LICENSE EFFECTIVE DATE (OR DURING
THE PERIOD OF ANY SUSPENSION PURSUANT TO SECTION 2.3) AND/OR AGAINST ANY OTHER
PERSON OR ENTITY AT ANY TIME. NOTWITHSTANDING ANYTHING TO THE CONTRARY HEREIN,
THE RIGHTS AND LICENSES GRANTED TO BARR HEREUNDER EXCLUDE, AND CEPHALON RETAINS,
ALL RIGHTS AND LICENSES WITH RESPECT TO CEPHALON'S SPARLON® AND NUVIGIL®
PRODUCTS AND ANY GENERIC VERSIONS THEREOF.
3.
ROYALTIES; ESCROW
3.1
ROYALTY.
(A)
FROM AND AFTER THE MODAFINIL LICENSE EFFECTIVE DATE, BARR SHALL
PAY CEPHALON A ROYALTY EQUAL TO [**] BARR GENERIC MODAFINIL PRODUCT SOLD BY BARR
OR ITS AFFILIATES IN THE UNITED STATES.
(B)
NOTWITHSTANDING SECTION 3.1(A), IN THE EVENT THAT A FINAL,
NON-APPEALABLE JUDGMENT IN