MISUSE
OF VERTEX KNOW-HOW OR JANSSEN KNOW-HOW, IN THE TERRITORY. VERTEX, UPON NOTICE TO
JANSSEN, SHALL HAVE THE FIRST RIGHT TO INITIATE AND PROSECUTE ANY SUCH LEGAL
ACTION IN THE NAME OF VERTEX AND JANSSEN, OR TO CONTROL THE DEFENSE OF ANY
DECLARATORY JUDGMENT ACTION, RELATING TO VERTEX PATENT RIGHTS, JOINT PATENT
RIGHTS OR VERTEX KNOW-HOW IN THE TERRITORY. JANSSEN, UPON NOTICE TO VERTEX,
SHALL HAVE THE FIRST RIGHT TO INITIATE AND PROSECUTE ANY SUCH LEGAL ACTION IN
THE NAME OF JANSSEN AND VERTEX, OR TO CONTROL THE DEFENSE OF ANY DECLARATORY
JUDGMENT ACTION, RELATING TO JANSSEN PATENT RIGHTS OR JANSSEN KNOW-HOW IN THE
TERRITORY. [***]
EACH PARTY SHALL PROMPTLY INFORM THE OTHER PARTY IF IT ELECTS
NOT TO EXERCISE ITS FIRST RIGHT AS DESCRIBED ABOVE AND THE OTHER PARTY SHALL
THEREAFTER HAVE THE RIGHT TO EITHER INITIATE AND PROSECUTE SUCH ACTION OR TO
CONTROL THE DEFENSE OF SUCH DECLARATORY JUDGMENT ACTION IN ITS NAME OF AND, IF
NECESSARY, THE NAME OF THE FIRST PARTY. EACH PARTY SHALL HAVE THE RIGHT TO BE
REPRESENTED BY COUNSEL OF ITS OWN CHOICE [***]
10.5.2
FOR ANY ACTION TO TERMINATE ANY INFRINGEMENT OF VERTEX PATENT RIGHTS,
JANSSEN PATENT RIGHTS OR JOINT PATENT RIGHTS OR ANY MISAPPROPRIATION OR MISUSE
OF VERTEX KNOW-HOW OR JANSSEN KNOW-HOW, AS PERMITTED IN ACCORDANCE WITH SECTION
10.5.1, IN THE EVENT THAT THE PARTY INITIATING THE ACTION IS UNABLE TO INITIATE
OR PROSECUTE SUCH ACTION SOLELY IN ITS OWN NAME, THE OTHER PARTY WILL JOIN SUCH
ACTION VOLUNTARILY AND WILL EXECUTE AND CAUSE ITS AFFILIATES TO EXECUTE ALL
DOCUMENTS NECESSARY FOR THE FIRST PARTY TO INITIATE LITIGATION TO PROSECUTE AND
MAINTAIN SUCH ACTION. IN CONNECTION WITH ANY SUCH ACTION, JANSSEN AND VERTEX
WILL COOPERATE FULLY AND WILL PROVIDE EACH OTHER WITH ANY INFORMATION OR
ASSISTANCE THAT EITHER MAY REASONABLY REQUEST. EACH PARTY SHALL KEEP THE OTHER
INFORMED OF DEVELOPMENTS IN ANY SUCH ACTION OR PROCEEDING, INCLUDING, TO THE
EXTENT PERMISSIBLE BY LAW, THE CONSULTATION AND APPROVAL OF ANY SETTLEMENT
NEGOTIATIONS AND THE TERMS OF ANY OFFER RELATED THERETO.
10.5.3
ANY RECOVERY OBTAINED BY EITHER OR BOTH JANSSEN AND VERTEX IN
CONNECTION WITH OR AS A RESULT OF ANY ACTION CONTEMPLATED BY THIS SECTION,
WHETHER BY SETTLEMENT OR OTHERWISE, SHALL BE SHARED IN ORDER AS FOLLOWS:
[***]
[***]
Information redacted pursuant to a confidential treatment request.
An
unredacted version of this exhibit has been filed separately with the
Commission.
36
[***]
10.5.4
VERTEX SHALL INFORM JANSSEN OF ANY CERTIFICATION REGARDING ANY VERTEX
PATENT RIGHTS IT HAS RECEIVED PURSUANT TO EITHER 21 U.S.C. §§355(B)(2)(A)(IV) OR
(J)(2)(A)(VII)(IV) OR ITS SUCCESSOR PROVISIONS OR ANY SIMILAR PROVISIONS IN A
COUNTRY IN THE TERRITORY AND SHALL PROVIDE JANSSEN WITH A COPY OF SUCH
CERTIFICATION [***] VERTEX'S AND JANSSEN'S RIGHTS WITH RESPECT TO THE INITIATION
AND PROSECUTION OF ANY LEGAL ACTION AS A RESULT OF SUCH CERTIFICATION OR ANY
RECOVERY OBTAINED AS A RESULT OF SUCH LEGAL ACTION SHALL BE AS DEFINED IN
SUBSECTIONS 10.5.1 THROUGH 10.5.4; PROVIDED, HOWEVER, THAT VERTEX SHALL HAVE THE
FIRST RIGHT