Common use of Anti-Stack Clause in Contracts

Anti-Stack. If Pfizer (i) reasonably determines in good faith that, in order to avoid infringement of any patent not licensed hereunder, it is reasonably necessary to obtain a license from a Third Party in order to make, use, sell, offer for sale or import a Pfizer Product in a country in the Territory and to pay a royalty under such license (including in connection with settlement of a patent infringement claim), or (ii) shall be subject to a final court or other binding order or ruling requiring the payment of a royalty or other payment to a Third Party patent holder in respect of sales of any Pfizer Product in a country in the Territory, then the amount of royalty payments payable by Pfizer to Incyte with respect to Net Sales for such Pfizer Product in such country shall be reduced by *** percent (***%) of *** and (y) *** (the amount of such reduction being hereinafter referred to as, the “Anti-Stack Amount”); provided that in no event shall the royalties payable by Pfizer to Incyte under this Agreement be reduced to less than *** percent (***%) of the amounts that would be otherwise payable by Pfizer to Incyte at such time under Section 8.4.; provided, further, that if the Anti-Stack Amount is more than *** percent (***%) of the amount payable by Pfizer to Incyte under Section 8.4 in any given period, the Parties agree that the balance of any Anti-Stack Amount that has not been deducted from the royalties payable by Pfizer to Incyte under Section 8.4 due to the first proviso in this Section 9.6(a) (the “Deferred Amount”) shall be carried forward to the succeeding payment period and deducted from amounts payable by Pfizer to Incyte under Section 8.4 during such succeeding payment period, and, following this, if all or any portion of the Deferred Amount due in such succeeding payment period would be more than *** percent (***%) of the amount payable by Pfizer to Incyte under Section 8.4 in such succeeding payment period, then as much of the Deferred Amount shall be payable as soon as possible thereafter after giving effect to the deferral provisions contained in this Section 9.6(a) and continuing to carry forward the Deferred Amount to the next succeeding payment period until the Deferred Amount equals zero. Effective immediately after the expiration of the Term of this Agreement, all Deferred Amounts shall be deemed to equal zero. Pfizer will notify Incyte prior to entering into any license with a Third Party referred to in clause (i) of this Section 9.6(a) and, to the extent legally possible, shall give Incyte an opportunity to consult with Pfizer regarding such license before entering into a binding agreement with any such Third Party; provided that Pfizer’s decision with respect to all aspects of any such Third Party license shall be final.

Anti-Stack. If Pfizer Allergan shall have the right to reduce any payments otherwise payable to Exicure under this Article 6 (i) reasonably determines in good faith that, in order to avoid infringement but excluding for the avoidance of doubt any patent not licensed hereunder, it is reasonably necessary to obtain a license from a Third Party in order to make, use, sell, offer for sale or import a Pfizer Product in a country in the Territory and to pay a royalty payments already made under such license (including in connection with settlement of a patent infringement claimthis Article 6), or (ii) shall be subject to a final court or other binding order or ruling requiring following the payment application of a royalty or other payment to a Third Party patent holder in respect of sales of any Pfizer Product in a country in the Territoryall applicable reductions under Section 6.7.1 and Section 6.7.2, then the amount of royalty payments payable if applicable, by Pfizer to Incyte with respect to Net Sales for such Pfizer Product in such country shall be reduced by ***** percent (***%) of *** and of any amounts, including upfront payments, milestones or royalties, that are paid by Allergan to any Third Party in consideration for a license or other rights under any Third Party IP in order to Exploit any Licensed Product (y) *** (the amount of such reduction being hereinafter referred to as, the “Anti-Stack Amount”excluding any Other API); provided provided, however, that in no event shall the royalties may any payment otherwise payable by Pfizer to Incyte Exicure under this Agreement Article 6 be reduced to less as a result of the application of this reduction by more than ***** percent (***%) **. In the event that Allergan is not able to deduct the full amount of the permitted deduction from the amount due to Exicure as a result of the proviso set forth in the preceding sentence, Allergan shall be entitled to deduct any undeducted excess amount from subsequent amounts that would be owed to Exicure (subject in each case to the proviso set forth in the preceding sentence). Notwithstanding anything to the contrary in this Section 6.8, if Allergan obtains any rights to Blocking Platform IP in accordance with Section 3.7.4, then Allergan shall have the right to reduce any payments otherwise payable by Pfizer to Incyte at such time Exicure under this Article 6, following the application of all applicable reductions under Section 8.4.; provided6.7.1 and Section 6.7.2, furtherif applicable, that if the Anti-Stack Amount is more than by ***** percent (***%) of the amount payable by Pfizer to Incyte under Section 8.4 in any given period, the Parties agree that the balance ** of any Anti-Stack Amount amounts, including upfront payments, milestones or royalties, that has not been deducted from the royalties payable are paid by Pfizer Allergan to Incyte any Third Party in consideration for a license or other rights under Section 8.4 due to the first proviso in this Section 9.6(a) (the “Deferred Amount”) shall be carried forward to the succeeding payment period and deducted from amounts payable by Pfizer to Incyte under Section 8.4 during such succeeding payment periodBlocking Platform IP, and, following thisfor clarity, if all or such deduction shall not be subject to any portion payment floor (and shall be applied cumulatively with any deductions under the first sentence of this Section 6.8). In the event that Allergan is not able to deduct the full amount of the Deferred Amount due in such succeeding payment period would be more than *** percent permitted deduction for payments to Third THE COMPANY HAS REQUESTED AN ORDER FROM THE SECURITIES AND EXCHANGE COMMISSION (THE “COMMISSION”) PURSUANT TO RULE 406 UNDER THE SECURITIES ACT OF 1933, AS AMENDED, GRANTING CONFIDENTIAL TREATMENT TO SELECTED PORTIONS. ACCORDINGLY, THE CONFIDENTIAL PORTIONS HAVE BEEN OMITTED FROM THIS EXHIBIT, AND HAVE BEEN FILED SEPARATELY WITH THE COMMISSION. OMITTED PORTIONS ARE INDICATED IN THIS EXHIBIT WITH “***%) of **”. Parties from the amount payable by Pfizer due to Incyte under Section 8.4 in such succeeding payment periodExicure, then as much of the Deferred Amount Allergan shall be payable as soon as possible thereafter after giving effect entitled to the deferral provisions contained in this Section 9.6(a) and continuing deduct any undeducted excess amount from subsequent amounts owed to carry forward the Deferred Amount to the next succeeding payment period until the Deferred Amount equals zero. Effective immediately after the expiration of the Term of this Agreement, all Deferred Amounts shall be deemed to equal zero. Pfizer will notify Incyte prior to entering into any license with a Third Party referred to in clause (i) of this Section 9.6(a) and, to the extent legally possible, shall give Incyte an opportunity to consult with Pfizer regarding such license before entering into a binding agreement with any such Third Party; provided that Pfizer’s decision with respect to all aspects of any such Third Party license shall be finalExicure.