Common use of Assigned IP and Licensed IP Clause in Contracts

Assigned IP and Licensed IP. Except as disclosed on Schedule 6(a) or in Section 11(a), Hitachi hereby represents and warrants that: (i) Hitachi owns or has the right to use and sublicense the Licensed IP, and Hitachi has the rights to manufacture and/or sell products including the Licensed IP and to license such rights to Opto-Device and has timely filed and prosecuted patent applications for the Assigned IP and Licensed IP in accordance with Hitachi’s standard business practices; (ii) Except as provided in Exhibit C and Section 11(a), no claims, which could reasonably be expected to have a Material Adverse Effect, are pending in writing or, to the best knowledge of Hitachi, threatened in writing against Hitachi as of the Closing Date by any Person with respect to the material patents listed on Exhibit A; (iii) To Hitachi’s Knowledge, there has been no event or circumstance relating to the Business that poses an unreasonable risk of infringing a patent. Except with respect to the claims referenced in Section 11(a) of this IP License Agreement, a list of each warning letter that has been addressed to Hitachi products made or sold as part of the operation of the Business, and a list of all attorney opinions that have been obtained regarding non-infringement of patents relating to the Business, is provided in Exhibit C. A copy of each such letter and opinion shall be provided to Opto-Device, to the extent that such can be done without waiving any attorney-client privilege; (iv) As of the Closing, Hitachi shall have assigned under the terms and conditions of the Business Transfer Agreement or licensed under the terms and conditions hereof to Opto-Device the Intellectual Property necessary or reasonably required for the purpose of the operation of the Business as of the Closing Date; and (v) Hitachi is in compliance with the terms and conditions related to Intellectual Property contained in the Stock Purchase Agreement.

Assigned IP and Licensed IP. Except as disclosed on Schedule 6(a) or in Section 11(a), Hitachi hereby represents and warrants that: (i) Hitachi owns or has the right to use and sublicense the Licensed IP, and Hitachi has the rights to manufacture and/or sell products including the Licensed IP and to license such rights to Opto-Device OpNext Japan and has timely filed and prosecuted patent applications for the Assigned IP and Licensed IP in accordance with Hitachi’s standard business practices; (ii) Except as provided in Exhibit C and Section 11(a), no claims, which could reasonably be expected to have a Material Adverse Effect, are pending in writing or, to the best knowledge of Hitachi, threatened in writing against Hitachi as of the Second Closing Date by any Person with respect to the material patents listed on Exhibit A; (iii) To Hitachi’s Knowledge, there has been no event or circumstance relating to the Business that poses an unreasonable risk of infringing a patent. Except with respect to the claims referenced in Section 11(a) of this IP License Agreement, a list of each warning letter that has been addressed to Hitachi products made or sold as part of the operation of the Business, and a list of all attorney opinions that have been obtained regarding non-infringement of patents relating to the Business, is provided in Exhibit C. A copy of each such letter and opinion shall be provided to Opto-DeviceOpNext Japan, to the extent that such can be done without waiving any attorney-client privilege; (iv) As of the Second Closing, Hitachi shall have assigned under the terms and conditions of the Business Transfer Agreement or licensed under the terms and conditions hereof to Opto-Device OpNext Japan the Intellectual Property necessary or reasonably required for the purpose of the operation of the Business as of the Second Closing Date; and (v) Hitachi is in compliance with the terms and conditions related to Intellectual Property contained in the Stock Purchase Contribution Agreement.