Common use of Future Third Party License Agreements Clause in Contracts

Future Third Party License Agreements. Hitachi shall use Commercially Reasonable Efforts to obtain the right to sublicense rights to Opto-Device under Future Third Party License Agreements, which may be entered into by Hitachi after the Closing Date, subject to the condition that Opto-Device abides by the terms and conditions of such Future Third Party License Agreements. The rights referred to above will be granted to Opto-Device on a fully paid-up, non-exclusive basis, except if royalty payments are necessary based specifically on what is being done by Opto-Device, then Opto-Device shall be liable for such royalty payments. Hitachi shall, upon Opto-Device’s written request, sublicense rights under Future Third Party License Agreements to OpNext and OpNext’s and Opto-Device’s Wholly-Owned Subsidiaries provided: (i) Opto-Device obtains Hitachi’s reasonable prior written consent; (ii) Hitachi can make available such license rights to OpNext and OpNext’s and Opto-Device’s Wholly-Owned Subsidiaries; and (iii) OpNext and OpNext’s and Opto-Device’s Wholly-Owned Subsidiaries abide by the terms and conditions of such Future Third Party License Agreements. Notwithstanding the foregoing, if such sublicense invokes any Japanese tax issues then Hitachi shall not be obliged to grant a sublicense to OpNext and OpNext’s and Opto-Device’s Wholly-Owned Subsidiaries without entering into a separate agreement with OpNext and such Wholly-Owned Subsidiaries under reasonable terms and conditions to be agreed upon between the relevant parties to address such tax issues. The sublicense provided in this subsection 5(c) is subject to the termination provisions of the Future Third Party License Agreements. The rights referred to above will be provided to OpNext and such Wholly-Owned Subsidiaries on a fully paid-up, non-exclusive basis, except if royalty payments are necessary based specifically on what is being done by OpNext and such Wholly-Owned Subsidiaries, then Opto-Device shall be liable for or shall cause OpNext and such Wholly-Owned Subsidiaries to be liable for such royalty payments. Hitachi shall provide an analysis of its Existing Third Party License Agreements that are cross-licenses with major competitors of Opto-Device’s products sold as of the Closing Date, including whether Opto-Device is covered by such cross-license agreement and whether Opto-Device has the option to be covered, or to not be covered, by such cross-license agreement. In addition, within one hundred and eighty (180) days after the Closing Date, Hitachi shall cooperate with Opto-Device in creating a list of all Existing Third Party License Agreements that are material to the Business. Such a list may be amended from time to time to include Future Third Party License Agreements that may be material to the Business, as determined by Hitachi and Opto-Device after reviewing the rights available under such Future Third Party License Agreements. Upon request from Opto-Device, Hitachi shall consult with and provide reasonable assistance to Opto-Device employees with respect to the foregoing. Within one hundred and eighty (180) days after the Closing Date, Hitachi and Opto-Device agree to negotiate in good faith and on a reasonable basis to create a mechanism whereby: (i) Hitachi can, to the extent it becomes aware of or is notified about termination, renegotiation or any other material change under an Existing Third Party License Agreements or Future Third Party License Agreements that Opto-Device includes in its list of material licenses, communicate to Opto-Device within a reasonable period of time information relating to such termination, renegotiation or material change to the rights prior to such events occurring; and (ii) Opto-Device can communicate with Hitachi prior to the termination or material change to the rights available to be sublicensed by Hitachi to Opto-Device under the Existing Third Party License Agreements and under any Future Third Party License Agreements. Both parties agree to cooperate with each other to minimize any impact of such termination and renegotiation events.

Future Third Party License Agreements. Hitachi shall use Commercially Reasonable Efforts to obtain the right to sublicense rights to Opto-Device OpNext Japan under Future Third Party License Agreements, which may be entered into by Hitachi after the Second Closing Date, subject to the condition that Opto-Device OpNext Japan abides by the terms and conditions of such Future Third Party License Agreements. The rights referred to above will be granted provided to Opto-Device OpNext Japan on a fully paid-up, non-exclusive basis, except if royalty payments are necessary based specifically on what is being done by Opto-DeviceOpNext Japan, then Opto-Device OpNext Japan shall be liable for such royalty payments. Hitachi shall, upon Opto-DeviceOpNext Japan’s written request, sublicense rights under Future Third Party License Agreements to OpNext OpNext, Inc. and OpNext, Inc.’s and Opto-DeviceOpNext Japan’s Wholly-Owned Subsidiaries provided: (i) Opto-Device OpNext Japan obtains Hitachi’s reasonable prior written consent; (ii) Hitachi can make available such license rights to OpNext OpNext, Inc. and OpNext, Inc.’s and Opto-DeviceOpNext Japan’s Wholly-Owned Subsidiaries; and (iii) OpNext OpNext, Inc. and OpNext, Inc.’s and Opto-DeviceOpNext Japan’s Wholly-Owned Subsidiaries abide by the terms and conditions of such Future Third Party License Agreements. Notwithstanding the foregoing, if such sublicense invokes any Japanese tax issues then Hitachi shall not be obliged to grant a sublicense to OpNext OpNext, Inc. and OpNext, Inc.’s and Opto-DeviceOpNext Japan’s Wholly-Owned Subsidiaries without entering into a separate agreement with OpNext OpNext, Inc. and such Wholly-Owned Subsidiaries under reasonable terms and conditions to be agreed upon between the relevant parties to address such tax issues. The sublicense provided in this subsection 5(c) is subject to the termination provisions of the Future Third Party License Agreements. The rights referred to above will be provided to OpNext OpNext, Inc. and such Wholly-Owned Subsidiaries on a fully paid-up, non-exclusive basis, except if royalty payments are necessary based specifically on what is being done by OpNext OpNext, Inc. and such Wholly-Owned Subsidiaries, then Opto-Device OpNext Japan shall be liable for or shall cause OpNext OpNext, Inc. and such Wholly-Owned Subsidiaries to be liable for such royalty payments. The sublicense provided in this subsection 5(c) is subject to the termination provisions of the Future Third Party License Agreements. Hitachi shall provide an analysis of its Existing Third Party License Agreements that are cross-licenses with major competitors of Opto-DeviceOpNext Japan’s products sold as of the Second Closing Date, including whether Opto-Device OpNext Japan is covered by such cross-license agreement and whether Opto-Device OpNext Japan has the option to be covered, or to not be covered, by such cross-license agreement. In addition, within one hundred and eighty (180) days after the Second Closing Date, Hitachi shall cooperate with Opto-Device OpNext Japan in creating a list of all Existing Third Party License Agreements that are material to the Business. Such a list may be amended from time to time to include Future Third Party License Agreements that may be material to the Business, as determined by Hitachi and Opto-Device OpNext Japan after reviewing the rights available under such Future Third Party License Agreements. Upon request from Opto-DeviceOpNext Japan, Hitachi shall consult with and provide reasonable assistance to Opto-Device OpNext Japan employees with respect to the foregoing. Within one hundred and eighty (180) days after the Second Closing Date, Hitachi and Opto-Device OpNext Japan agree to negotiate in good faith and on a reasonable basis to create a mechanism whereby: (i) Hitachi can, to the extent it becomes aware of or is notified about termination, renegotiation or any other material change under an Existing Third Party License Agreements or Future Third Party License Agreements that Opto-Device OpNext Japan includes in its list of material licenses, communicate to Opto-Device OpNext Japan within a reasonable period of time information relating to such termination, renegotiation or material change to the rights prior to such events occurring; and (ii) Opto-Device OpNext Japan can communicate with Hitachi prior to the termination or material change to the rights available to be sublicensed by Hitachi to Opto-Device OpNext Japan under the Existing Third Party License Agreements and under any Future Third Party License Agreements. Both parties agree to cooperate with each other to minimize any impact of such termination and renegotiation events.