Common use of Outside CDP Field Clause in Contracts

Outside CDP Field. In addition to Section 4.2.1(A), and subject to the terms and conditions of this Agreement, including but not limited to Section 4.2.2 and Section 6 below, Toshiba’s and/or SanDisk’s license shall be extended at its respective discretion to activities outside the CDP Field, without right of sublicense, under this Section 4.2.1(B) for Non-CDP Products in fields to be agreed upon by Intermolecular Confidential Intermolecular and the applicable party in advance as set forth in this Section 4.2.1(B). On a case-by-case basis, Toshiba and SanDisk shall (i) notify Intermolecular in writing in advance for each instance where Toshiba or SanDisk, as applicable, desires to extend the use of the Technology licensed under Section 4.2.1(A) into a new field of use on [*] basis and the license under Section 4.2.1(A) will be extended to that field and apply to the specified Non-CDP Products unless Intermolecular notifies Toshiba or SanDisk promptly in writing that such proposed Non-CDP Product or field of use is subject to a pre-existing obligation of Intermolecular to grant [*] license to such Non-CDP Product or field to a Third Party; and (ii) obtain Intermolecular’s prior written approval to extend the use of the Technology licensed under Section 4.2.1(A) into a new field of use or new Non-CDP Product on [*] basis, as applicable. If extended, Toshiba and SanDisk shall be granted a worldwide, [*] non-transferable license under and to the applicable Intermolecular Background IP and to the Licensed IP Intermolecular contributes to the development efforts under the CDP to (i) use and modify such Technology; and (ii) use, make, have made, import, offer to sell, sell, lease, copy, modify, distribute, and otherwise dispose of, and exploit, the specified Non-CDP Products outside the CDP Field in the applicable field; provided however, that Non-CDP Product Fee [*] and [*] under this Section 4.2.1(B) shall be [*] percent ([*]%) of the [*] and [*] applicable to Section 4.2.1(A), and the fees payable to Intermolecular for Third Party CDP Products and Third Party Non-CDP Products for such extensions shall be subject to Section 5.10 below. Such [*], and [*] applicable to this Section 4.2.1(B) shall be separately accounted from [*], and [*] applicable within the CDP Field.

Outside CDP Field. In addition to Section 4.2.1(A), and subject to the terms and conditions of this Agreement, including but not limited to Section 4.2.2 and Section 6 below, Toshiba’s and/or SanDisk’s license shall be extended at its respective discretion to activities outside the CDP Field, without right of sublicense, under this Section 4.2.1(B) for Non-CDP Products in fields to be agreed upon by Intermolecular Confidential [*] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. Intermolecular and the applicable party in advance as set forth in this Section 4.2.1(B). On a case-by-case basis, Toshiba and SanDisk shall (i) notify Intermolecular in writing in advance for each instance where Toshiba or SanDisk, as applicable, desires to extend the use of the Technology licensed under Section 4.2.1(A) into a new field of use on [*] basis and the license under Section 4.2.1(A) will be extended to that field and apply to the specified Non-CDP Products unless Intermolecular notifies Toshiba or SanDisk promptly in writing that such proposed Non-CDP Product or field of use is subject to a pre-existing obligation of Intermolecular to grant [*] license to such Non-CDP Product or field to a Third Party; and (ii) obtain Intermolecular’s prior written approval to extend the use of the Technology licensed under Section 4.2.1(A) into a new field of use or new Non-CDP Product on [*] basis, as applicable. If extended, Toshiba and SanDisk shall be granted a worldwide, [*] non-transferable license under and to the applicable Intermolecular Background IP and to the Licensed IP Intermolecular contributes to the development efforts under the CDP to (i) use and modify such Technology; and (ii) use, make, have made, import, offer to sell, sell, lease, copy, modify, distribute, and otherwise dispose of, and exploit, the specified Non-CDP Products outside the CDP Field in the applicable field; provided however, that Non-CDP Product Fee [*] and [*] under this Section 4.2.1(B) shall be [*] percent ([*]%) of the [*] and [*] applicable to Section 4.2.1(A), and the fees payable to Intermolecular for Third Party CDP Products and Third Party Non-CDP Products for such extensions shall be subject to Section 5.10 below. Such [*], and [*] applicable to this Section 4.2.1(B) shall be separately accounted from [*], and [*] applicable within the CDP Field.

Outside CDP Field. In addition to Section 4.2.1(A), and subject to the terms and conditions of this Agreement, including but not limited to Section 4.2.2 and Section 6 below, Toshiba’s and/or SanDisk’s license shall be extended at its respective discretion to activities outside the CDP Field, without right of sublicense, under this Section 4.2.1(B) for Non-CDP Products in fields to be agreed upon by Intermolecular Confidential Intermolecular and the applicable party in advance as set forth in this Section 4.2.1(B). On a case-by-case basis, Toshiba and SanDisk shall (i) notify Intermolecular in writing in advance for each instance where Toshiba or SanDisk, as applicable, desires to extend the use of the Technology licensed under Section 4.2.1(A) into a new field of use on [*] basis and the license under Section 4.2.1(A) will be extended to that field and apply to the specified Non-CDP Products unless Intermolecular notifies Toshiba or SanDisk promptly in writing that such proposed Non-CDP Product or field of use is subject to a pre-existing obligation of Intermolecular to grant [*] license to such Non-CDP Product or field to a Third Party; and (ii) obtain Intermolecular’s prior written approval to extend the use of the Technology licensed under Section 4.2.1(A) into a new field of use or new Non-CDP Product on [*] basis, as applicable. If extended, Toshiba and SanDisk shall be granted a worldwide, [*] non-transferable license under and to the applicable Intermolecular Background IP and to the Licensed IP Intermolecular contributes to the development efforts under the CDP to (i) use and modify such Technology; and (ii) use, make, have made, import, offer to sell, sell, lease, copy, modify, distribute, and otherwise dispose of, and exploit, the specified Non-CDP Products outside the CDP Field in the applicable field; provided however, that Non-CDP Product Fee Intermolecular Confidential [*] and [*] under this Section 4.2.1(B) shall be [*] percent ([*]%) of the [*] and [*] applicable to Section 4.2.1(A), and the fees payable to Intermolecular for Third Party CDP Products and Third Party Non-CDP Products for such extensions shall be subject to Section 5.10 below. Such [*], and [*] applicable to this Section 4.2.1(B) shall be separately accounted from [*], and [*] applicable within the CDP Field.