Exhibit 10.18

	
	Execution Version
AMENDED AND RESTATED SIEMENS INDUSTRY LICENSE AGREEMENT
This AMENDED  AND  RESTATED SIEMENS  INDUSTRY  LICENSE
AGREEMENT (this “Agreement”), dated as of June 9, 2021 (the “Effective Date”), is entered
into  by  and  between  Fluence  Energy,  LLC,  a  limited  liability  company  duly  organized  and
validly  existing  under  the  laws  of  the  State  of  Delaware  (the “Company”), and  Siemens
Industry, Inc., a corporation duly organized and  validly  existing under the laws of the State of
Delaware (“Siemens”). The Company and Siemens are each referred to herein as a “Party” and
are collectively referred to herein as the “Parties.”
PRELIMINARY STATEMENTS:
1. Pursuant to  that  certain Equity Contribution Agreement between AES Grid
Stability LLC (“AES”) and Siemens dated July 9, 2017 (the “ECA”), Siemens agreed to contribute
certain Siemens Intellectual Property to the Company and to grant a license to the Company to use
certain other Siemens Intellectual Property (excluding the Siemens Trademarks and Branding,
which is licensed to the Company pursuant to the Siemens Company Name Affix and Trademark
License Agreement); and
2. The Parties entered into the Siemens License Agreement dated as of July 9, 2017
(the “Original Agreement”), pursuant to  which the  Company, in  accordance with  the  ECA,
acquired the right to  license in  certain Siemens Intellectual Property (excluding the  Siemens
Trademarks and Branding, which will be licensed to  the  Company pursuant to  the  Siemens
Company Name Affix and Trademark License Agreement) on  the  terms and subject to  the
conditions set forth in the Original Agreement and the ECA.
3. Between the execution date of the Subscription Agreement (as defined below) and
the Effective Date, for the purposes of evaluating the credit to the Capital Account under Article
3.4 (b) of the Amended and Restated LLC Agreement, the Company has used reasonable efforts
to notify Siemens of any Additionally Licensed Patents and Non-Asserted Siemens IP that the
Company has identified as being used by it prior to the Effective Date by sending a written notice
to Siemens identifying the respective Additionally Licensed Patents and Non-Asserted Siemens
IP as well as the products and services of the Company in which these are used and providing
further information reasonably required to  establish the  initial Gross Asset Value of  such
Additionally Licensed Patents and Non-Asserted Siemens IP, provided, however, that  (i) the
Additionally Licensed Patents and the Non-Asserted Siemens IP are not required to be identified
in order for them to be licensed under Sections 2.1(a) and 2.2(a) of this Agreement and be subject
to  the  non-assertion covenants under Sections 2.1(d) and 2.2(e), as applicable, and (ii) the
identification of, or the failure to identify, any Additionally Licensed Patents or Non-Asserted
Siemens IP do not limit in any way the scope of Additionally Licensed Patents or Non-Asserted
Siemens IP or the scope of the Licenses under Sections 2.1(a) and 2.2(a) and the non-assertion
covenants under Sections 2.1(d) and 2.2(e) of this Agreement.
4. The Parties desire to amend and restate the Original Agreement as provided herein
in connection with the transactions contemplated under that certain Subscription Agreement,
dated December 27, 2020, between the Company and QIA Florence Holding LLC (“the
Subscription Agreement”). 





	
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NOW,  THEREFORE,  in  consideration  of  the  mutual  agreements,  covenants,
representations  and  warranties  set  forth  herein,  and  intending  to  be  legally  bound  hereby,  the
Parties agree as follows:
ARTICLE ONE
DEFINITIONS AND PRINCIPLES OF INTERPRETATION
1.1 Definitions.  Capitalized terms used but not otherwise defined herein shall have the
meanings assigned to them in the ECA and in the Amended and Restated LLC Agreement, dated
January 01, 2018 “The Amended and Restated LLC Agreement”.  Notwithstanding the foregoing,
terms in capital letters used in this Agreement shall have the meaning defined in this Article 1 of
this Agreement.
(a) “Additionally Licensed Patents” shall  mean  Patents  owned  by  Siemens
Group (where those Patents have a priority date  prior to or on the Effective Date), other than the
Contributed Siemens  IP and Licensed Siemens  Intellectual Property, to the extent used by the
Company for the  Business Purpose prior to or on the Effective Date.
(b) “Back-License”  shall  have  the  meaning  set  forth  in  Section 3.1  of  this
Agreement.
(c) “Business” shall mean the battery-based energy storage business conducted
by  the  Siemens  Energy  Management  Division  prior  to  the  Closing  Date,  encompassing
development, marketing, and sale of Integrated Solutions for Applications, as such terms shall be
defined in the Amended and Restated LLC Agreement.
(d) “Business Purpose”  means the purpose of the Company which shall be to
develop and globally market and sell stationary energy storage systems and solutions based on
battery  technology  for  utility-scale  and  commercial  industrial  applications and  residential
applications together with such other lawful activities as a limited liability company may undertake
in  connection  therewith.  The  Business  Purpose  includes  energy  storage  mediums  such  as
supercapacitors, primary batteries, and secondary batteries such as lithium, Li-Ion, flow batteries,
sodium-ion, and metal-air but excludes developing or producing the technology for the storage
medium itself (e.g., battery chemistry) and inverters.
(e) “Closing Date” means January 01, 2018.
(f) “Contributed Siemens Intellectual Property (“IP”)” means the Siemens
Software or Know-How contributed under the ECA and Siemens Contribution Agreement that is
transferred to the Company on the Closing Date or other Siemens  IP that is transferred to the
Company at a later date through the function of Section 4.7 and/or Section 4.8.
(g) “Company Roadmap” means a document mutually agreed by Siemens and
AES prior to or on the Closing Date that contains technical details of R&D work to be undertaken
by the Company after the Closing Date and will be included in Exhibit B, as amended upon mutual
written agreement of the Parties up to and until the Closing Date. 





	
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(h) “Derived  IP”  shall  have  the  meaning  set  forth  in  Section 3.2  of  this
Agreement.
(i) “Exclusive  Activities”  shall  have  the  meaning  ascribed  to  them  in  the
Amended and Restated LLC Agreement.
(j) “Know-How” means all proprietary and confidential information and data
(irrespective as to whether such information or data is available by way of documentation, orally
or in electronic format, or protected by copyrights), including business and trade secrets, technical
and  business  information  and  data,  know-how  and  similar  proprietary  rights  in  confidential
information  and  processes,  discoveries,  analytic  models,  improvements,  techniques,  devices,
methods, patterns, formulations and specifications, all to the extent that such information and data
are proprietary and confidential and neither Software nor a Patent.
(k) “Licensed Object Code Software” means Software in object code which is
licensed to Company, if any, to the extent that the Company can prove Use or Preparatory Use
with respect to such Software.
(l) “Licensed  Siemens  Intellectual  Property  (“IP”)”  means  all  Patents  and
Know-How owned by  Siemens (where those Patents have a priority date prior to or on the Closing
Date and where that Know-How was developed or conceived prior to or on the Closing Date),
other  than  the  Contributed  Siemens  IP,  to  the  extent (1)  used  by  the  Company for  Exclusive
Activities or Non-Exclusive Activities for the  Business Purpose or (2) that the Company can prove
Preparatory Use with respect to such IP.  With respect to the foregoing clause 2 of this definition,
when Intellectual Property is identified pre- or post-closing that the Company believes falls under
this definition and requires proof of Preparatory Use, the Company will identify such Intellectual
Property and the Preparatory Use of such Intellectual Property to the Siemens SI DS FG Head,
who  will  coordinate  with  the  relevant  Siemens  department(s)  in  good  faith  to  determine  in  a
commercially  reasonable  manner  if  the  Company  has  satisfied  its  burden  of  proof  regarding
Preparatory Use and, if this is the case, Siemens will, within a reasonable time frame, acknowledge
in writing that such Intellectual Property is Licensed Siemens IP and will include such Licensed
Siemens IP on the Third List for Dual Use IP.
(m) “Licensed SieStorage Know-How” means all SieStorage KnowHow and
SIMATIC  configuration  relating  to  Power  Quality  (MS  UPS)  and  Microgrid  and  Islands
applications, as shall be defined in the Amended and Restated LLC Agreement.  For avoidance of
doubt, Licensed SieStorage Know-How does not include the Contributed Siemens IP.
(n) “Licenses” means, collectively, the licenses granted to the Company under
Sections 2.1 and 2.2.
(o) “Listed Dual Use Intellectual  Property (“IP”)” means  IP owned by the
Siemens Group which is listed in Exhibit D, as amended upon mutual written agreement of the
Parties up to and until the Closing Date.  It comprises IP that the Company requires to conduct its
business in the Exclusive Activities and for any such Listed Dual Use IP, the Company is not
required to prove Use or Preparatory Use with respect to the Exclusive Activities; such Use or
Preparatory Use is presumed.  





	
	
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(p) “Non-Asserted Siemens IP” means  Know-how and Software, owned by
Siemens or  Siemens Group and  created    prior  to  or  on  the  Effective  Date,  other  than  the
Contributed Siemens  Intellectual  Property  and  Licensed Siemens Intellectual  Property,  to  the
extent  disclosed or  provided by Siemens or  Siemens  Group to  the  Company  and  used  by  the
Company for the  Business Purpose.
(q) “Non-Exclusive Activities” means activities within the Business Purpose
which are not Exclusive Activities.
(r) “Patents”  means  all  patents,  utility  models,  patent  and  utility  model
applications, and all priorities and rights related thereto, including all reissues, reexaminations,
divisions, continuations, continuations-in-part, provisionals, continued prosecution applications,
substitutions, extensions, additions or renewals of any of the foregoing. “Permitted Sublicensing”
means sublicensing by Company to: (i) Subsidiaries of the applicable licensee, but only for the
period of time during which such sub-licensee is a Subsidiary of that licensee and only with respect
to  the    Business  Purpose;  (ii)  suppliers,  subcontractors,  contract  manufacturers,  or  contract
developers of the applicable licensee, if and to the extent such sub-license is necessary to allow
such  supplier,  subcontractor,  contract  manufacturer,  or  contract  developer  to  manufacture  and
deliver products to or for that licensee or to perform services for that licensee with respect to the
Business Purpose; and (iii) to customers of the applicable licensee, if and to the extent such sub-
license is necessary to allow such customer to use, resell, transfer or customize a product or benefit
from services sold or provided by that licensee with respect to the Business Purpose.  Permitted
Sublicensing cannot have a broader scope than the main license from which it flows.
(s)  “Preparatory Use” means preparatory actions to use Licensed Siemens IP
by the Business on or before the Closing Date or, with respect to the Exclusive Activities, reflected
in the SieStorage Roadmap, the AdvancionTM Roadmap, the Company Roadmap, or the Company
Business Plan, all as attached to this document in Exhibit B, as amended upon mutual written
agreement of the Parties up to and until the Closing Date.  With respect to the Exclusive Activities
only, Preparatory Use can be established by comparing patent claims in patents owned by the
Siemens Group, if any, with planned activities of the Business or the Company as documented in
the SieStorage Roadmap, the AdvancionTM Roadmap, the Company Roadmap, or the Company
Business Plan, to the extent that any such document contains sufficient  technical details to be
mapped  to  specific  IP  of  the  Siemens  Group.    With  respect  to  the  Non-Exclusive  Activities,
Preparatory  Use  can  be  established  by  comparison  of  patent  claims  in  patents  owned  by  the
Siemens Group, if any, with technical documents or specifications existing in the Business on or
before the Closing Date.  Preparatory Use of Know-How can be established by comparing Know-
How of the Siemens  Group with  technical  documents  or specifications  that existed within  the
Business prior to or on the Closing Date.  For the avoidance of doubt, Licensed Siemens IP can be
identified and proven by the Parties before, on or after the Closing Date, but Use or Preparatory
Use must occur before the Closing Date.
(t) “Restricted IP” means SIMATIC (programmable logic controller used in
the SieStorage solution), the Microgrid Controller, the Fast Switch hardware and PCS (inverter).
 





	
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(u) “Restricted Party” shall have the meaning set forth in Section 4.10 of this
Agreement.
(v) “Siemens Additional Patent License Agreement” shall mean the Siemens
Additional License Agreement, dated ________, 2021, between Siemens Aktiengesellschaft and
Siemens granting Siemens the right to sublicense the rights granted herein.
(w) “Siemens  Group”  means  Siemens,  all  Affiliates  of  Siemens  (including
Siemens  Aktiengesellschaft),  and  each  of  their  Subsidiaries,  with  the  exception  of  Gamesa
Corporación  Technológica  S.A.  and  Siemens  Healthineers AG,  and  their  respective  group  or
regional companies.
(x) “Siemens  SI  DS  FG  Head”  shall  mean  the  lead  executive  of  Smart
Infrastructure Distribution Systems Future Grid, which at the date hereof is Mr. Jean-Christoph
Heyne.
(y) “SieStorage Dual Use Patents” means all Patents in all countries of the
world  that  claim  priority  from  the  Patents  identified  in Exhibit E (which may  be  updated  and
amended with mutual agreement of the Parties up to and until the Closing Date).
(z) “Software” means all computer programs, operating systems, applications,
systems, firmware, and software of any nature, whether operational, active, under development, or
design,  non-operational  or  inactive,  including  all  object  code,  source  code,  comment  code,
algorithms,  processes,  formulae,  interfaces,  navigational  devices,  menu  structures  or
arrangements, icons, operational instructions, scripts, commands, syntax, screen designs, reports,
designs,  concepts,  visual  expressions,  technical  manuals,  test  scripts,  user  manuals,  and  other
documentation therefore, whether in machine-readable form, programming language, or any other
language  or  symbols,  and  whether  stored,  encoded,  recorded,  or  written  on  disk,  tape,  film,
memory device, paper, or other media of any nature and all databases necessary or appropriate to
operate  any  such  computer  program,  operating  system,  applications  systems,  firmware,  or
software.
(aa) “Third List for Dual Use IP” means a list of Licensed Siemens IP that does
not satisfy the definition of either Listed Dual Use IP or SieStorage Dual Use Patents.  Use or
Preparatory Use for all IP on this list must be proven by the Company.  This list can be created
pre- or post-Closing, and will not serve as an Exhibit (or other annex) to this Agreement.  For the
avoidance of doubt, Sections 4.5, 4.7, or 4.8 do not apply to IP contained on the Third List for
Dual Use IP.  Section 4.9 shall, however, apply to the Third List for Dual Use IP.
(bb) “Use” shall mean actual use of Licensed Siemens IP by the Business on or
before the Closing Date.  Use of Patents can be established by comparing patent claims in Patents
owned by the Siemens Group, if any, with products of the Business that existed prior to or on the
Closing Date.  Use of Know-How can be established by comparing Know-How of the Siemens
Group with technical documents or specifications existing within the Business or Know-How used
in products of the Business prior to or on the Closing Date.
1.2 Rules of Interpretation.  In this Agreement: 





	
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(a) The singular shall include the plural and the masculine shall include the
feminine and neuter as the context requires.
(b) References to “Articles” and “Sections” shall be to articles or sections of
this Agreement.
(c) The  words  “herein,”  “hereof,”  and  “hereunder”  shall  refer  to  this
Agreement as a whole and not to any particular section or subsection of this Agreement; the words
 “include,” “includes” or “including” shall mean “including, but not limited to.”
(d) Any reference to a statute, regulation or law, including Applicable Laws,
shall  include  any  amendment  thereof  or  any  successor  thereto  and  any  rules  and  regulations
promulgated there under.
ARTICLE TWO
LICENSES TO THE COMPANY
2.1 Non-Exclusive Activities.
(a) Licensed Siemens IP.  With effect as of the Closing Date, Siemens hereby
grants to the Company under the Licensed Siemens IP and with effect as of the Closing  Date,
Siemens hereby grants to the Company under the Additionally Licensed Patents a worldwide, non-
exclusive,  non-transferable,  perpetual,  royalty-free  license  to  conduct  any  Non-Exclusive
Activities for  the  Business  Purpose and  to  engage  in  Permitted  Sublicensing,  except  for  (i)
development, marketing, licensing or sale of any stand-alone digital services or solutions which
are not part of the Integrated Solution, or (ii) conducting any activities resulting from or relating
to the acquisition of Advanced Microgrid Solutions by Company.
(b) Sublicensed  Siemens  IP.    With  the  effect  as  of  the  Closing  Date,  and
pursuant  to  the  Siemens  Additional  Patent  License  Agreement,  Siemens  hereby  grants  to  the
Company under the Additionally Licensed Patents a worldwide, nonexclusive, non-transferrable,
perpetual,  royalty-free sublicense  to  conduct  any  Non-Exclusive  Activities for  the  Business
Purpose and to engage in Permitted Sublicensing, except for (i) development, marketing, licensing
or sale of any stand-alone digital services or solutions which are not part of the Integrated Solution
or (ii) conducting any activities resulting from or relating to the acquisition of Advanced Microgrid
Solutions by Company.
(c) Licensed  Object  Code  Software  and  Licensed  SieStorage  Know-How.
With effect as of the Closing Date, Siemens hereby grants to the Company a worldwide, non-
exclusive,  non-transferable,  perpetual  royalty-free  license  to  use  and  to  engage  in  Permitted
Sublicensing with respect to: (i) the Licensed Object Code Software, if any, when used to conduct
Non-Exclusive  Activities;  and  (ii)  the  Licensed  SieStorage  Know-How,  if  any, when  used  to
conduct Non-Exclusive Activities.
(d) SieStorage Dual Use Patents.  With effect as of the Closing Date, Siemens
hereby grants to the Company under the SieStorage Dual Use Patents a worldwide, non-exclusive,
non-transferable, perpetual, royalty-free license to conduct any Non-Exclusive Activities for the
Business Purpose and to engage in Permitted Sublicensing, except for (i) development, marketing, 





	
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licensing or sale of any stand-alone digital services or solutions which are not part of the Integrated
Solution or (ii) conducting any activities resulting from or relating to the acquisition of Advanced
Microgrid Solutions by Company.
(e) Additional Patents.  If, after the Closing Date, the Company determines that
it requires a license for products developed by the Company after the Closing Date under a Patent
owned by the Siemens Group, if any, (other than the SieStorage Dual Use Patents, the Licensed
Siemens IP, and the Third List for Dual Use IP, if any) in order to conduct any Non-Exclusive
Activities, the Company will identify that Patent and the Company’s intended use in writing to the
Siemens SI DS FG Head.  Upon such notification, the Parties will negotiate in good faith the terms
and conditions of a separate license agreement governing the Company’s use of the identified
Patent and any associated royalties and other consideration to be paid to Siemens by the Company
in connection with that license agreement.
(f) Restricted IP.  For the avoidance of doubt, SIMATIC (programmable logic
controller used in the SieStorage solution) will not be assigned to the Company nor licensed under
this Agreement; usage will be made available through a separate software license.  For the further
avoidance of doubt, the Microgrid Controller, the Fast Switch hardware, and PCS (inverter) will
be supplied to the Company through the Siemens Equipment and Services Purchase Agreement.
(g) Non-Assertion. Siemens hereby agrees that it and Siemens Group shall not
sue or assert  any claim  or demand or seek any  other remedy in  any  way, in  or out  of a legal
proceeding, against the Company or its assigns in accordance with Article 5 of this agreement, and
with respect to Fluence products only, its agents, contractors, distributors or customers, for the use
of any Non-Asserted Siemens IP for the Non-Exclusive Activities, except to the extent (1) such
use constitutes misappropriation of Know-How or (2) the Non-Asserted Siemens  IP is used by
the Company for (i) development, marketing, sales or licensing of any stand-alone digital services
or solutions which are not part of the Integrated Solution, or (ii) conducting any activities resulting
from or relating to the acquisition of Advanced Microgrid Solutions by Company. The foregoing
non-assertion covenant shall not be construed to prohibit Siemens, or Siemens Group, from  raising
any  arguments   that  it  has  developed  and/or  is  the  owner  of the Non-Asserted  Siemens  IP  in
defending against any claim or demand brought by the Company against Siemens or Siemens
Group alleging  that  Siemens  or  Siemens  Group  has  breached  the  terms  of  this  Agreement  or
infringed the Company’s Know-How or Patents.  For clarity purposes, this non-assert does not
apply  to Restricted  IP where  Company  will  continue  to  obtain  usage  rights  through  separate
software licenses or through the Siemens Equipment and Services Purchase Agreement.
2.2 Exclusive Field – Exclusive Activities.
(a) Licensed Siemens IP.  With effect as of the Closing Date, Siemens hereby
grants to the Company under the Licensed Siemens IP and with effect as of the Closing Date,
Siemens hereby grants to the Company under the Additionally Licensed Patents a worldwide, non-
exclusive,  non-transferable,  perpetual,  royalty-free  license  to  conduct  any  activities  within  the
Exclusive Activities for the Business Purpose and to engage in Permitted Sublicensing, except for
(i) development, marketing. licensing or sale of any stand-alone digital services or solutions which
are not part of the Integrated Solution, or (ii) conducting any activities resulting from or relating
to the acquisition of Advanced Microgrid Solutions by Company.





	
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(b) Sublicensed  Siemens  IP.  With  the  effect  as  of  the  Closing  Date,  and
pursuant  to  the  Siemens  Additional  Patent  License  Agreement,    Siemens  hereby  grants  to  the
Company  a  worldwide,  nonexclusive,  non-transferrable,  perpetual,  royalty  free-sublicense  to
conduct  any  Exclusive  Activities for  the  Business  Purpose and  to  engage  in  Permitted
Sublicensing, except for (i) development, marketing, licensing or sale of any stand-alone digital
services or solutions which are not part of the Integrated Solution or (ii) conducting any activities
resulting from or relating to the acquisition of Advanced Microgrid Solutions by Company.
(c) Licensed  Object  Code  Software  and  Licensed  SieStorage  Know-How.
With effect as of the Closing Date, Siemens hereby grants to the Company a worldwide, non-
exclusive,  non-transferable,  perpetual royalty-free  license  to  use  and  to  engage  in  Permitted
Sublicensing with respect to: (i) the Licensed Object Code Software, if any, when used to conduct
Exclusive Activities; and (ii) the Licensed SieStorage Know-How, if any, when used to conduct
Exclusive Activities.
(d) Listed  Dual  Use  IP/SieStorage  Dual  Use  Patents.    With  effect  as  of  the
Closing Date, Siemens hereby grants to the Company under the SieStorage Dual Use Patents and
Listed Dual Use IP, if any, a worldwide, non-exclusive, non-transferable, perpetual, royalty-free
license to conduct any activities within the Exclusive Activities for the Business Purpose and to
engage in Permitted Sublicensing, except for (i) development, marketing, licensing or sale of any
stand-alone  digital  services  or  solutions  which  are  not  part  of  the  Integrated  Solution  or  (ii)
conducting  any  activities  resulting  from  or  relating  to  the  acquisition  of  Advanced  Microgrid
Solutions by Company.
(e) Additional Patents.  If, after the Closing Date, the Company determines that
it requires a license for products developed by Company after the Closing Date under a Patent
owned by the Siemens Group (other than the SieStorage Dual Use Patents, the Licensed Siemens
IP, Listed Dual Use IP, and the Third List for Dual Use IP) in order to conduct any activities within
the Exclusive Activities, the Company will identify that Patent and the Company’s intended use
in writing to the Siemens  SI DS FG Head.  Upon such notification, the Parties will negotiate in
good faith the terms and conditions of a separate license agreement governing the Company’s use
of the identified Patent and any associated royalties and other consideration to be paid to Siemens
by the Company in connection with that license agreement.
(f) Restricted IP.  For the avoidance of doubt, SIMATIC (programmable logic
controller used in the SieStorage solution) will not be assigned to the Company nor licensed under
this Agreement; usage will be made available through a separate software license.  For the further
avoidance of doubt, the Microgrid Controller, the Fast Switch hardware, and PCS (inverter) will
be supplied to the Company through the Siemens Equipment and Services Purchase Agreement.
(g) Non-Assertion. Siemens hereby agrees that it and Siemens Group shall not
sue or assert  any claim or demand or seek any  other remedy in  any  way, in  or out  of a legal
proceeding, against the Company or its assigns in accordance with Article 5 of this agreement, and
with respect to Fluence products only, its agents, contractors, distributors or customers, for the use
of any Non-Asserted Siemens IP  for the Exclusive Activities, except to the extent (1) such use
constitutes misappropriation of Know-How or (2) the Non-Asserted Siemens  IP is used by the
Company for (i) development, marketing, sales or licensing of any stand-alone digital services or 





	
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solutions which are not part of the Integrated Solution, or (ii) conducting any activities resulting
from or relating to the acquisition of Advanced Microgrid Solutions by Company, The foregoing
non-assertion covenant shall not be construed to prohibit Siemens, or Siemens Group, from  raising
any  arguments   that  it  has  developed  and/or  is  the  owner  of the Non-Asserted  Siemens  IP  in
defending against any claim or demand brought  by the Company against Siemens or Siemens
Group alleging  that  Siemens  or  Siemens  Group  has  breached  the  terms  of  this  Agreement  or
infringed the Company’s Know-How or Patents.  For clarity purposes, this non-assert does not
apply  to Restricted  IP where  Company  will  continue  to  obtain  usage  rights  through  separate
software licenses or through the Siemens Equipment and Services Purchase Agreement.
2.3 Termination of the Licenses.  The Licenses may be terminated, in whole or in part,
by Siemens only in accordance with the procedure set forth in Section 8.2(b) of this Agreement if
the Company has materially breached this Agreement, and such breach has not been cured within
thirty (30) business days.  On the termination of the Licenses, in whole or in part: (a) all rights of
the  Company  under  the  terminated  License(s)  shall  terminate  forthwith  and  shall  revert
immediately to Siemens; and (b) the Company may no longer use the IP licensed to the Company
pursuant to the terminated License(s) and shall promptly transfer to Siemens, free of charge, all
registrations,  filings  and  rights  with  regard  to  such  Intellectual  Property  which  it  may  have
possessed at any time.  For purposes of this Section 2.3, a material breach will require a breach of
the license grant by Company involving: (a) sublicensing by Company under the licenses granted
in Sections 2.1 or 2.2 that is not Permitted Sublicensing, or (b) activities by Company violating
the licenses granted in Section 2.1 or Section 2.2.
2.4 Identification of Additionally Licensed Patents and Non-Asserted Siemens   For the
purposes of evaluating the credit to the Capital Account under Article 3.4 (b) of the Amended and
Restated LLC Agreement, Company shall on or after the Effective Date use reasonable efforts to
notify  Siemens  of  any  Additionally  Licensed  Patents  and  Non-Asserted  Siemens  IP  that  the
Company identifies as being used by it  prior to or on the Effective Date by sending a written
notice  to  Siemens  identifying  the  respective  Additionally  Licensed  Patents  and  Non-Asserted
Siemens  IP as well as the products and services of the Company in which these are used and
providing further information reasonably required to establish the initial Gross Asset Value of such
IP, provided, however, that, for the avoidance of doubt, (i) the Additionally Licensed Patents and
the Non-Asserted Siemens IP are not required to be identified in order for them to be licensed
under Sections 2.1(a) and 2.2(a) of this Agreement and be subject to the non-assertion covenants
under  Sections  2.1(d)  and  2.2(e),  as  applicable,  and  (ii)  the  identification  of,  or  the  failure  to
identify, any Additionally Licensed Patents or Non-Asserted Siemens IP shall not limit in any way
the  scope  of  Additionally  Licensed  Patents  or  Non-Asserted  Siemens  IP  or  the  scope  of  the
Licenses under Sections 2.1(a) and 2.2(a) and the non-assertion covenants under Sections 2.1(d)
and 2.2(e) of this Agreement.
ARTICLE THREE
LICENSES TO SIEMENS
3.1 With effect as of the Effective Date, Siemens hereby irrevocably and perpetually
retains and the Company hereby grants to Siemens a perpetual, non-exclusive, worldwide, non-
transferable (except as provided in Article 5), sublicenseable pursuant to Section 3.5, right to do
any  acts  within  the  current  and  future  fields  of business  of  the  Siemens  Group  which  are  not 





	
	10
Exclusive Activities and which would otherwise infringe any of the Contributed Siemens IP (the
 “Back-License”), under fair, reasonable and non-discriminatory (“FRAND”) royalty terms, to be
negotiated by the Parties before such Back-License is exercised.  Except to the extent retained by
Siemens  or licensed to  Siemens  under this  Agreement, the Company will  have all rights  with
respect to the Contributed Siemens IP, including the sole right to prepare, file, prosecute, obtain,
maintain and enforce the Contributed Siemens IP, to the extent applicable.  For the avoidance of
doubt, the License to the IP set out in Section 3.1 shall include a license to Siemens (except for
Exclusive Activities) to any Patents that are applied for by the Company after the Closing Date on
inventions included in the Contributed Siemens IP; as well as a license to Siemens (except for
Exclusive Activities) to any Software included in the Contributed Siemens IP, in both source code
and object code format, in the form that such Software in source code format existed on the Closing
Date, which license includes the right to develop, copy, use, modify, and create derivative works
of that Software in source code and object code format, and a license to any copyrights, registered
or  unregistered,  owned  by  the  Company  after  the  Closing  Date  on  Software  included  in  the
Contributed  Siemens  IP;  and  shall  not  include  a  license  to  Siemens  to  do  any  acts  which  are
Exclusive Activities.  This Section 3.1 shall not retroactively apply to the time period between the
Closing Date and the Effective Date.
3.2 With effect as of the Effective Date, Siemens hereby perpetually retains and the
Company  hereby  grants  to Siemens  a  perpetual,  non-exclusive,  worldwide,  non-transferable
(except as provided in Article 5), sublicenseable pursuant to Section 3.5, right to do any acts within
the current and future fields of business of the Siemens Group which are not Exclusive Activities
and which would otherwise infringe any IP owned by the Company which was derived from: (i)
the  Contributed  Siemens  IP,  provided  however,  that  with  respect  to  any  derivations  of  any
Software in source code format included in the Contributed Siemens IP made by or on behalf of
the Company, the license granted to Siemens under this Section 3.2 only includes a license to use
that  derived  Software,  if  any,  in  object  code  format,  and  not  in  source  code  format;  (ii)  the
SieStorage Dual Use Patents; (iii) the Licensed Siemens IP; (iv) the Additional Patents, if any,
licensed to the Company under Sections 2.1(d) or 2.2(d) hereunder;  (v) the Additionally Licensed
Patents, licensed to the Company under Sections 2.1(a) or 2.2(a) or (vi) the Sublicensed Siemens
IP  under  Sections  2.1(b)  or  2.2(b) (the  IP  specified  in Section 3.2(i)-(vi)  above  is  referred  to,
collectively, as the “Derived IP”), under FRAND royalty terms to be negotiated by the Parties
before such licenses to the Derived IP are exercised (hereinafter the “Back-Licenses to Derived
IP”);  provided  that  such  Derived  IP  was  developed  when  Siemens  or  any  of  its  Affiliates
collectively owned at least twenty percent (20%) of the equity of the Company.  For the avoidance
of doubt, the Back-Licenses to Derived IP shall include a license to Siemens (except for Exclusive
Activities)  to  any  Patents  that  are  applied  for  by  the  Company  after  the  Closing  Date  on
improvements and modifications to the Contributed Siemens IP that are developed by or on behalf
of the Company; and shall not include a license to Siemens to do any acts which are Exclusive
Activities.  The Company will notify Siemens in writing of any Patent derived from the above-
mentioned IP promptly after filing that application. This Section 3.2 shall not retroactively apply
to  the  time  period  between  the  Closing  Date  and  the  Effective  Date.   The Company  hereby
represents  and  warrants  that  it  did  not make any  material  Derived  IP  during  the  time  period
between the Closing Date and the Effective Date of this Amendment.
3.3 Siemens may request that Company provide it a copy of the derived Software in
object code format described in section 3.2(i), above, if any.  Such request will be a written request 





	
	
11
and Company shall deliver to Siemens such copy in a commercially reasonable manner and time;
provided, however, that Company shall not be obligated to respond to such a written request more
frequently than four times each calendar year.
3.4 The  Back-Licenses  to  Derived  IP  may  be  terminated,  in  whole  or  in  part,  by
Company in accordance with the procedure set forth in Section 8.2 of this Agreement if Siemens
has materially breached this Agreement, and such breach has not been cured within thirty (30)
days.  On the termination of the Back-Licenses to Derived IP, in whole or in part: (a) all rights of
Siemens under the terminated Back-Licenses to Derived IP shall terminate forthwith and shall
revert immediately to the Company; and (b) Siemens may no longer use the Derived IP licensed
to Siemens pursuant to the terminated Back-Licenses to Derived IP and shall promptly transfer to
the Company, free of charge, all registrations, filings and rights with regard to such Intellectual
Property which it may have possessed at any time.  For purposes of this Section 3.4, a material
breach  will  require  a  breach  by  Siemens of  the  Back-Licenses  to  Derived  IP  involving:  (a)
sublicensing by Siemens which is not permitted sublicensing, or (b) activities by Siemens that
violate the licenses granted in Section 3.2.
3.5 The  license  granted  under  Sections 3.1  and  3.2  are  sublicensable  to  Affiliates,
provided that (i) the Affiliate agrees to abide by and be subject to terms and conditions substantially
consistent with this Section 3; (ii) the Affiliate shall have no further right to grant sublicenses under
this Agreement; (iii) Siemens remains fully liable for the performance of its sublicensed Affiliates
obligations hereunder; (iv) Siemens provides Company with all executed sublicenses; and (v) any
sublicense  shall  terminate  on  the  date  any  sublicensed  Affiliate  ceases  to  be  an  Affiliate of
Siemens.
ARTICLE FOUR
OBLIGATIONS AND RESTRICTIONS
4.1 The  Company  shall  not  do  or  suffer  to  be  done  any  act  or  thing  which  may
materially adversely affect any rights of Siemens in or to any of the IP licensed to the Company
by Siemens pursuant to the Licenses or any registrations thereof.
4.2 Siemens shall not do or suffer to be done any act or thing which may materially
adversely affect any rights of the Company in or to the Contributed Siemens IP or any registrations
thereof.
4.3 Siemens shall undertake, at its own expense, the prosecution and maintenance of
all IP licensed to the Company pursuant to the Licenses.  In the event that Company identifies an
office action issued during prosecution of the SieStorage Dual Use Patents or the Listed Dual Use
IP, if any, it may request that Siemens provide Company commercially reasonable consultation
rights in connection with responding to such office action, which rights will be provided to the
extent they do not cause an unreasonable delay in such prosecution, e.g., by requiring an extension
of time to respond to the office action.
4.4 Company shall undertake, at its own expense, the prosecution and maintenance of
(a) any of the Contributed Siemens IP and (b) any other IP owned by the Company, including but 





	
	
12
not limited to Derived IP.  Siemens shall undertake, at its own expense, to reasonably cooperate
with the Company to perfect rights in such IP.
4.5 Patent Litigation.
(a) The Company will promptly give written notice to the Siemens SI DS FG
Head if the Company becomes aware of any actual, threatened, or suspected infringement of, or
any unauthorized use or any challenge to the validity of, any of the Intellectual Property licensed
to the Company pursuant to the Licenses, including the SieStorage Dual Use Patents, if any.
(b) Without limiting the obligations under Section 4.5(a), Siemens will consult
in good faith with the Company in evaluating the strength of a claim of any actual, threatened, or
suspected infringement of the SieStorage Dual Use Patents or the Listed Dual Use IP, if any.  This
will consist of generating a patent claim chart that shows why each and every element in at least
one independent patent claim in one or more of the SieStorage Dual Use Patents or the Listed Dual
Use IP is shown in a product sold or distributed by a Third Party before any patent litigation is
considered.  Siemens will consider the pros and cons of proceeding against any Third Party in a
commercially reasonable manner, and in the event that the pros materially outweigh the cons,
Siemens will proceed.  The ultimate decision to proceed rests with Siemens.
(c) If the foregoing process identifies and confirms a potential infringement of
the SieStorage Dual Use Patents or Listed Dual Use IP, if any, the Siemens SI DS FG Head will
consult  with  the  Company’s  management  team  to  determine  whether  a  patent  infringement
litigation should be pursued.  In circumstances where the potential patent infringement identified
is of a SieStorage Dual Use Patent or a Listed Dual Use IP, and the Company’s management team
believes a patent infringement action should be undertaken, the Siemens SI DS FG Head will: (i)
coordinate  an  internal  review  of  the  Company’s  request  to  initiate  a  patent  litigation;  and  (ii)
determine  (in  good  faith  and  in  consultation  with  the  appropriate  managers  and  executives  of
Siemens) whether a patent litigation is merited based on the aforementioned claim chart(s).
(d) If Siemens believes that infringement of a SieStorage Dual Use Patent or a
Listed Dual Use IP, if any, has not been reasonably established, the Siemens SI DS FG Head will,
before  making  a  final  decision  on  whether  to  pursue  a  patent  litigation,  collaborate  with  the
Company  to  obtain  any  further  information  to  establish  patent  infringement  and  facilitate
discussions  between  Siemens’  internal  corporate  Intellectual  Property  department  and  the
Company on why Siemens believes that patent infringement has not been reasonably established.
(e) If the Company and Siemens believe that infringement of the respective
SieStorage Dual Use Patent or the Listed Dual Use IP, if any, has been reasonably established and
the validity of that SieStorage Dual Use Patent or the Listed Dual Use IP has been confirmed, the
Siemens SI-DS FG  Head will diligently coordinate with the rest of the Siemens organization to
confirm that a patent litigation will be initiated (which process shall account for any relationship,
such as a supply relationship, between Siemens and the applicable Third Party) and, if confirmed,
Siemens will (within sixty (60) business days) initiate a patent litigation.  Upon the initiation of
such patent litigation, the Parties will continue to consult regarding on-going litigation activities
and  the  Company  will  provide  to Siemens  commercially  reasonable  information  required  in
connection with the proceedings (including technical information) based on the nature of those 





	
	
13
proceedings.    All  commercially  reasonable  costs  associated  with  a  patent  litigation  initiated
pursuant to this Section 4.5 will be split between the Company and Siemens, as determined by the
Parties on a case-by-case basis.
4.6 The Back-License and the Back-Licenses to Derived IP (as set out in Article Three
of this Agreement) shall apply to any IP transferred or sold to the Company under Sections  4.7,
4.8 and 4.9.
4.7 If Siemens receives a bona fide offer to purchase any of the SieStorage Dual Use
Patents, if any, Siemens will communicate in writing to the Company the full terms of the offer.
The Company may elect to purchase the applicable SieStorage Dual Use Patents on the terms set
forth in the offer by providing Siemens written notice of the election to do so within thirty (30)
business days after Siemens’ communication of the offer.  If the Company fails to give written
notice of election within thirty (30) business days, Siemens may sell to the offeror on the terms
offered, subject to Article 5 this Agreement.
4.8 Siemens shall notify the Company in writing if Siemens decides to abandon any of
the SieStorage Dual Use Patents or the Listed Dual Use IP, if any, in which case Siemens will
offer those SieStorage Dual Use Patents or the Listed Dual Use IP to the Company at no cost and,
if accepted by the Company: (i) Siemens will ensure that those SieStorage Dual Use Patents or the
Listed Dual Use IP are promptly assigned to the Company, with the Company assuming any direct
fees  or  costs  of  assignment;  and  (ii)  the  Company  may,  at  its  discretion,  file,  prosecute,  and
maintain those SieStorage Dual Use Patents or Listed Dual Use IP at the Company’s cost.
4.9 For  a  period  of  four  (4)  years  after  the  Closing  Date,  Siemens  shall  notify  the
Company in writing if Siemens decides to abandon any of the IP on the Third List for Dual Use
IP, in which case Siemens will offer such IP to the Company at no cost and, if accepted by the
Company: (i) Siemens will ensure that the respective IP is promptly assigned to the Company,
with the Company assuming any direct fees or costs of assignment; and (ii) the Company may, at
its discretion, file, prosecute, and maintain such IP from the Third List for Dual Use IP.  Both the
obligation to notify of the abandonment decision as well as the obligation to offer Company such
IP shall cease to exist on the fourth anniversary of the Closing Date.  In addition, upon written
request of the Company concerning possible third-party challenges to the validity of specific IP on
the Third List for Dual Use IP, Siemens shall inform the Company of any such challenges of which
it is aware.
4.10 Export  Control  Laws.    The  Parties  agree  to  comply  with  U.S.  export  laws  and
regulations  pertaining to the export of technical  data, services  and commodities, including the
International Traffic in Arms Regulations (22 C.F.R. § 120 et seq.), the Export Administration
Regulations (15 C.F.R. § 730 et seq.), the regulations administered by the Treasury Department’s
Office of Foreign Assets Control (31 C.F.R. § 500, et seq.), and the Anti-Boycott Regulations
(15 C.F.R. § 760).  The Parties shall cooperate with each other to facilitate compliance with these
laws and regulations.  The Parties understand that sharing controlled technical data with non-U.S.
persons is an export to that person’s country of citizenship that is subject to U.S. export laws and
regulations,  even if the transfer occurs in the  United States.   Siemens  shall obtain, at  its  own
expense, any necessary U.S. government license or other authorization required pursuant to the
U.S. export control laws and regulations for the export or re-export of any commodity, service or 





	
	14
technical  data  covered  by  this  Agreement,  including  under  the  Back-License  and  the  Back
Licenses to Derived IP, as each is set forth in Sections 3.1 and 3.2.  Each Party represents that it is
not  designated  as  an  entity  for  which  U.S.  persons  are  required  to obtain  U.S.  government
authorization to enter into financial or export transactions (a “Restricted Party”).  Any Party to
this Agreement shall immediately notify the other Party if, at any time during the term of this
Agreement, it becomes a Restricted Party.
ARTICLE FIVE
ASSIGNMENT
5.1 Neither  Party  may  assign  all  or  any  part  of  this  Agreement,  or  any  rights  or
obligations hereunder (including, with respect to the Company, the Licenses; and, with respect to
Siemens, the Back-License and the Back-Licenses to Derived IP), without the prior written consent
of the other Party, which consent shall not be unreasonably withheld.  Any purported assignment
which  fails  to  comply  with  the  requirements  of  this  Section 5.1  shall  be  null  and  void.
Notwithstanding the foregoing, either Party may, without the prior written consent of the other
Party,  assign  all  or  any  part  of  this  Agreement,  or  any  rights  or  obligations  hereunder,  to  an
Affiliate, which will accept such assignment and assume all obligations related to this Agreement;
provided that, notwithstanding any such assignment, the assigning Party shall not be relieved of
any of its obligations hereunder by reason of such assignment and shall remain liable hereunder
for the fulfillment of the obligations to the extent the assignee does not fulfill such obligations.
5.2 Notwithstanding  anything  to  the  contrary  herein,  Siemens  shall  ensure  that  the
SieStorage Dual Use Patents, Listed Dual Use IP, or IP on the Third List for Dual Use IP licensed
to the Company pursuant to the Licenses, and the Company’s rights under this Agreement therein
and thereto, remain unaffected in case of a transfer of the SieStorage Dual Use Patents, Listed Dual
Use  IP,  or  IP  on  the  Third  List  for  Dual  Use  IP  by  Siemens  to  a  subsequent  purchaser  by
contractually  obligating  such  subsequent  purchaser  to  respect  such  Licenses  and  all  related
obligations  of  Siemens  so  that  the  Company  can  directly  enforce  such  rights  against  such
subsequent purchaser.
5.3 Notwithstanding anything to the contrary herein, the Company shall ensure that the
Contributed Siemens IP and all IP transferred or sold to Company under Sections 4.6, 4.7 and 4.8,
and Siemens’  rights under this  Agreement therein  and thereto,  remain unaffected in case of a
transfer of the respective IP by the Company to a subsequent purchaser by contractually obligating
such subsequent purchaser to respect such licenses and all related obligations of the Company
(including the Back-License and the Back-Licenses to Derived IP) so that Siemens can directly
enforce such rights against such subsequent purchaser.
ARTICLE SIX
WARRANTIES, INDEMNIFICATION, AND DISCLAIMERS
6.1 Siemens represents and warrants that:
(a) It has the full legal right and authority to enter into this Agreement and to
convey the rights and licenses that it conveys under this Agreement; and 





	
	15
(b) To the knowledge of Siemens, there is no action, suit or proceeding pending
against it or any of its Affiliates challenging the validity or enforceability of the SieStorage Dual
Use Patents or the Listed Dual Use IP.  At Company’s request, Siemens will provide information
concerning actions, suits or proceedings relating to any IP transferred or sold to Company under
Sections 4.7, 4.8 and 4.9.
Siemens will defend the Company against all Third Party claims, actions, suits, or other
proceedings against the Company arising out of or resulting from a breach of the representations
and warranties under this Section 6.1, and shall indemnify and hold the Company harmless from
and  against  all  judgments,  losses,  liabilities,  damages,  costs  and  expenses  (including  without
limitation, reasonable attorneys’ fees) arising out of or incurred in connection with all such claims,
actions, suits, or other proceedings.
6.2 EXCEPT  AS  EXPRESSLY  SET  FORTH  IN  SECTION  6.1,  SIEMENS
EXPRESSLY  DISCLAIMS  ANY  AND  ALL  REPRESENTATIONS  AND  WARRANTIES
WHATSOEVER, WHETHER EXPRESS, IMPLIED, OR STATUTORY, WITH RESPECT TO
THE INTELLECTUAL PROPERTY LICENSED TO THE COMPANY PURSUANT TO THE
LICENSES  AND  THE  RIGHTS  GRANTED  PURSUANT  TO  THIS  AGREEMENT,
INCLUDING  ANY  WARRANTIES  WITH  RESPECT  TO  MERCHANTABILITY,
SUITABILITY FOR A PARTICULAR PURPOSE, TITLE, NON-INFRINGEMENT, AND ANY
WARRANTIES ARISING FROM COURSE OF DEALING, COURSE OF PERFORMANCE,
OR TRADE USAGE.
6.3 The Company will defend Siemens against all Third Party claims, actions, suits, or
other proceedings against Siemens arising out of or resulting from any claims or allegations of the
Company that a Third Party has infringed or otherwise misappropriated the Company’s rights in
or  to  any  Intellectual  Property,  including  any  counterclaims  brought  by  that  Third Party  in
connection therewith; and the Company shall indemnify and hold Siemens harmless from  and
against  all  judgments,  losses,  liabilities,  damages,  costs  and  expenses  (including  without
limitation, reasonable attorneys’ fees) arising out of or incurred in connection with all such claims,
actions, suits, or other proceedings.
6.4 EXCEPT  AS  EXPRESSLY  SET  FORTH  IN  SECTION  6.3,  COMPANY
EXPRESSLY  DISCLAIMS  ANY  AND  ALL  REPRESENTATIONS  AND  WARRANTIES
WHATSOEVER, WHETHER EXPRESS, IMPLIED, OR STATUTORY, WITH RESPECT TO
THE INTELLECTUAL PROPERTY LICENSED TO SIEMENS PURSUANT TO THE BACK-
LICENSE,  THE  BACK-LICENSES  TO  DERIVED  IP,  AND  THE  RIGHTS  GRANTED
PURSUANT TO THIS AGREEMENT, INCLUDING ANY WARRANTIES WITH RESPECT
TO MERCHANTABILITY, SUITABILITY FOR A PARTICULAR PURPOSE, TITLE, NON-
INFRINGEMENT,  AND  ANY  WARRANTIES  ARISING  FROM  COURSE  OF  DEALING,
COURSE OF PERFORMANCE, OR TRADE USAGE.
ARTICLE SEVEN
LIMITATION OF LIABILITY
TO THE FULLEST EXTENT PERMITTED BY LAW, NEITHER PARTY SHALL BE
LIABLE TO OTHER PARTY OR ANY OTHER PERSON FOR ANY INJURY TO OR LOSS 





	
	
16
OF  GOODWILL,  REPUTATION,  BUSINESS,  PRODUCTION,  REVENUES,  PROFITS,
ANTICIPATED PROFITS,  CONTRACTS OR OPPORTUNITIES (REGARDLESS OF HOW
THESE  ARE  CLASSIFIED  AS  DAMAGES),  OR  FOR  ANY  CONSEQUENTIAL,
INCIDENTAL,  INDIRECT,  EXEMPLARY,  SPECIAL,  PUNITIVE  OR  ENHANCED
DAMAGES WHETHER ARISING OUT OF BREACH OF CONTRACT, TORT (INCLUDING
NEGLIGENCE),  STRICT  LIABILITY,  PRODUCT  LIABILITY  OR  OTHERWISE
(INCLUDING THE ENTRY INTO, PERFORMANCE OR BREACH OF THIS AGREEMENT),
REGARDLESS OF WHETHER SUCH LOSS OR DAMAGE WAS FORESEEABLE OR THE
PARTY AGAINST WHOM SUCH LIABILITY IS CLAIMED HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH LOSS OR DAMAGE, AND NOTWITHSTANDING THE FAILURE
OF ANY AGREED OR OTHER REMEDY OF ITS ESSENTIAL PURPOSE.
ARTICLE EIGHT
MISCELLANEOUS
8.1 Notwithstanding any provision to the contrary set forth herein or in the ECA or in
any  document,  instrument,  or  agreement  executed  in  connection  herewith  or  therewith,  no
provision of this Agreement in any way waives, restricts, alters, diminishes, or limits the express
provisions  (including  the  warranties,  covenants,  agreements,  conditions,  representations  and
obligations and indemnifications, and the limitations related thereto, of the Parties) set forth in the
ECA, this Agreement being intended solely to effect the Licenses, the Back-License, and the Back-
Licenses to Derived IP strictly in accordance with the terms of the ECA.  In the event of a conflict
between the terms of this Agreement and the terms of the ECA, the terms of this Agreement shall
prevail and govern.
8.2 This Agreement is exclusively governed by, and shall be exclusively construed in
accordance with, the Laws of the State of Delaware applicable to agreements made and to be
performed entirely within such State, without regard to the conflicts of Law principles that would
require the application of any other Law.
 (a) If  one  of  the  Parties  concludes  that  a  dispute  (other  than  a  dispute  over
whether a material breach of this Agreement has been committed (or has been cured) by either
Party as set out in Section 2.3 or Section 3.4 which shall be resolved solely pursuant to Section
8.2(b)) has arisen under this Agreement it will so inform the other Party in a written notice (the
 “Notice”).  The Notice shall set forth the issues requiring resolution.  The Notice shall be effective
on the date that it is received by the receiving Party.  The receiving Party may respond within five
(5) business days from the effective date of the Notice with a list of issues to be added to the
Notice.    The  Parties  shall  thereafter  engage  in  good  faith  negotiations  to  attempt  to  amicably
resolve the issues raised in the Notice.  If the Parties are unable to resolve the issues raised in the
Notice within 30 (thirty) business days after the effective date of the Notice, the issues shall be
submitted  to  mediation  under  the  Mediation  Rules  of  the  International  Centre  for  Dispute
Resolution (ICDR). The place of mediation shall be Washington D.C. The language of mediation
shall be English.   The mediator shall be selected from the roster of accredited mediators of ICDR.
Neither Party may veto the selection of a mediator except for compelling reasons of conflict of
interest.  The mediation shall be concluded no more than 60 (sixty) business days after the effective
date of the Notice.   





	
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(b) If either Party determines that it intends to terminate any of the licenses
granted in this Agreement because the other Party has materially breached this Agreement as set
out in Section 2.3 or Section 3.4, as applicable (such Party intending to terminate the Agreement,
the “Claimant”), it shall notify the other Party hereof in writing, describing the alleged material
breach in reasonable detail (such other Party, the “Recipient”, and such notice, “Breach Notice”).
Within thirty (30) business days upon receipt of the Breach Notice, the Recipient shall either notify
the Claimant that it has cured the breach (or is in the process of curing the breach and requires an
additional ten (10) business days to complete such cure which additional time shall be subject to
Claimant’s approval not to be unreasonably withheld) (such 30 business day rectification period
or such longer period approved by Claimant pursuant to the foregoing, “Rectification Period”) or
notify the Claimant that it does  not  agree with  the Breach Notice stating the reasons  for such
disagreement  (“Disagreement  Notice”).    Within  10  business  days  after  the  issuance  of  the
Disagreement Notice or within 10 business days after the Rectification Period has elapsed without
cure to the material breach, then either Party may, by notice to the other Party and the International
Centre for Dispute Resolution, demand mediation under the Mediation Rules of the International
Centre for Dispute Resolution.  The place of mediation shall be Washington D.C.  The language
of  mediation  shall  be  English.    The  mediator  shall  be  selected  from  the  roster of accredited
mediators of International Centre for Dispute Resolution.  Neither Party may veto the selection of
a mediator except for compelling reasons of conflict of interest.  If settlement through mediation
is  not  reached  within  60  business  days  after  service  of  a  written  demand  for  mediation,  the
Claimant’s determination to terminate the Licenses or Back-Licenses, as applicable, granted herein
shall be subject to arbitration administered by the International Centre for Dispute Resolution in
accordance with its International Arbitration Rules.  In any arbitration under this Agreement, the
place of arbitration shall be Washington D.C., United States.  The language of the arbitration shall
be English.  There shall be three arbitrators, each of which with at least fifteen years of experience
as an attorney with a primary practice area in intellectual property law, arbitrating intellectual
property disputes, or a combination of both.  Within 30 business days after the commencement of
arbitration, each Party  shall appoint a person to serve as  an arbitrator.   The Parties  shall then
appoint the presiding arbitrator within 30 business days after selection of the Party appointees.  If
any arbitrators are not selected within these time periods, the  International Centre for Dispute
Resolution shall, at the written request of any Party, complete the appointments that have not been
made.  Nothing in this Agreement shall be construed or interpreted as granting the arbitrators the
power to award punitive or consequential damages as part of any award rendered relating to this
Agreement or the transactions contemplated hereby.  The determination of the arbitrators shall be
final,  binding  and  nonappealable  by  the  Parties  and  any  judgment  or  award  rendered  by  the
arbitrators may be entered in any court having jurisdiction thereof.  The costs and expenses of such
arbitration shall be shared equally by the Parties.
8.3 This  Agreement is  for the sole benefit  of the Parties  hereto  and their permitted
successors and assigns and nothing herein expressed or implied shall give or be construed to give
to any Person, other than the Parties hereto and such successors and assigns, any legal or equitable
rights, remedy or claim hereunder.
8.4 No amendment to this Agreement shall be effective unless it shall be in writing and
signed by each of the Parties hereto. 





	
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8.5 If any provision of this Agreement or the application of any such provision to any
Person or circumstance shall be held invalid, illegal or unenforceable in any respect by a court of
competent  jurisdiction, such invalidity, illegality or unenforceability shall  not  affect any other
provision hereof.
8.6 Each of the Parties hereto is sophisticated and has been (or had full opportunity and
means to be) represented by counsel who have carefully negotiated the provisions hereof.  As a
consequence, the Parties do not intend that the presumptions of any Laws or other rules relating to
the interpretation of contracts against the drafter of any particular clause should be applied to this
Agreement and therefore waive their effects.
8.7 This  Agreement  (and  any  amendment  hereto)  may  be  executed  in  one  or  more
counterparts, including by facsimile or email, all of which shall be considered one and the same
agreement, and shall become effective when one or more such counterparts have been signed by
each of the Parties and delivered to the other Party.
8.8 The rights and obligations of each Party under this Agreement are conditioned upon
and subject to the occurrence of the Closing contemplated under the ECA.  For the avoidance of
doubt, if the Closing does not occur, this Agreement will be null and void.
8.9 This  Agreement  constitutes  an  amendment  and  restatement  of  the  Original
Agreement  effective  from  and  after  the  Effective  Date.    The  execution  and  delivery  of  this
Agreement shall not constitute a novation or waiver of any rights or obligations under the Original
Agreement based on facts or events occurring or existing prior to the Effective Date and shall be
without prejudice to any rights or obligations that have arisen prior to the Effective Date.  As of
the  Effective  Date,  the  Original  Agreement  is  hereby  amended,  supplemented,  modified  and
restated, as applicable, to the extent provided for herein.
[SIGNATURE PAGE FOLLOWS] 





	
	IN WITNESS WHEREOF, the Parties have executed this Agreement as of the date first
written above.
Fluence Energy, LLC
[Signature Page to the Amended and Restated Siemens Industry License Agreement]




By:_
Name:Dennis Fehr
Title: Chief Financial Officer


By:_
Name: Francis A. Fuselier
Title: General Counsel and Secretary


Siemens Industry, Inc.


By:
Name:
Title:


By:
Name:
Title: 





	
	IN WITNESS WHEREOF, the Parties have executed this Agreement as of the date first
written above.
Fluence Energy, LLC
By:_
Name:
Title:
By:_
Name:
Title:
Siemens Industry, Inc.
By:
Name:
Title:
By:
Name:
Title:
[Signature Page to the Amended and Restated Siemens Industry License Agreement]
Ruth Gratzke
Chief Executive Officer
Marsha Smith
Chief Financial Officer
Digitally signed by Smith Marsha
DN: cn=Smith Marsha,
o=Siemens,
email=marsha.smith@siemens.com
Date: 2021.04.19 12:45:59 -04'00'
Smith
Marsha
Digitally signed by Gratzke Ruth
DN: cn=Gratzke Ruth,
o=Siemens,
email=ruth.gratzke@siemens.com
Date: 2021.04.19 13:27:42 -04'00'
Gratzke
Ruth





	
	
EXHIBIT B
TO THE
SIEMENS LICENSE AGREEMENT
Relevant Roadmaps and Company Business Plan
See attached.

  






 

	
	EXHIBIT D
TO THE
SIEMENS LICENSE AGREEMENT
Listed Dual Use IP
Title of Each Patent Family, Including Subsequent Filings Not
Shown, Licensed
Exemplary Publication,
Application or Grant
number
Status /
Countries
Einrichtung zur Spitzenlast-Abdeckung / Electrical consumer`s peak
load covering device for public electricity network, has control
device to estimate consumer`s energy consumption quantity, and
inverter to assist consumer`s electricity supply if estimation rises
above threshold
US7388364 Granted: DE, US
Vorrichtung und Verfahren zur dezentralen Energieversorgung /
Decentralized power supply device, has power inverter supplying
electrical energy of energy source to power supply systems, where
energy source is connected with controller for connecting part of
protective devices to power supply systems
EP1925062 Granted: DE, ES,
FR
Wechselrichter und Verfahren zum Betrieb des Wechselrichters /
Inverter for connection of direct-current source to alternating
current network, has current supplies switched on and switched off
by electrically programmable logic device that is accessible by
micro-computer
EP1833155 Application
Wechselrichter, insbesondere Solarwechselrichter, mit einem
aktiven Netzfilter / Inverter i.e. solar inverter, for feeding
multiphase line current into mixing point of power network, has
downstream line filter that is active line filter connected parallel to
output of inverter
DE102008018497 Granted: DE
PERFORMANCE TRACKING OF AN ELECTRICAL ENERGY
STORAGE SYSTEM / Method for predicting performance of
electrical energy storage system e.g. battery, involves calculating
performance indicators of electrical energy storage system based on
simulated dynamics of electrical energy storage system
US20170038432
Application: EP,
AU, BR, CA,
CL, IN, TH, US
For clarity purposes, this list of Listed Dual Use IP is intended to include all future
filings in any country for each Patent Family Listed.  





	
	

EXHIBIT E
TO THE
SIEMENS LICENSE AGREEMENT
SieStorage Dual Use Patents
Title of Each Patent Family, Including Subsequent Filings Not
Shown, Licensed
Exemplary Publication,
Application or Grant
number
Status /
Countries
Elektrische Einrichtung mit verringerter Isolationsstrecke /
Electrical device, has electrical circuits adapted to differ with
respect to type of insulation, where disconnection gap divides two
electrical circuits by interface with intermediate potential
EP2885860  Granted: DE, FR,
IT, PT
Erfassen der Betriebsführung eines Batteriespeichers / Method for
detecting management of storage battery of energy-storage system,
involves performing continuous creation of statistics imaging
utilization profiles describing operational management of storage
battery
US20170052229  Application: DE,
CN, US
Verfahren zum Betrieb einer Stromrichteranlage / Method for
operating power converter system for connection of three-phase
alternating current (AC) and direct current (DC) systems, involves
computing remaining operational parameters and control angle by
respective function
DE102014214536  Application: DE
DC-Überspannungsschutz für ein Energiespeichersystem / DC
Overvoltage Protection for an Energy Storage System  DE102016218219.6  Application: DE,
WO
Elektrisches Energiespeichersystem / Electric energy-storage
system, has battery comprising battery management system, and
monitoring system for monitoring independent state of battery
management system and critical states of battery and comprising
computing unit
DE102016203730  Application: DE,
WO
DC-Überspannungsschutz für ein Energiesystem / DC Overvoltage
Protection for an Energy System
 / The subject of the invention is a DC overvoltage protection means
for an energy storage system and/or energy-generating system, an
energy storage system and/or energy generating system with said
DC overvoltage protection means, a method of operating a DC
overvoltage protection means for an energy storage system and/or
energy-generating system, and a method of operating an energy
storage system and/or energy-generating system with said DC
overvoltage protection means, whereby said DC overvoltage
protection means exhibits at least one shunt release on the AC
switch that causes said AC switch to be interrupted.
DE102016218242.0  Application: DE,
WO
Luftkühlung eines Wechselrichters / Air Cooling of an Inverter  DE102016221404.7  Application: DE,
WO  





	
	
Title of Each Patent Family, Including Subsequent Filings Not
Shown, Licensed
Exemplary Publication,
Application or Grant
number
Status /
Countries
Containerbeschattung / Shading device mounted in container or
standard container used for transporting general cargo, has
longitudinal profiles that are arranged on opposite side of carrier
elements such that profiles extend on opposite side of carrier
elements
DE102016222479  Granted: DE
Application: WO
Design Converter Cabinet Siestorage S800 Umrichter / Inverter  EU register No.:
001452387
Application: EU,
AU, CN, IN
Anordnung zum Ausgleich von Spannungseinbrüchen und System
mit solch einer Anordnung / Compensation arrangement for voltage
dips and system with such an arrangement
DE102017211356.1  Application: DE
Energiespeichervorrichtung und deren Verwendung / Energy
Storage Unit and Its Use  DE102017202136.5  Application: DE
Unterbrechungsfreie Stromversorgung / Uninterruptable power
supply  DE102017211354.5  Application: DE
Unterbrechungsfreie Stromversorgung / Uninterruptable power
supply  DE102017211351.0  Application: DE
Anordnung zum Ausgleich von Spannungseinbrüchen und System
mit solch einer Anordnung / Compensation arrangement for voltage
dips and system with such an arrangement
DE102017211355.3  Application: DE

For clarity purposes, this list of SieStorage Dual Use Patents is intended to include all
future filings in any country for each Patent Family Listed.