CLIENT ALERT

Wood IP, as counsel of record for Licensing Executives Society (LES), filed a neutral amicus brief. Our aim was simple: ask the Federal Circuit to give practical, technology-neutral guidance that avoids “license by boilerplate” and preserves predictable contracting in innovation supply chains.

When patent disputes reach the International Trade Commission, the headlines usually focus on infringement, domestic industry, and exclusion orders. In Vicor Corporation v. International Trade Commission, however, another issue hums beneath the surface that could matter just as much for anyone who buys, sells, licenses, or integrates patented technology. The question is what happens when intellectual property license language hides inside routine purchase orders and follow-up emails. Can those snippets quietly become part of the deal and reallocate patent rights? Or does the law knock them out unless both sides truly agreed?

034 LES Motion for Leave to File Amicus Curiae Brief

The Question Before the Federal Circuit

At the heart of the appeal is a familiar commercial pattern. Two companies exchange standardized forms. One side’s purchase order includes broad intellectual property license language. The other side’s acknowledgement or terms disclaim any license by sale. Work proceeds. Performance happens. Who wins the so-called battle of the forms—and do those boilerplate IP terms stick?

The Uniform Commercial Code supplies a well-worn path. Section 2-207 tells courts what to do when parties exchange writings that do not match and then perform anyway. If both sides make their forms expressly conditional on assent and still go forward, Section 2-207(3) supplies the contract through the overlap of agreed terms, while conflicting boilerplate language drops out. The rest is filled by UCC gap fillers. That is the “knock-out” rule.

Our brief urges the Court to apply that framework cleanly to embedded license provisions. It also emphasizes a central principle of contract law: give effect to the intent of the parties. Sweeping patent grants should not be inferred from stray form language unless there is clear mutual assent.

“Absent clear mutual assent to a patent license, courts should decline to infer one.”

Contract Certainty at the Border

What this appeal is really about is contract certainty at the border. When fast-moving supply chains run on purchase orders, invoices, and email threads, everyone needs to know when a few words in boilerplate do—or do not—create a patent license. Add Section 337 remedies to the mix and the stakes rise sharply, because an exclusion order can reverberate through entire product lines and partner networks.

The LES amicus brief asks for technology-neutral rules that reward actual assent and predictable drafting over opportunism. The goal is straightforward: encourage deliberate licensing where parties mean it, avoid license by boilerplate where they do not, and keep the rules consistent whether the underlying technology is power electronics, data center gear, semiconductors, or AI systems.

Two themes carry the day. Predictable contract-formation rules protect the innovation economy. And Section 337 magnifies the cost of ambiguity—so clarity is not academic, it is operational.

Why This Matters for Clients and Colleagues

For counsel and commercial leads, the takeaways translate into simple habits. Put IP grants in deliberate agreements, not in the small print of a purchase order. Align front-end sales terms with back-end legal positions. Keep a clean record of assent, scope, and consideration. And when counterparties send paper that purports to add sweeping license language, acknowledge receipt, state your objection, and keep performance aligned with your form.

For innovators and in-house teams that rely on licensing to scale, predictable rules are the backbone of planning. They let you model portfolio value, decide when to share know-how, and integrate complementary technologies with confidence. Predictability also lowers the friction of cross-licensing, standards participation, and complex manufacturing relationships that underpin today’s systems.

Looking Ahead

For those who want to see how these principles are framed for the Court, the LES filing is concise and purposefully neutral. It is not about who should win this case. It is about how to keep the rules clear for everyone who builds and buys.

What to watch now is whether the Court articulates a uniform approach that treats boilerplate as boilerplate and preserves licensing for the agreements that actually say so. That kind of clarity is the difference between a contracting ecosystem you can rely on and one you have to litigate one form at a time.

The Wood IP Perspective

From our side of the table, this is exactly the space where we live. We draft, negotiate, and enforce software- and AI-heavy portfolios. We structure licensing so it is intentional, auditable, and defensible. We help commercial teams keep their forms and workflows aligned with their IP strategy, so supply chains move, and rights remain secure.

If you need a second set of eyes on form terms that touch IP grants or want to pressure-test how your operational paper would fare under a knock-out analysis, this is a good moment to do it. The law is settling. Your documents should be, too.