Home / Policy & Advocacy

Judicial Advocacy

In This Section

AIPLA files amicus briefs in cases that are important to its members, following a long tradition of judicial advocacy. Those briefs are accessible by clicking the relevant year of the case in the navigation column on the left side of this page.

The AIPLA Amicus Committee receives many requests from parties in litigation for the Association's amicus support, and the Committee considers and recommends to the Board of Directors the best cases for AIPLA to join and urge its positions on the cutting edge issues of the law. Although AIPLA welcomes the views of the parties to the dispute, the AIPLA amicus positions are the product of independent consideration by the Committee and the Board of Directors, based on the law and an their understanding of policy and legal questions in dispute.

Interested in Requesting AIPLA Consideration for Amicus Support?

For more information on how to request AIPLA's consideration for amicus support and to learn more about the process, please click HERE.

Learn More About the Amicus Committee Leadership

For information about the Amicus Committee and it's current leadership, please click HERE.

Click the tabs below to explore some of AIPLA's judicial advocacy:

2021

UNICOLORS, INC., v. H&M HENNES & MAURITZ, L.P., Docket No. 20-915, amicus brief filed 8/10/2021
August 10, 2021

On August 10, 2021, AIPLA filed an amicus brief in the Supreme Court case, Unicolors, Inc., v. H&M Hennes & Mauritz, L.P. (Case No. 20-915). The brief notes that the Ninth Circuit decision in the case increases the risk to copyright owners in that any erroneous legal conclusions set forth in a copyright application may have draconian repercussions, and if upheld, will likely increase the costs and burdens of copyright litigation. Two courses of action are suggested, including reversing the Ninth Circuit’s decision and recognizing the inherent power of district court judges to determine whether an allegation that a registrant has knowingly included inaccurate facts is reasonably plausible before referring a case to the Register of Copyrights.
EZAKI GLICO CO. v. LOTTE INTERNATIONAL AMERICA CORP., Docket No. 20-1817, amicus brief filed 7/29/2021
July 29, 2021

On July 29, 2021, AIPLA filed an amicus brief in the Supreme Court case, Ezaki Glico Co. v. Lotte International America Corp. (Case No. 20-1817). The brief addresses the Third Circuit’s conclusion that product design trade dress is functional, and therefore not protectable, if it is “useful.” The brief also questions the Third Circuit’s displacement of what remained of the traditional rule with principles of the separate doctrine of aesthetic functionality. Moreover, because trade dress is typically associated with ubiquitous products (especially the trade dress that is copied), it is likely that a trade dress owner would be forced to defend its trade dress in the Third Circuit under the new rule.
MINERVA SURGICAL, INC., v. HOLOGIC, INC., et al., Docket Nos. 20-440, amicus brief filed 3/1/2021
March 1, 2021

AIPLA's amicus brief generally supports keeping the doctrine of assignor estoppel without supporting either party’s position, but allowing for certain exceptions consistent with the findings in Westinghouse Elec. & Mfg. Co. v. Formica Insulation Co., 266 U.S. 342, 348 (1924). The brief distinguishes assignor estoppel from the doctrine of licensee estoppel that was abolished in Lear, Inc. v. Adkins, 395 U.S. 653 (1969), and also outlines the profound risks and cloud of uncertainty around assigned patents that might occur should the Court abolish assignor estoppel.

2020

UNITED STATES OF AMERICA, Petitioner, v. ARTHREX, INC. ET AL., Respondents. Case No. 19-1434, 19-1452, amicus brief filed 12/2/2020.
December 2, 2020

AIPLA’s brief supports reversal of the Federal Circuit’s decision and argues that Supreme Court precedent does not support such a rigid, factor-specific approach, instead favoring a flexible analysis to assess whether an officer is “principal” or “inferior.” The brief explains that, while the question is a close one, the totality of the circumstances under this flexible approach supports finding that APJs are inferior officers who are constitutionally appointed.
United States Patent and Trademark Office v. Booking.com B.V., U.S., No. 19-46, amicus brief filed 1/13/2020.
January 13, 2020

AIPLA argues that the addition of a generic top-level domain (gTLD) to an otherwise generic term can, under certain circumstances, create a protectable trademark. However, a per se rule that a mark consisting of a generic term and a gTLD is generic should be rejected by the Supreme Court.
Google LLC v. Oracle America Inc., U.S., No. 18-956, amicus brief filed 1/13/2020.
January 13, 2020

AIPLA asks the Supreme Court to hold that Java API software is eligible for copyright protection as a literary work; argues that the scope of copyright does not extend to the declaring code portions of the Java API as a method of operation under section 102(B); and contends that fair use factors must be weighted on a case-by-case basis.

2019

State of Georgia, et al. v. Public.Resource.Org, Inc., No. 18-1150, amicus brief filed 10/10/2019.
October 10, 2019

The specific works at issue in this case are the annotations contained in the Official Code of Georgia Annotated. The brief argues that these annotations are official, State-authored guidance to citizens on what the law is, and therefore should not be subject to copyright protection.
Romag Fasteners, Inc. v. Fossil, Inc., et al. No. 18-1233, amicus brief filed 09/20/2019.
September 20, 2019

AIPLA argues that that proof of willfulness should not be required for an accounting of profits under Section 35(a) of the Lanham Act.
Thryv, Inc. v. Click-to-Call Technologies, LP, U.S., No. 18-916, amicus brief filed 09/10/2019.
September 10, 2019

AIPLA argues that the Supreme Court should affirm the Federal Circuit’s en banc holding that 35 U.S.C. § 314(d) does not preclude judicial review of the Patent Trial and Appeal Board’s (Board’s) final determination of whether a petition for inter partes review is time-barred under 35 U.S.C. § 315(b).
Peter v. Nantkwest, U.S., No. 18-801, amicus brief filed 07/22/2019.
July 24, 2019

AIPLA argues that the Supreme Court should reject the Government’s argument that an applicant challenging a PTAB decision under Section 145 must also pay pro rata for PTO attorney and staff time, even if the applicant’s challenge is successful.
1-800 Contacts v. Federal Trade Commission, 2nd Cir., No. 18-3848, amicus brief filed 06/14/2019.
June 14, 2019

The Federal Trade Commission erred in multiple respects in holding that the parties’ agreed-upon advertising prohibitions unreasonably restrain trade in violation of the Federal Trade Commission Act, AIPLA argued in a June 14, 2019, amicus brief.
Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, amicus brief filed 5/1/2019.
May 7, 2019

This Amicus Brief addresses the question of what is required for a petitioner to establish that an asserted non-patent reference qualifies as a “printed publication” at the institution stage.
Iancu v. Brunetti, U.S., No. 18-302, amicus brief filed 2/25/2019.
February 26, 2019

The Lanham Act ban against registering immoral and scandalous marks violates the Free Speech Clause of the First Amendment because it has a viewpoint-discriminatory effect, AIPLA argued to the Supreme Court in a February 25, 2018 amicus brief.
Proppant Express Investments, LLC v. Oren Technologies, LLC., PTAB, Case No. IPR2018-00914, amicus brief filed 12/28/2018.
January 8, 2019

AIPLA on December 28, 2018, argued in an amicus brief to the Precedential Opinion Panel of the Patent Trial and Appeal Board that the circumstances in which the Director may grant a motion for self-joinder should be the exception, not the rule.

2018

Mission Product Holdings, Inc. v. Tempnology, LLC, U.S., No. 17-1657, filed 12/17/2018.
December 17, 2018

A debtor-licensor’s “rejection” of a license agreement— which “constitutes a breach of such contract,” 11 U.S.C. § 365(g)—does not terminate those licensee rights that would survive the licensor’s breach under applicable non-bankruptcy law, AIPLA argued to the Supreme Court in a December 17, 2018 amicus brief.
Return Mail, Inc. v. United States Postal Service, U.S., No. 17-1594, amicus brief supporting a petition for certiorari, filed 12/17/2018.
December 17, 2018

The Federal Circuit erroneously held that the government is a “person” under 35 U.S.C. §321(a) for purposes of petitioning the Patent Trial and Appeal Board to review the validity of a patent in a covered business method proceeding, AIPLA argued to the Supreme Court in a December 17, 2018 amicus brief.
Rimini Street, Inc. v. Oracle USA, Inc., U.S., No. 17-1625, amicus brief on the merits supporting neither party, filed 11/19/2018.
December 6, 2018

AIPLA on November 19, 2018, argued in an amicus brief to the Supreme Court that awards of “full costs” under Section 505 of the Copyright Act are limited to categories that courts may tax as costs under 28 U.S.C. §1920 and order paid to witnesses under 28 U.S.C. §1821.
Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., U.S., No. 17-1229, amicus brief on the merits supporting neither party, filed 9/4/2018.
September 4, 2018

The Federal Circuit erred in construing the on-sale provisions of 35 USC 102 by failing to recognize that a sale creates a prior art disclosure only if the sale makes the claimed invention “publicly available,” AIPLA argued in a September 4, 2018 amicus brief to the Supreme Court.
Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., U.S., No. 17-1229, amicus brief supporting a petition for certiorari, filed 3/30/2018.
March 30, 2018

The Federal Circuit failed to give effect to a revision of the “on sale” doctrine made by the America Invents Act (AIA) which imposed a “public availability” requirement not only on the fact of an early sale but also on the subject matter of the sale, i.e., the “claimed invention,” according to an AIPLA amicus brief supporting a petition for Supreme Court review. 
Booking B.V. v. The United States Patent and Trademark Office, 4th Cir., No. 17-2459, amicus brief filed 3/19/2018.
March 19, 2018

The Patent and Trademark Office has incorrectly interpreted the Lanham Act as requiring an award of attorneys' fees, win or lose, to the agency in district court proceedings reviewing decisions of the Trademark Trial and Appeal Board. 
WesternGeco LLC v. ION Geophysical Corp., U.S., No. 16-1011, amicus brief filed 3/5/2018.
March 5, 2018

A damages award for infringement under 35 U.S.C. § 271(f) should include foreign lost profits when the harm was proximately caused by domestic infringement, AIPLA argued in a Supreme Court brief filed March 5, 2018.

2017

Nantkwest, Inc. v. Matal, Fed. Cir., No. 2016-1794, 11/22/2017.
November 22, 2017

Section 145 of the Patent Act, which permits disappointed patent applicants to seek district court review of PTO decisions, does not permit awards of attorneys' fees to PTO lawyers participating in the proceeding, according to an AIPLA brief to the en banc Federal Circuit. 
Oil States Energy Services, LLC v. Greene's Energy Group, LLC, U.S., No. 16-712, 8/31/2017.
August 31, 2017

Congress's decision to permit the Patent Trial and Appeal Board to adjudicate and if necessary cancel issued patents does not violate the separation of powers doctrine or the Seventh Amendment, according to a brief filed August 31, 2017, at the Supreme Court. 
In re Silver, Sup. Ct. of Texas, No. 16-1682, 8/10/2017
August 9, 2017

Communications between a patent agent and a client should enjoy the protections of an attorney-client privilege when those communications occur within the scope of a patent agent’s authority under the Patent Act, according to an AIPLA letter brief filed August 10, 2017, in the Supreme Court of Texas. 
Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., Fed. Cir., Nos. 16-1284, 7/14/2017
July 14, 2017

A Federal Circuit panel misconstrued the statutory language and legislative history of 35 U.S.C. 102(a)(1), as amended by the America Invents Act (AIA), when it invalidated a patent based on a press release and SEC filing about a sales agreement by the patent owner, according to an AIPLA amicus brief urging en banc review of the case. 
WiFi One, LLC v. Broadcom Corp., Fed. Cir., No. 2015-1944, amicus brief filed 2/23/2017
February 23, 2017

The statute (35 U.S.C. 314(d)) barring appeals of Patent Trial and Appeal Board decisions to institute inter partes review proceedings (IPR) does not apply to the statute (35 U.S.C. 315(b)) prohibiting the Board from instituting an IPR on a petition filed more than one year after the petitioner was sued for infringement, according to an AIPLA amicus brief to the en banc Federal Circuit. 
TC Heartland LLC v. Kraft Foods Group Brands LLC, U.S., No. 16-341, amicus brief filed 2/6/2017
February 6, 2017

The Federal Circuit correctly interpreted the general venue statute at 28 U.S.C. 1391 as providing a definition of “resides” in the patent venue statute at 28 U.S.C. 1400(b). 
Impression Products, Inc. v. Lexmark International, Inc., U.S., No. 15-1189, amicus brief filed 1/24/2017
January 24, 2017

The Supreme Court's decisions in Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2012), and Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008), require no change to the Federal Circuit law of international patent exhaustion and conditional sales, AIPLA argued to the Supreme Court in a January 24, 2017 amicus brief.  <div> </div>

Judicial Advocacy Archives

To see amicus briefs filed by AIPLA from previous years, please click here

Recent Advocacy

AIPLA Submits Comments Regarding the Draft Revision to the Chinese Patent Examination Guidelines (Draft for Solicitation of Comments)
September 21, 2021

On September 21, 2021, AIPLA submitted comments to the China National Intellectual Property Administration (CNIPA) regarding the Draft Revision to the Chinese Patent Examination Guidelines (Draft for Solicitation of Comments). AIPLA provided comments and suggestions on more than fifteen guidelines outlined in a table format for readability. With respect to patent term compensation due to unreasonable delay at the CNIPA, drug patent term extension, and open license, in addition to seeking various classifications, AIPLA submitted a number of suggestions.
UNICOLORS, INC., v. H&M HENNES & MAURITZ, L.P., Docket No. 20-915, amicus brief filed 8/10/2021
August 10, 2021

On August 10, 2021, AIPLA filed an amicus brief in the Supreme Court case, Unicolors, Inc., v. H&M Hennes & Mauritz, L.P. (Case No. 20-915). The brief notes that the Ninth Circuit decision in the case increases the risk to copyright owners in that any erroneous legal conclusions set forth in a copyright application may have draconian repercussions, and if upheld, will likely increase the costs and burdens of copyright litigation. Two courses of action are suggested, including reversing the Ninth Circuit’s decision and recognizing the inherent power of district court judges to determine whether an allegation that a registrant has knowingly included inaccurate facts is reasonably plausible before referring a case to the Register of Copyrights.
AIPLA Submits Joint Letter Expressing Concern About USPTO Funding in FY 2022
July 29, 2021

On July 29, 2021, the American Intellectual Property Law Association (AIPLA) and the Intellectual Property Owners Association (IPO) submitted a joint letter to Senators Leahy, Shaheen, Tillis, and Moran expressing concern over resources appropriated to the U.S. Patent and Trademark Office (USPTO) in FY 2022. The letter asserted that it is imperative for the USPTO to receive access to all its fees, urging passage of a funding measure that reflects the intent of the Leahy-Smith America Invents Act to fund the USPTO at a level equal to fee collection estimates.
EZAKI GLICO CO. v. LOTTE INTERNATIONAL AMERICA CORP., Docket No. 20-1817, amicus brief filed 7/29/2021
July 29, 2021

On July 29, 2021, AIPLA filed an amicus brief in the Supreme Court case, Ezaki Glico Co. v. Lotte International America Corp. (Case No. 20-1817). The brief addresses the Third Circuit’s conclusion that product design trade dress is functional, and therefore not protectable, if it is “useful.” The brief also questions the Third Circuit’s displacement of what remained of the traditional rule with principles of the separate doctrine of aesthetic functionality. Moreover, because trade dress is typically associated with ubiquitous products (especially the trade dress that is copied), it is likely that a trade dress owner would be forced to defend its trade dress in the Third Circuit under the new rule.
AIPLA Submits Comments on Notice of Proposed Rulemaking Regarding Changes to Implement Provisions of the Trademark Modernization Act of 2020
July 19, 2021

On July 19, 2021, AIPLA submitted comments to the United States Patent and Trademark Office (USPTO) regarding the Notice of Proposed Rulemaking (NPRM) Regarding Changes to Implement Provisions of the Trademark Modernization Act (TMA) of 2020. The comments addressed seven aspects of the NPRM: (1) ex parte expungement and reexamination proceedings; (2) the petition filing fee; (3) the identification of the real party in interest in a petition; (4) flexible response periods; (5) letters of protest; (6) attorney recognition; and (7) the proposed burden hours for private sector respondents.