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Judicial Advocacy

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AIPLA files amicus briefs in litigation that is 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 screens 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:

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. <br /> <div> </div>

Judicial Advocacy Archives

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

Recent Advocacy

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.
AIPLA Comments on Revised Trademark Examination Guide 3-19 Examination of Specimens in Commerce: Digitally Created/Altered or Mockup Specimens
October 12, 2020

AIPLA appreciates the Trademark Office’s efforts to address the issue of fraudulent trademark specimens that incorporate digital alterations, thereby creating the false impression of use of a trademark in the marketplace. We also appreciate the Office’s transparency in providing clarity as to how the USPTO and Examiners will address fraudulent specimens. While AIPLA further recognizes the need for the USPTO to focus its attention on the authenticity of submitted specimens and whether they show marks as actually used in commerce as required by the Trademark Act, AIPLA has suggestions and comments on the revised Examination Guide.
AIPLA Comments on Proposed Rule Changes in Representation of Others Before the USPTO
September 29, 2020

AIPLA appreciates the USPTO’s willingness to continuously improve the conduct rules applicable to practice before the USPTO. AIPLA previously provided substantive comments to the last major revision of the USPTO Rules of Professional Conduct (“USPTO Rules”), which overhauled the landscape of practice before the USPTO from being based upon the former American Bar Association (“ABA”) Code of Professional Responsibility to the more current Model Rules of Professional Conduct. Within those comments, AIPLA addressed concerns regarding the confidentiality rules. In response to comments, USPTO clarified the ability of a representative to withdraw in certain situations. See, e.g., 78 FR 21090.
AIPLA's Comments on the H.R. 6196, the Trademark Modernization Act of 2020
September 8, 2020

AIPLA supports the Trademark Modernization Act, legislation amending the federal Lanham Act to authorize the administrative invalidation by the Director of the U.S. Patent and Trademark Office of registrations covering marks that either have never been used in commerce, or are not used in commerce by the relevant date under the statute for obtaining a registration.
Comments Submitted Pursuant to Sovereign Immunity Study: Notice and Request for Public Comment, 85 Fed. Reg. 34,252
September 2, 2020

AIPLA's comments in response to the above-referenced U.S. Copyright Office Notice and Request for Public Comment, in the wake of the U.S. Supreme Court’s ruling in <em>Allen v. Cooper, 140 S.Ct. 994</em>