Judicial Advocacy

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

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

Judicial Advocacy 2018
Judicial Advocacy 2017

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

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. While Section 145 requires plaintiffs to pay “all expenses” of the proceeding, that phrase cannot be construed to include attorneys' fees, and it has not been so construed until recently, even though it has been part of the law for over 100 years. The Supreme Court has repeatedly held that Congress must be clear and explicit when it intends legislation to deviate from the common law, which has never included fee shifting. The PTO’s interpretation of Section 145 to require plaintiffs to pay its attorneys’ fees, win or lose, is a dramatic departure from common law that lacks such clear and explicit expression by Congress.

Oil States Energy Services, LLC v. Greene's Energy Group, LLC, U.S., No. 16-712, 8/31/2017.

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. The brief argued that Congress is authorized by Article I of the Constitution to implement the rights it creates with limited adjudication by the expert agencies charged with administering those rights. The separation of powers doctrine is not violated and the judiciary's role under Article III of the Constitution is not undermined because: Congress is the source of the rights adjudicated by the non-Article III tribunal, the adjudication is confined to issues of patentability, and the adjudication is ultimately reviewable by Article III courts.

In re Silver, Sup. Ct. of Texas, No. 16-1682, 8/10/2017.

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. The letter brief cites Sperry v. State of Florida ex rel. Florida Bar, 373 U.S. 379 (1963), to show that a patent agent is a person authorized to practice federal law, satisfying the definition of a “lawyer” for privilege purposes under Texas rules of evidence. The letter brief also points to federal recognition of the patent agent privilege in In re Queen’s Univ. at Kingston, 820 F.3d 1287 (Fed. Cir. 2016).

Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., Fed. Cir., Nos. 16-1284, 7/14/2017.

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. The brief explains that the panel failed to recognize that the AIA abandoned the so called "on-sale bar" for sales more than a year before the filing date, instead establishing the prior art effect for sales available to the public before the application's "effective filing date," defined in 35 U.S.C. 100(i). The panel opinion conflicts with the premises of transparency and predictability that underlie the changes enacted by the AIA, according to the brief.​​​​​​

​WiFi One, LLC v. Broadcom Corp., Fed. Cir., No. 2015-1944, amicus brief filed 2/23/2017.

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)) prohibiti​ng 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. The brief noted that the non-appealability provision in Section 314 is limited to determinations “under this section,” which are primarily concerned with the sufficiency of the petition. The brief explained that the time bar under Section 315, by contrast, is an express limitation on the authority of the Board to institute an IPR.​​​​​​

​TC Heartland LLC v. Kraft Foods Group Brands LLC,​ U.S., No. 16-341, amicus brief filed 2/6/2017.

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). Although the Supreme Court in Forco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957), found the two statutes worked independently, Congress changed the law in 1988 by adding to the general venue statute “for purposes of venue under this chapter.” The deletion of that phrase in 2011 did not return the law to the Fourcorule because it was replaced with the phrase “for all venue purposes.” Nor does the added phrase “except as otherwise provided by law” adopt the Supreme Court’s Fourco rule.​​​

Impression Products, Inc. v. Lexmark International, Inc., U.S., No. 15-1189, amicus brief filed 1/24/2017.

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. The brief explains that Kirtsaeng, interpreting a copyright statute stating the “first sale” doctrine, does not control the longstanding patent exhaustion doctrine set out in Jazz Photo Corp. v. International Trade Commission, 264 F.3d 1094 (Fed. Cir. 2001). It further explains that Quanta, which found that sale limitations in a Master Agreement rather than in a patent license failed to avoid patent exhaustion, was a case-specific application of the rules of conditional sales set out in Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700 (Fed. Cir. 1992)​.​​​​​​

Rimini Street, Inc. v. Oracle USA, Inc.​, U.S., No. 17-1625, amicus brief on the merits supporting neither party, filed 11/19/2018. 

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. Beyond the merits of statutory interpretation arguments, the brief maintained that the policy of incentivizing prompt copyright registration with extraordinary remedies is undermined by exempting copyright costs from those Title 28 limitations.  Congress permitted in 17 U.S.C. §412 the extraordinary remedies of statutory damages and attorney’s fees only where registration was made before infringement commenced or within three months of first publication. Absent the limitations of Sections 1920 and 1821, extraordinary cost awards may circumvent those statutory incentives to register.  The brief also contends that allowing awards of “full costs” without limitation gives courts no guidance about the factors to be considered, which is likely to increase the uncertainty about cost awards that already exists among various courts. 

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. 

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. When Congress enacted the AIA, it replaced the prompt filing inducement of patent forfeiture with the prompt filing inducement of a first-inventor-to-file system, but retained the policy of deterring actions (such as sale or public use) by prescribing circumstances when such actions become prior art against the claimed invention. This feature of the legislation advanced the AIA objectives of bringing U.S. law closer to patent systems around the world and of making the U.S. patent system simpler, more objective, and more transparent than a first-to-invent system. 


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.

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. The revision was intended to bring transparency, objectivity, and predictability to the patent system, consistent with the AIA’s conversion of U.S. patent law from a “first to invent” system to a “first inventor to file.” Although the statutory term “available to the public” may need case-by-case development for different types of inventions, this cannot justify turning a blind eye to the express language of the statute. That language, at a minimum, requires that the “claimed invention”—with all of its claim limitations—be “available to the public.” The Federal Circuit decision will convert what should be a legal issue in most cases into a fact-intensive issue in many cases, not only jeopardizing the prior investment in inventions claimed in the patent(s)-in-suit, but also increasing the time and expense required for discovery, motion practice, trial, and appellate review.

Booking B.V. v. The United States Patent and Trademark Office, 4th Cir., No. 17-2459, amicus brief filed 3/19/2018.

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. On its face, the statutory phrase “all expenses of the proceeding” found in Section 21(b)(3), 15 U.S.C. 1071(b)(3), does not include attorneys’ fees, which are addressed in Section 35 of the Lanham Act, 15 U.S.C. § 1117. Section 21(b)(3) neither defines “expenses” nor otherwise indicates that the word includes reimbursement of PTO fixed costs. The Supreme Court has held that interpretations of the law that depart from common law must be supported by clear and explicit language that Congress intended to do so, and there is no such support for the PTO interpretation of this language. ​

WesternGeco LLC v. ION Geophysical Corp., U.S., No. 16-1011, amicus brief filed 3/5/2018.

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. Filed in support of neither party, the brief argues that the Supreme Court should reverse the Federal Circuit and the categorical rule it established in this case against recovering foreign lost profits. The brief also maintains that including harm from foreign conduct for full compensation under § 284 does not impermissibly extend U.S. law extraterritoriality.

Judicial Advocacy Archives

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