Federal Circuit Denies Appellate Jurisdiction Based On Alternative Ground For Relief

• Published date: 06 August 2025
• Law Firm: Sheppard Mullin Richter & Hampton
• Author: Don Geiger

In Acorda Therapeutics, Inc. v. Alkermes PLC, the Federal Circuit held that it did not have appellate jurisdiction to review a decision by the district court in the Southern District of New York not to modify an arbitral award of patent royalties. Though the Appellant, Accorda Therapeutics, Inc., presented a first ground to modify the arbitral award based in patent law, its presentation of a second and alternative ground based on contract law effectively undermined the Federal Circuit's appellate jurisdiction.

Background

Acorda Therapeutics, Inc. developed Ampyra'a treatment for patients with multiple sclerosis. Alkermes PLC owned U.S. Patent No. 5,540,938 (the "'938 Patent"), which covered a sustained-release formulation of the active ingredient in Ampyra.

Beginning in 1998, Acorda and Alkermes formed a joint venture, with the two firms eventually entering into various licensing agreements covering the '938 Patent. Under these licensing agreements Acorda was obligated to pay Alkermes an 18% royalty on net sales of Ampyra.

The '938 Patent expired in July 2018 and generic versions of Ampyra then began entering the market. In December 2019, Acorda requested an adjustment to the royalties in light of the '938 Patent expiring, but Alkermes declined. Acorda continued to pay royalties without protest until July 2020, when Acorda began including an explicit protest with its royalty payments.

Also in July 2020, Acorda filed for arbitration under New York law, pursuant to the arbitration terms of the underlying licensing agreements. In November 2022, after completion of discovery and summary judgment, the arbitration tribunal concluded that, under SCOTUS precedent in Brulotte v. Thys Co., 379 U.S. 29, 30-34 (1964), the underlying license agreements' royalty provisions were unenforceable upon the '938 Patent's expiration.. The arbitration tribunal awarded Acorda recovery of post-expiration royalty payments paid under protest. However, based on New York contract law doctrines barring recovery of payments made with "full knowledge of the facts, even if made under mistake of law," the arbitration tribunal declined to award Acorda recovery of royalties paid without protest.

In January 2023, Acorda petitioned the district court in the Southern District of New York to confirm the arbitral award recouping Acorda's royalties paid under protest, and to modify the arbitral award to further award recovery of royalties paid without protest.

Acorda presented two alternate grounds supporting its...