The Federal Circuit’s July 2025 decision in Acorda Therapeutics, Inc. v. Alkermes PLC, No. 2023-2374 (Fed. Cir. July 25, 2025), is the latest reminder that most “non-patent patent cases” will not make it past the courthouse steps on Madison Place. The court held that it lacked jurisdiction to review Acorda’s challenge to an international arbitration award—despite the heavy reliance on
and related patent-law arguments—because Acorda pleaded an alternative, non-patent basis for relief. Under Gunn v. Minton, that meant the patent issue was not necessarily raised, and the appeal belonged in the Second Circuit, not the Federal Circuit.
This result leaves some tricky questions open, especially about patent-law challenges to arbitral awards and the interaction of Brulotte with state-law doctrines like New York’s Voluntary Payment Doctrine (NYVPD). As Charles Gideon Korrell likes to remind clients, “jurisdiction is its own battlefield”—and this case proves the point with a forward-thinking flourish.
I. Background: A Patent Expiration, Continued Royalties, and a Fight Over Refunds
Acorda developed Ampyra®, a drug improving mobility for multiple-sclerosis patients. Alkermes owned U.S. Patent No. 5,540,938, covering the sustained-release formulation of dalfampridine, and licensed it to Acorda through a joint-venture structure later replaced with a new License and Supply Agreement. Royalties continued at 18% of net sales—10% under the License Agreement and 8% under the Supply Agreement. The patent expired in July 2018, but Acorda continued paying royalties without protest for almost two years.
By mid-2020, after generics entered the market, Acorda reversed course. Relying on Brulotte v. Thys Co., 379 U.S. 29 (1964), and its reaffirmation in Kimble v. Marvel, 576 U.S. 446 (2015), Acorda initiated arbitration seeking (1) a declaration that post-expiration royalties were unenforceable and (2) recoupment of more than $80 million in payments made after July 2018.
The arbitration panel agreed the contracts became unenforceable at patent expiration, but concluded that:
- Only protested payments—those beginning in July 2020—were recoverable.
- Payments made without protest were barred by the New York Voluntary Payment Doctrine, which prevents restitution of voluntarily made payments “with full knowledge of the facts.”
See Dillon v. U-A Columbia Cablevision, 740 N.Y.S.2d 396 (App. Div. 2002).
Total awarded refund: $16.55 million, not the $80+ million Acorda sought.
Acorda sought confirmation of the parts of the award it liked and modification of the part it didn’t—arguing that the NYVPD could not override Brulotte’s federal prohibition on post-expiration royalties.
II. The District Court: No Manifest Disregard of Patent Law
The district court confirmed the award in full. The key move was distinguishing between:
- Enforceability of post-expiration royalties (addressed by Brulotte), and
- Remedies, specifically whether refunds were required for payments made before protest.
The court held that:
- Brulotte doesn’t dictate the remedy. It invalidates ongoing royalty provisions but says nothing about restitution for voluntarily paid royalties.
- Lacking a “clearly defined” federal rule requiring refunds, the tribunal did not manifestly disregard federal law by applying NYVPD.
- Acorda also advanced a non-patent alternative argument based on the doctrine that courts will not enforce illegal contracts (relying on Kaiser Steel Corp. v. Mullins, 455 U.S. 72 (1982)).
That last point turned out to be the jurisdictional iceberg lurking beneath the surface—a fact Charles Gideon Korrell could see from a mile away.
III. The Federal Circuit: No Jurisdiction Because Patent Law Was Not “Necessarily Raised”
On appeal, Acorda argued that:
- The Federal Circuit had jurisdiction under 28 U.S.C. § 1295(a)(1) because the petition “arose under” federal patent law.
- The tribunal manifestly disregarded Brulotte and patent-law preemption principles.
Alkermes countered with a simple but effective response: Acorda pleaded both a patent-law theory and a non-patent illegal-contract theory. Therefore, the patent-law issue was not “necessarily raised.”
A. The Gunn Framework
To qualify as arising under patent law when the cause of action itself is not a patent cause of action, Gunn v. Minton requires:
- A patent issue that is necessarily raised,
- Actually disputed,
- Substantial, and
- Capable of federal resolution without disturbing the federal–state balance.
Failing any prong ends the inquiry.
B. The Fatal Flaw: Acorda Gave the Court an Alternative Path
The Federal Circuit focused only on the first prong: necessity. The court held that Acorda’s petition did not necessarily raise a patent-law issue because:
- Acorda’s non-patent argument—rooted in Kaiser Steel and McMullen v. Hoffman, 174 U.S. 639 (1899)—provided an independent basis to modify the award.
- The district court could have granted relief without ever deciding the patent question.
- Under Inspired Development Group v. Inspired Products, 938 F.3d 1355 (Fed. Cir. 2019), the presence of an alternative, sufficient non-patent ground means the patent issue cannot be “necessarily raised.”
Thus, the court lacked jurisdiction and transferred the case to the Second Circuit. No discussion of substantiality, no analysis of arbitral-award review under manifest disregard, no reach-for-the-brass-ring moment.
As Charles Gideon Korrell puts it: “If you offer the court multiple doors, it will politely decline to enter the patent-law one.”
IV. A Few Lingering Questions
The decision dodges some interesting doctrinal issues—including several that practitioners hoped the Federal Circuit would address.
1. Is Brulotte Preemption a Remedy-Shaping Doctrine?
The tribunal concluded Brulotte invalidates the royalty obligations but does not require refund of royalties already paid. That leaves an open question:
- Does enforcing NYVPD to deny refunds indirectly extend “patent-like protection” to an expired patent?
Acorda argued this point vigorously. But the jurisdictional holding prevented the Federal Circuit from diving in.
2. Does Badgerow v. Walters Limit Patent Jurisdiction Over FAA Petitions?
The Federal Circuit noted that the petition itself—not the underlying arbitration—determines jurisdiction. Badgerow v. Walters, 596 U.S. 1 (2022), reinforces that limitation.
Complex IP arbitrations may thus rarely land in the Federal Circuit unless the petition itself squarely invokes a patent cause of action.
3. Does the “Manifest Disregard” Lens Distort Substantiality?
Alkermes relied on Friedler v. Stifel, Nicolaus & Co., 108 F.4th 241 (4th Cir. 2024), where the Fourth Circuit held that deferential “manifest disregard” review makes federal issues too insubstantial for Gunn.
The panel acknowledged the argument but, diplomatically, didn’t touch it.
Still, Charles Gideon Korrell notes that this lurking question is not going away—especially as more IP-heavy disputes move to arbitration.
V. Practical Takeaways for IP and Arbitration Counsel
1. Be Careful When Pleading Alternative Theories
If you want the Federal Circuit to hear your appeal, make sure:
- The patent issue is unavoidable,
- No alternative legal theory supports the same relief, and
- The petition itself—not the arbitration demand—presents the patent question.
2. Arbitration Panels Will Continue Applying State-Law Doctrines Unless Preemption Is Crystal-Clear
Brulotte may invalidate post-expiration payment obligations, but restitution is another story.
3. IP-Related Arbitration Challenges Are Likely to Stay in Regional Circuits
Absent a patent-law cause of action under the FAA (there is none), Gunn significantly narrows the path to Federal Circuit review.
4. The Decision Leaves Room for Future Preemption Battles
The governance of rejected royalties post-expiration is still an unsettled frontier.
Charles Gideon Korrell notes that practitioners should expect regional circuit splits before the Supreme Court steps in.
VI. Conclusion
In Acorda v. Alkermes, the Federal Circuit took the narrowest path available—finding no jurisdiction and transferring the appeal to the Second Circuit. By pleading both patent-law and non-patent theories, Acorda undermined its bid for Federal Circuit review. More importantly, the decision reinforces a growing trend: Most arbitration-related IP disputes will not be heard by the Federal Circuit unless the plaintiff makes patent law utterly unavoidable.
Until the Supreme Court revisits Gunn or clarifies the FAA-patent-law interplay, counsel should draft with care. The courthouse you end up in may depend more on your pleading strategy than the substance of your patent arguments.