Federal Circuit Transfers Case Where an Issue of Federal Patent Law Was Not Necessarily Raised

In Acorda Therapeutics, Inc. v. Alkermes PLC, No. 23-2374 (Fed. Cir. July 25, 2025), the Federal Circuit held that it lacked jurisdiction over an appeal from a district court’s handling of a petition to modify an arbitration award regarding post‑expiration royalties.

Alkermes’s patent expired in July 2018; Acorda continued paying royalties and started including protests with each payment in July 2020, leading to arbitration. A tribunal declared the agreement unenforceable but only awarded recoupment of royalties made after protest. Acorda sought confirmation and modification in the district court, requesting recoupment of all royalties paid after the patent’s expiration. In its petition, Acorda requested modification of the arbitral award in part, which requires a judicial determination the tribunal erred. For this request, Acorda presented a patent-based ground and an alternative, non-patent-based ground for establishing the tribunal’s error. The district court denied Acorda’s request. Acorda appealed.

The Court considered whether Acorda’s right to relief necessarily depended on the resolution of a substantial question of federal patent law. The Court assessed jurisdiction based on the pleading—here, the petition—and found that it did not request confirmation based on any proposition of federal patent law. Likewise, the Court held the non-patent-based ground further provided a recoupment remedy without resorting to patent law. Accordingly, the Court transferred the case to the Second Circuit.