Acorda Therapeutics, Inc. v. Alkermes Plc

United States Court of Appeals
for the Federal Circuit
______________________
ACORDA THERAPEUTICS, INC.,
Petitioner-Appellant
v.
ALKERMES PLC,
Respondent-Appellee
______________________
2023-2374
______________________
Appeal from the United States District Court for the
Southern District of New York in No. 1:23-cv-00223-NRB,
Judge Naomi Reice Buchwald.
______________________
Decided: July 25, 2025
______________________
G ARRARD R. B EENEY , Sullivan & Cromwell LLP, New
York, NY, argued for petitioner-appellant. Also repre-
sented by STEPHEN J. ELLIOTT , MORGAN R OSE K NUDTSEN;
BRITTANY BRUNS , Washington, DC.
BRIAN T IMOTHY B URGESS , Goodwin Procter LLP, Wash-
ington, DC, argued for respondent-appellee. Also repre-
sented by J ORDAN B OCK, CHRISTOPHER T. HOLDING, Boston,
MA.
______________________
Before T ARANTO, HUGHES , and STARK, Circuit Judges.
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ACORDA THERAPEUTICS, INC. v. ALKERMES PLC 2
T ARANTO, Circuit Judge.
Acorda is the developer of Ampyra®, a drug used to
treat patients with multiple sclerosis. Until 2018, Alker-
mes owned a patent covering Amprya’s active ingredient.
Alkermes licensed the patent to Acorda in return for roy-
alty payments and contracted to supply Acorda with the
active ingredient in return for royalty payments. In July
2018, the licensed patent expired, but Acorda continued to
make royalty payments—without protest until July 2020
and thereafter under protest.
Acorda initiated an international arbitration, pursuant
to the parties’ agreement, in July 2020. It sought (a) a
judgment that, when the patent expired, the royalty provi-
sions became unenforceable under federal law based on
Brulotte v. Thys Co., 379 U.S. 29, 30–34 (1964); see also
Kimble v. Marvel Entertainment, LLC, 576 U.S. 446, 449,
458–60 (2015) (declining to overrule Brulotte), and (b) re-
coupment of royalties paid since July 2018. The arbitration
tribunal (Tribunal) agreed that the provisions were unen-
forceable but concluded that Acorda was entitled to recoup
only payments made under formal protest. Amended Find-
ings of Fact, Conclusions of Law, and Final Reasoned
Award, Acorda Therapeutics, Inc. v. Alkermes PLC, Arbi-
tration No. 01-20-0010-8421 (Am. Arb. Assoc. Int’l Ctr.
Disp. Resol. Apr. 11, 2022) (Award); J.A. 33–55. Acorda
filed the legal action now before us by petitioning the
United States District Court for the Southern District of
New York to confirm all the Tribunal’s rulings except for
the denial of recoupment of the unprotested 2018–2020
payments, which Acorda sought to modify on the ground
that the Tribunal acted in “manifest disregard” of federal
patent law and a non-patent-law principle of law. Alker-
mes disputed the modification request only. The district
court rejected Acorda’s manifest-disregard arguments and
confirmed the award in full. Acorda Therapeutics, Inc. v.
Alkermes PLC, No. 23-cv-223, 2023 WL 5003767, at *1
(S.D.N.Y. Aug. 4, 2023) (Decision); J.A. 1–20.
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ACORDA THERAPEUTICS, INC. v. ALKERMES PLC 3
Acorda appealed, asserting that this circuit has appel-
late jurisdiction over the appeal and should reverse the dis-
trict court’s denial of the 2018–2020 recoupment it sought.
We conclude that Acorda’s petition to modify the arbitral
award on the ground that the arbitration panel manifestly
disregarded the law is not within our jurisdiction under 28
U.S.C. § 1295(a)(1). We therefore transfer the case to the
United States Court of Appeals for the Second Circuit.
I
A
Acorda is the developer of Ampyra®, a drug used to im-
prove the walking ability of patients with multiple sclero-
sis. Decision, at *1; J.A. 357. Alkermes owned now-expired
U.S. Patent No. 5,540,938, which claimed a sustained-re-
lease formulation of the active ingredient in Ampyra, dal-
fampridine. Decision, at *1. In 1998, Acorda and Alkermes
entered into a joint-venture agreement, under which Alk-
ermes licensed the ’938 patent to Acorda, and supplied the
active ingredient, for an ongoing royalty of 18% of the net
sales price of drugs sold as part of the joint venture, among
other conditions. Award, at 6–7; J.A. 320. In 2003, Acorda
and Alkermes dissolved the joint venture due to regulatory
concerns and entered into a new agreement with two con-
tracts. Award, at 7; J.A. 329–30. Under those two con-
tracts, Acorda, as seller of Ampyra, would pay a 18%
royalty to Alkermes, structured as a 10% royalty under a
License Agreement plus an 8% royalty under a Supply
Agreement. J.A. 154; J.A. 214–15; J.A. 329–30. In 2010,
upon FDA approval of the relevant new drug application,
Acorda began to market Ampyra. J.A. 357.
On July 30, 2018, the ’938 patent expired and generic
versions of Ampyra soon entered the market. J.A. 365, 388.
In December 2019, Acorda contacted Alkermes and re-
quested an adjustment to the royalties in light of the expi-
ration, but Alkermes refused. J.A. 265; J.A. 391, 394.
Acorda continued to make payments, without (as the
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ACORDA THERAPEUTICS, INC. v. ALKERMES PLC 4
parties accept before us) stating a formal protest. Acorda
Opening Br. at 11–12; Alkermes Response Br. at 9; J.A.
265; J.A. 628 n.5. In April 2020, Acorda again asserted to
Alkermes that the royalty provision of the License Agree-
ment was unenforceable due to the expiration of the ’938
patent, citing Brulotte, 379 U.S. at 32, but Acorda contin-
ued to make payments without a protest. J.A. 390, 394. In
July 2020, two years after the ’938 patent expired, Acorda
began to include a protest with each payment made under
the License Agreement, while not doing so for payments
made under the Supply Agreement. J.A. 265; J.A. 446.
B
On July 28, 2020, Acorda filed with the American Ar-
bitration Association’s International Centre for Dispute
Resolution a Demand for Arbitration with Alkermes, pur-
suant to arbitration terms of the License and Supply
Agreements. Award, at 1–2; J.A. 83. Among other claims,
Acorda sought a declaration that the licensing royalty pro-
vision was unenforceable after the expiration of the ’938
patent in July 2018, and a return of royalties Acorda had
paid after July 2018, invoking unjust enrichment as a basis
for such recoupment. Award, at 2–3. As the parties agree,
New York law governed the arbitration. Id. at 18 n.10.
On November 7, 2022, after discovery, summary-judg-
ment, and other proceedings, the Tribunal issued an arbi-
tral award. See generally Award. It agreed with Acorda
that, under Brulotte, the License Agreement’s royalty pro-
vision was unenforceable upon the expiration of the ’938
patent. Id. at 8–16; see Brulotte, 379 U.S. at 32 (“[A] pa-
tentee’s use of a royalty agreement that projects beyond the
expiration date of the patent is unlawful per se.”). It then
determined that “the License and Supply Agreements are,
for all intents and purposes, one agreement” and thus that
the Supply Agreement’s royalty provision was also unen-
forceable. Award, at 16–17.
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ACORDA THERAPEUTICS, INC. v. ALKERMES PLC 5
The Tribunal then turned to the question of monetary
remedies—specifically, whether Acorda was entitled to re-
cover any payments made after patent expiration under a
theory of “unjust enrichment/restitution.” Id. at 17. Re-
garding the License Agreement, the Tribunal applied the
New York Voluntary Pay Doctrine (NYVPD)—under which
“payments that are ‘made with full knowledge of the facts,
even if made under mistake of law,’ are not recoverable”—
to bar recovery of the payments that Acorda had made
without protest. Id. at 18 (quoting Dillon v. U-A Columbia
Cablevision of Westchester, Inc., 740 N.Y.S.2d 396, 397
(App. Div. 2002), aff’d, 100 N.Y.2d 525 (2003)). Earlier, in
a summary-judgment ruling, the Tribunal had relied for
the same conclusion on a provision of the patent license
stating that “[a]ll payments received by [Alkermes] from
Acorda under Article 5 shall be non-refundable, subject to
the provisions of Article 5.9.5 [concerning year-end adjust-
ments].” Opinion and Order (Order #23) Regarding Mo-
tions for Summary Judgment at 11–12, Acorda
Therapeutics, Inc. v. Alkermes PLC, Arbitration No. 01-20-
0010-8421 (Am. Arb. Assoc. Int’l Ctr. Disp. Resol. Apr. 11,
2022); J.A. 273–74 (discussing Article 5 at J.A. 156). The
Tribunal did, however, award Acorda $16,554,267 for the
payments Acorda made under protest beginning in July
2020. Award, at 18. Regarding the Supply Agreement, the
Tribunal concluded that Acorda could not recover any roy-
alty payments because Acorda had never protested those
royalties in its letters to Alkermes, and “New York’s law
requires the protest to be in writing and explicit as to the
rights being asserted.” Id. at 18–20.
C
In January 2023, Acorda initiated the lawsuit now be-
fore us. Petition to Confirm Arbitral Award in Part and
Modify in Part, Acorda Therapeutics, Inc. v. Alkermes PLC,
No. 23-cv-223 (S.D.N.Y. Jan. 10, 2023), Dkt. No. 1 (Peti-
tion); J.A. 77–95. Because Alkermes is a foreign corpora-
tion under the Convention on the Recognition and
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ACORDA THERAPEUTICS, INC. v. ALKERMES PLC 6
Enforcement of Foreign Arbitral Awards (New York Con-
vention), June 10, 1958, 21 U.S.T. 2517, 330 U.N.T.S. 38,
Acorda could and did invoke the New York Convention’s
enabling statute, chapter 2 of the Federal Arbitration Act
(FAA), 9 U.S.C. §§ 201–208. Petition, at 2–3. It invoked
the district court’s diversity jurisdiction, 28 U.S.C.
§ 1332(a)(2), and the court’s jurisdiction under 9 U.S.C.
§ 203. Petition, at 3. To the extent that Acorda sought con-
firmation of the award, it invoked 9 U.S.C. § 207;1 and to
the extent it sought modification, it invoked 9 U.S.C. § 11
(also citing § 10, regarding vacatur). Petition, at 1–3. Un-
der 9 U.S.C. § 208, the chapter 1 provisions at issue apply
to this chapter 2 action; no party argues that any such pro-
vision is inconsistent with chapter 2 or the New York Con-
vention.
The modification of the award that Acorda sought was
to order recoupment from Alkermes of the payments
Acorda made without formal protest upon the July 2018
expiration date of the patent (an amount exceeding $65
million). Petition, at 1, 16, 19. Acorda took as its starting
point the Tribunal’s recognition that Brulotte rendered un-
enforceable the patent-royalty payment obligation; based
on that premise, Acorda contended that the Tribunal “man-
ifestly disregarded the law” in curtailing the remedy, i.e.,
“by denying Acorda damages” that included backward-
looking recoupment of unprotested post-expiration pay-
ments. Id. at 16; see also id. at 1–2 (asserting that the Tri-
bunal “manifestly disregarded applicable law by
supplanting federal law . . . with a state law doctrine” and
“used a New York judge made law (the [NYVPD]) to cir-
cumvent the full application of the federal law”). The
1 Acorda could also have cited the materially similar
9 U.S.C. § 9, the confirmation provision of chapter 1. The
district court, when discussing confirmation, cited 9 U.S.C.
§ 9. Decision, at *7.
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ACORDA THERAPEUTICS, INC. v. ALKERMES PLC 7
Petition expressly refers, for explanation of its manifest-
disregard contention, to the “greater detail [provided] in
the accompanying Memorandum of Law.” Id. at 16 (refer-
ring to Memorandum of Law in Support of Petition to Con-
firm Arbitral Award in Part and Modify in Part, Acorda
Therapeutics, Inc. v. Alkermes PLC, No. 23-cv-223
(S.D.N.Y. Jan. 10, 2023), Dkt. No. 3 (Memorandum); J.A.
96–119). There, Acorda recited two separate arguments for
the remedy it sought, one based on patent law and the
other not:
The Tribunal’s application of state law doctrine
to limit Acorda’s damages was in manifest disre-
gard of federal law set forth in Brulotte for at least
the following reasons:
First, the Tribunal manifestly disregarded the
law by invoking state law in clear derogation of
clearly applicable federal patent law. The Supreme
Court has repeatedly and emphatically held that
state laws may not interfere with the federal pa-
tent laws by offering “patent-like protection to the
subject matter of the expired patent.” Bonito
Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S.
141, 152, 165 (1989). By allowing Alkermes to re-
tain illegal royalty payments that it demanded af-
ter expiration of its patent, the Award rewards
Alkermes’s gross misuse of monopoly power, un-
lawfully extends the term of Alkermes’s patent be-
yond the statutory period, and upends the entire
framework governing the Patent Act as set forth in
Brulotte and its progeny.
Second, by allowing Alkermes to keep the tens of
millions of dollars in royalty payments it demanded
and collected after the expiration of its patent, the
Award also gives effect to licensing agreements
that the Tribunal (and Supreme Court) determined
were illegal. The Tribunal’s ruling therefore
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ACORDA THERAPEUTICS, INC. v. ALKERMES PLC 8
violates the fundamental rule that “no court will
lend its assistance in any way towards carrying out
the terms of an illegal contract.” Kaiser Steel Corp.
v. Mullins, 455 U.S. 72, 77 (1982) (quoting McMul-
len v. Hoffman, 174 U.S. 639, 654 (1899)); Fleet-
wood Servs., LLC v. Ram Cap. Funding, LLC, No.
20-CV-5120 (LJL), 2022 WL 3536128, at *6
(S.D.N.Y. Aug. 17, 2022) (“The courts will not, of
course, lend their hand in enforcing an illegal con-
tract.”).
Memorandum, at 3–4 (ECF pp. 8–9); see also id. at 12–19
(ECF pp. 17–24) (relying on patent law); id. at 19–23 (ECF
pp. 24–28) (relying on non-patent-law cases, Kaiser Steel
and McMullen).
On August 4, 2023, the district court declined Acorda’s
request to modify the award—rejecting what it recognized
were Acorda’s “two arguments in support of its claim that
the manifest disregard standard has been met,” one based
on patent law (specifically, on Brulotte), the other on non-
patent law principles of illegal contracts (specifically, on
Kaiser Steel). Decision, at *6. The district court first ob-
served that, “since the Supreme Court cast doubt on the
ongoing viability of the manifest disregard doctrine” in
Hall Street Associates, L.L.C. v. Mattel, Inc., 552 U.S. 576,
584–91 (2008), “the doctrine has only been recognized by
the Second Circuit as a basis for vacatur, not modification.”
Decision, at *5. The court then addressed why, in any
event, the Tribunal did not act in manifest disregard of the
law. Id. at *5–7.
Regarding the patent-law ground: The district court
determined that Brulotte rendered the License and Supply
Agreements unenforceable but simply did not answer the
separate question of whether already-paid royalties must
be refunded. Id. at *6–7. Without a “clear legal principle”
to be found in Brulotte on this issue, the district court held,
the Tribunal appropriately relied on (1) the agreements’
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ACORDA THERAPEUTICS, INC. v. ALKERMES PLC 9
no-refund clause in its summary-judgment order and
(2) the NYVPD in its arbitration award to determine that
an additional refund was not justified. Id. at *6. The dis-
trict court rejected Acorda’s argument that the NYVPD is
preempted by federal patent law, both as forfeited because
it was not made to the Tribunal and on the merits because
“Brulotte and its progeny have not clearly articulated a rule
on the refund of royalties” and thus did not preempt state
law on this issue. Id. at *7. Regarding Acorda’s second,
non-patent-law (Kaiser Steel) argument for manifest disre-
gard, the district court concluded: “Nor does Acorda’s argu-
ment that the Tribunal manifestly disregarded the law by
giving effect to an illegal contract hold weight.” Id. It ex-
plained: “[T]he Tribunal held that Brulotte did, in fact, ren-
der the Agreements unenforceable[, . . . and t]he Tribunal’s
decision to limit restitution to payments made under pro-
test is not equivalent to upholding the Agreements.” Id.
The district court entered judgment confirming the
award in full on August 7, 2023. J.A. 21. Acorda filed a
timely appeal.
II
In the briefing before oral argument, the parties disa-
greed regarding whether this court or the Second Circuit
has appellate jurisdiction over this case (Acorda supporting
our jurisdiction, Alkermes supporting Second Circuit juris-
diction) and also about whether the district court erred in
rejecting Acorda’s manifest-disregard contentions (Acorda
urging error, Alkermes denying error). After oral argu-
ment, we requested and received supplemental briefs on
the jurisdictional issue. We are obligated to address our
own jurisdiction and are not restricted to the arguments
made by the parties. See Henderson ex rel. Henderson v.
Shinseki, 562 U.S. 428, 434 (2011); Uniloc 2017 LLC v. Ap-
ple, Inc., 964 F.3d 1351, 1357 (Fed. Cir. 2020). We now
conclude that we lack jurisdiction over this appeal, and so
we transfer the appeal to the Second Circuit.
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ACORDA THERAPEUTICS, INC. v. ALKERMES PLC 10
This court has jurisdiction over appeals from a final de-
cision of a district court “in any civil action arising under,
or in any civil action in which a party has asserted a com-
pulsory counterclaim arising under, any Act of Congress
relating to patents.” 28 U.S.C. § 1295(a)(1). The present
case does not involve the compulsory-counterclaim lan-
guage. The applicable language directs inquiry to the op-
erative complaint in the district court (here, the case-
initiating petition, which was never amended), since it
makes our appellate jurisdiction turn on whether the case
arose under federal patent law in the district court, where,
under “the ‘well-pleaded complaint rule,’” jurisdiction de-
pends on “the face of the plaintiff’s properly pleaded com-
plaint.” Caterpillar Inc. v. Williams, 482 U.S. 386, 392
(1987).
An action can “aris[e] under” federal patent law in two
ways: if “a well-pleaded complaint establishes . . . that fed-
eral patent law creates the cause of action,” or if “the plain-
tiff’s right to relief necessarily depends on resolution of a
substantial question of federal patent law, in that patent
law is a necessary element of one of the well-pleaded
claims.” Christianson v. Colt Industries Operating Corp.,
486 U.S. 800, 808–09 (1988); see Xitronix Corp. v. KLA-
Tencor Corp., 882 F.3d 1075, 1076 (Fed. Cir. 2018). Those
“arising under” standards borrow the “arising under”
standards applicable in district court to 28 U.S.C. §§ 1331
and 1338. Vermont v. MPHJ Technology Investments, LLC,
803 F.3d 635, 645–46 (Fed. Cir. 2015); see also Chandler v.
Phoenix Services LLC, 1 F.4th 1013, 1015–16 (Fed. Cir.
2021); Xitronix, 882 F.3d at 1076–77; Jang v. Boston Scien-
tific Corp., 767 F.3d 1334, 1336 (Fed. Cir. 2014). The Su-
preme Court has made clear that situations falling within
the “‘special and small’” second category—that is, where
the plaintiff’s right to relief necessarily depends on resolu-
tion of a substantial question of patent law, an exception to
the general requirement that the relevant federal law cre-
ate the cause of action—are “extremely rare.” Gunn v.
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ACORDA THERAPEUTICS, INC. v. ALKERMES PLC 11
Minton, 568 U.S. 251, 257–58 (2013) (quoting Empire
Healthchoice Assurance, Inc. v. McVeigh, 547 U.S. 677, 699
(2006)).
It is plain and undisputed that there is no patent-law
cause of action applicable to this case, as it was brought
solely under provisions of the Federal Arbitration Act after
arbitration—not, for example, as an infringement suit
stayed pending arbitration. For Acorda’s case to arise un-
der federal patent law, therefore, Acorda’s operative peti-
tion for the federal-court case had to come within the small,
second category of cases nonetheless arising under federal
patent law. For Acorda’s claim to come within that cate-
gory, it had to involve a federal patent-law issue that was
“(1) necessarily raised, (2) actually disputed, (3) substan-
tial, and (4) capable of resolution in federal court without
disrupting the federal-state balance approved by Con-
gress.” Gunn, 568 U.S. at 258; see MPHJ, 803 F.3d at 645;
NeuroRepair, Inc. v. The Nath Law Group, 781 F.3d 1340,
1344 (Fed. Cir. 2015).
Because Acorda initiated the case to seek confirmation
in part and modification in part of the arbitral award un-
der, respectively, 9 U.S.C. § 207 (the chapter 2 counterpart
of 9 U.S.C. § 9) and 9 U.S.C. §§ 10–11, we look not to the
underlying claims made in the arbitration but only to the
(never-amended) case-initiating document—the January
2023 Petition—to assess jurisdiction, consistent with the
general rule that it is the filing that initiates the federal-
court case (if never amended) that is determinative. See
Badgerow v. Walters, 596 U.S. 1, 4–5, 9, 12, 14 (2022).2 We
2 The Supreme Court in Badgerow specifically ruled
on petitions to confirm or vacate under 9 U.S.C. §§ 9, 10,
but we see no basis for different treatment of a petition to
modify under 9 U.S.C. § 11 (or to confirm under 9 U.S.C.
§ 207), whose wording is materially the same in relevant
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ACORDA THERAPEUTICS, INC. v. ALKERMES PLC 12
conclude that a federal patent-law issue is not “necessarily
raised” by the Petition, which therefore flunks Gunn’s first
requirement. 568 U.S. at 258. That conclusion suffices for
us to hold that we lack jurisdiction.
Acorda’s request for confirmation of all but the recoup-
ment denial did not necessarily raise a federal patent law
issue. Under 9 U.S.C. §§ 9 and 207, a party to an arbitra-
tion is not required, in order to obtain confirmation of an
award, to plead and prove the correctness of the rulings in
the arbitral award. See 9 U.S.C. § 9 (stating that if the ar-
bitration agreement provides “that a judgment of the court
shall be entered upon the award made pursuant to the ar-
bitration, and shall specify the court,” any party to the ar-
bitration may apply for such confirmation within a year,
and “the court must grant [a confirmation] order” unless
the award is “vacated, modified, or corrected” under 9
U.S.C. §§ 10, 11); id. § 207 (stating that within three years
of an arbitral award under the New York Convention, “any
party to the arbitration may apply” for judicial confirma-
tion, and “[t]he court shall confirm the award” unless it
“finds one of the grounds for refusal or deferral of recogni-
tion or enforcement of the award specified in the said Con-
vention”); Decision, at *7. It was therefore no necessary
part of Acorda’s petition for confirmation to establish, or
obtain a judicial determination on, any proposition of fed-
eral patent law.
Acorda’s request for modification of the denial of re-
coupment of unprotested post-expiration payments, based
on asserted manifest error, likewise did not “necessarily
raise[]” an issue of federal patent law for decision. Gunn,
aspects as 9 U.S.C. §§ 9, 10, and lacking in the “distinctive
language” of 9 U.S.C. § 4 that the Court had previously
held to authorize looking through the case-initiating filing
to the underlying arbitration in the context of petitions to
compel arbitration. 596 U.S. at 5; see also id. at 9–11.
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ACORDA THERAPEUTICS, INC. v. ALKERMES PLC 13
568 U.S. at 258. That request took as its premise the Tri-
bunal’s own determination of unenforceability, which
Acorda sought to be confirmed (as just explained) without
needing to have the court evaluate its correctness. The
only aspect of the modification request for which Acorda
sought a judicial determination was the assertion of error
in denying the recoupment remedy. But on the question of
remedy, as described above, Acorda presented two alterna-
tive grounds as establishing manifest error, and only one—
based on Brulotte—rested on federal patent law. Acorda
asserted a second, undisputedly non-patent-law basis for
entitlement to the recoupment remedy it sought—a princi-
ple of law for which it cited Kaiser Steel and McMullen (nei-
ther being a patent-law case).
Acorda thus presented a way for the district court to
rule in its favor on the requested recoupment remedy with-
out agreeing with Acorda’s assertion that federal patent
law entitled it to that remedy. In that circumstance, as we
have held, the asserted patent-law issue was not “neces-
sarily raised.” See Inspired Development Group, LLC v. In-
spired Products Group, LLC, 938 F.3d 1355, 1362–63 (Fed.
Cir. 2019) (finding issue not necessarily raised where alter-
native ground for relief presented); NeuroRepair, 781 F.3d
at 1344–45 (same). Acorda’s case-initiating filing therefore
did not meet the “necessarily raised” requirement for our
jurisdiction. See Inspired Development, 938 F.3d at 1362
(“All four elements [of Gunn] must be satisfied.”).
In light of this conclusion, we need not rule on whether
we might lack jurisdiction for additional reasons. One such
possibility, debated by the parties, focuses on the facts
(a) that neither Brulotte nor Kimble, in addressing the pa-
tent-law right, discussed any issue about a backward-look-
ing remedy, cf. eBay Inc. v. MercExchange, L.L.C., 547 U.S.
388, 392 (2006) (stating that “the creation of a right is dis-
tinct from the provision of remedies for violations of that
right”), and (b) that the Brulotte-based remedy issue raised
by Acorda is presented in the context of the “extremely
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ACORDA THERAPEUTICS, INC. v. ALKERMES PLC 14
deferential” standard of “manifest disregard” applicable to
arbitral-award reviews, Smarter Tools Inc. v. Chongqing
SENCI Import & Export Trade Co., 57 F.4th 372, 378, 383
(2d Cir. 2023); see also D.H. Blair & Co. v. Gottdiener, 462
F.3d 95, 110–11 (2d Cir. 2006); Merrill Lynch, Pierce, Fen-
ner & Smith, Inc. v. Bobker, 808 F.2d 930, 933–34 (2d Cir.
1986). Such facts raise questions about whether an issue
of federal patent law that must be decided in the case is
“substantial in the relevant sense,” an inquiry focused on
“the importance of the issue to the federal system as a
whole.” Gunn, 568 U.S. at 260. Alkermes points to Friedler
v. Stifel, Nicolaus, & Co., 108 F.4th 241, 246–47 (4th Cir.
2024), a non-patent case, in which the Fourth Circuit relied
on the limits of “manifest disregard” review to conclude
that the Gunn standard for federal “arising under” juris-
diction was not met in an arbitral-award review involving
asserted violations of federal securities law. Alkermes’s
Opening Supplemental Br. at 1–2, 5–7. But we need not
decide whether or how Friedler’s logic would apply in as-
sessing the “substantial[ity]” of the patent-law aspect of
the present case under Gunn, whether Friedler more gen-
erally should be endorsed by this court, and other issues
that might be raised about application of the Gunn stand-
ards. The narrow ground we have set out suffices to sup-
port our conclusion that we lack jurisdiction.
III
We hold that we lack jurisdiction over the present ap-
peal. The case is transferred to the United States Court of
Appeals for the Second Circuit.
The parties shall bear their own costs.
TRANSFERRED
Case: 23-2374 Document: 77 Page: 14 Filed: 07/25/2025

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