AIPLA is facing the daunting
task of having three Amicus briefs due in a very short period
– two to the US Supreme Court and one to the en
banc Federal Circuit. Amicus briefs are one of the more
visible advocacy functions the Association performs, and so it
seems appropriate to tell you a bit about the cases.
The three potential cases are
Gunn et al v Minton concerning jurisdiction over
legal-malpractice suits involving patent law; (2) Bowman v
Monsanto , reviewing the Federal
Circuit’s decision on the exhaustion doctrine
for second-generation, genetically-modified seeds; and (3)
CLS Bank v Alice, where the Federal Circuit will again
wrestle with patentability under 35 USC § 101 for a
computer system that assists with closing financial
Gunn brief was filed on the Monday after
Thanksgiving, and the other two are due in January—a
lot of work in a short time period.
This made me think that it would
be a good time to demistify the Amicus process at AIPLA. I say
demistify because many people have asked about the process, so
A case usually comes to
AIPLA’s attention for Amicus briefs when: (1) A
party asks the Association to participate, (2) one of our
substantive committees or an AIPLA member calls it to the
attention of the Amicus Committee, (3) the Supreme Court grants
c ertiorari and it is relevant to our membership, or
(4) an appellate court such as the Federal Circuit grants
either en banc review or rehearing on an intellectual
The first stop in the
Association is the
AIPLA Amicus Committee . As an aside, unlike most AIPLA
committees, the membership of this one is by appointment only.
One-third of Amicus Committee members are appointed each year
by the President-Elect for a three-year term, so that one-third
of the Committee rotates off each year.
Having just completed appointing
this year’s Amicus Committee class, I can say that
it’s frankly a huge effort to make sure that the
composition is balanced (such as for specialty, geographical
location, diversity and industry).
participate are always reviewed by the Board, and
sometimes a recommendation not to participate also is
reviewed by the Board."
The Amicus Committee does a
substantive review of the issues, working with Jim Crowne on
AIPLA staff, and the substantive AIPLA committees to gain as
broad an understanding as possible on the issues being briefed.
It then develops a recommendation for what positions the
Association should take on the case.
The substantive positions will
reflect past resolutions and positions taken by the
Board of Directors , if there are any. If the Amicus
Committee’s recommendation is to participate in a
case, it also recommends which side of the case should be
supported, or in some instances to not file in favor of a side.
This can be very important because the due date for a brief is
based upon this decision.
Recommendations to participate
are always reviewed by the Board, and sometimes a
recommendation not to participate also is reviewed by the
Board. Although the Board is deferential to the Amicus
Committee’s recommendation, that recommendation is
not dispositive of what the Board will do and typically the
Board engages in a thorough debate.
Generally, the Board divides the
case into parts and considers whether to even participate. If
it decides to do so, the Board will then decide what position
to take on each of the various issues presented.
It also will approve a brief
writer if one is recommended by the Amicus Committee. Each of
these decisions requires a super majority vote of two-thirds of
the Board. If two-thirds of the Board do not agree, no brief
will be filed.
Assuming the Board decides to go
forward with a position, the brief writer then works with AIPLA
staff (particularly Jim Crowne) to make sure that the brief
reflects the Board’s views. A draft brief is then
sent to the Board, where it must again be approved by a super
majority vote before it can be filed.
And, yes, there have been
isolated instances where the Board cannot reach the super
majority level, and as a result, an already prepared brief has
not been filed.
The Board may make modifications
or suggest additional revisions at this point, and usually
empowers a Review Committee to make sure that the final
revisions are accurately embodied in whatever is filed.
Sometimes while this process is
going on, we are asked what position AIPLA will take in its
amicus brief. As you can see from the various steps I have just
outlined, the position literally is not set until the final
decision brief is approved for filing.
Until then, the
Association’s position can change and
it’s not even certain that AIPLA will file a
brief. This is a process that takes weeks, if not months, to
accomplish for each brief.
"There have been
isolated instances where the Board cannot reach the
super majority level, and as a result, an already
prepared brief has not been filed."
Working on multiple briefs
potentially due around the same time is quite a challenge. I,
of course, say "potentially" because it’s entirely
possible that the Board may decide not to file one or more of
them. But for now, work is progressing at the Board, reviewing
the Amicus Committee recommendations.
I hope to share additional
updates as we move through the process, but in the meantime, I
invite any comments or questions that you might have regarding
the process itself.
Thanks for reading.