Stepping Out of the Solicitor General’s Shadow: The Federal Circuit and the Supreme Court in a New Era of Patent Law

Abstract

Since Congress created the Federal Circuit forty years ago, the court has been praised for providing uniformity and expertise in patent law. But it has also been criticized for engaging in overly aggressive review of district courts and the Patent Office, disregarding Supreme Court precedent, and shaping patent law in ways that discourage innovation rather than promote it. The Solicitor General, who represents the executive branch in Supreme Court litigation, has been so successful at getting the Court to overturn Federal Circuit patent precedent that the circuit was, not long ago, said to “stand in the shadow of the Solicitor General.”

But those narratives may no longer be true. This Article, through a close study of patent cases decided by and cert. petitions presented to the Supreme Court, suggests that the era of a renegade Federal Circuit constantly being reined in by the Court and the Solicitor General may be over. In several recent cases, the Supreme Court has rejected arguments by the SG to undo Federal Circuit patent precedent—something that, until 2011, had happened only once. And, though the SG still wields significant influence over which patent cases the Court hears on the merits, that, too, may be changing: in 2022, the Supreme Court—for the first time ever—rejected the SG’s suggestion to grant certiorari in a patent case.

These developments have at least three implications. First, for patent doctrine, they suggest we are entering an era in which the Federal Circuit will have the last word on practically every issue—a potentially troubling dynamic because the court is uniquely vulnerable to interest-group capture and there are no other peer-level appellate courts to disrupt bad precedent. Second, for patent institutions, the SG’s litigation failures and the Supreme Court’s reduced interest in patent cases means that power is shifting toward not only the Federal Circuit but also the Patent Office—an awkward site of authority given the agency’s lack of power to promulgate substantive rules of patent law. Finally, the Supreme Court’s skepticism of the SG in patent cases is part of a broader story about separation of powers—a newly emboldened Supreme Court that is dismissive of executive branch institutions and unapologetic in its willingness to chart its own path.

Yet the new institutional arrangement this Article identifies also presents opportunities. A Supreme Court that hears fewer patent cases could spur the Federal Circuit to fix problematic doctrines on its own, rather than waiting for—or begging for—the Court to intervene, as the circuit commonly does now. The modern Patent Office, despite formal limits on its power, is, as a practical matter, well situated to tune patent law to various policy objectives. Finally, the Supreme Court’s hands-off approach to patent law and rebukes of the executive branch underscore the need to reform the Court as an institution.