Supreme Court’s Patent Drought Leaves Key Debates Unresolved

The US Supreme Court’s refusal to hear new patent cases for nearly three years has frustrated parties that suffer appellate losses and left the Federal Circuit as the final arbiter over legal disputes that divide the patent bar.

The justices have turned away more than 60 petitions for writs of certiorari from patent owners and targets of patent suits since it last took such a case in November 2022, according to a Bloomberg Law review of dockets. The high court rejected five petitions to review patent cases last week in its first conference of the new term.

The court’s seeming lack of interest stems from the technical nature of patent litigation, the high court’s relative confidence in the specialists on the US Court of Appeals for the Federal Circuit, and the idiosyncrasies of the current justices, according to attorneys and law professors.

Carter Phillips, a Sidley Austin partner who has argued several high-profile patent disputes before the high court, said the justices are increasingly interested in cases with a political valence, and patent disputes don’t satisfy that itch.

“The business portion of the courts’ docket has essentially disappeared—antitrust cases, patent cases, punitive damages cases, class actions,” he said.

“It reflects that these aren’t business conservatives on the court, they’re ideological conservatives,” he said, and business law questions “don’t generally hold their interest.”

Cyclical Nature

The disinterest isn’t unprecedented, said Paul Rogerson, a visiting law professor at Chicago-Kent College of Law, who in August published a paper on the cyclical nature of patent litigation.

Rogerson pointed to the 1930s, when patent litigation got sustained attention because the justices “thought patents were being granted and enforced too easily” to the point it was overly burdensome for businesses operating in burgeoning fields like radio and railroads.

“They invalidated a lot of patent pools and a lot of patents in the 1930s and 1940s, and then they checked out,” Rogerson said.

Similarly, Phillips said the high court had a “real allergy to patent litigation” starting in the 1980s, when the Federal Circuit was established to handle all patent appeals. That lasted until Chief Justice John Roberts joined the court in 2005, he said, because Roberts practiced before the Federal Circuit before becoming a federal judge and “understood the importance of intellectual property to the economy.”

Section 101

The court of the 2010s took up a string of cases regarding Section 101 of the Patent Act, which describes what inventions are eligible for protection.

It decided four such cases between 2010 and 2014, culminating in Alice Corp. v. CLS Bank, when it createda two-part test for determining if inventions are too abstract for patent protection. That decision made it harder for inventors’ ability to get patents covering business methods and software, and has been criticized—especially by patent owners and their advocates—as difficult to apply.

Some lawmakers have pushed for legislation altering patent eligible standards, and the newly-appointed director of the US Patent and Trademark Office criticized Section 101 jurisprudence as “confusing.” That argument is contested, and several academics recently published a study concluding district courts and the Federal Circuit have predictably applied the Supreme Court’s test.

Those Section 101 cases may reflect a phenomenon where the Supreme Court delves into a nerdy area of patent law and then has buyer’s remorse, said Jonas Anderson a law professor at the University of Utah.

“They take these case, then they suddenly realize, ‘Maybe we shouldn’t have taken this case, we don’t really understand the law as well as the Federal Circuit does, so maybe we’ll just do a narrow holding,’” he said.

Phillips, who argued Alice for the patent owner, said the court came up with a test that’s hard to apply.

“That’s a humbling experience for the court, that some problems it may not have the ability to solve,” he said.

Shifts in the court’s makeup can have on subject matter interest, Anderson said, noting former Justice Stephen Breyer, who got invested in patent cases, stepped down in 2022, while Justices Ruth Bader Ginsburg and Antonin Scalia, who both passed away in the past decade, also dug into the topic.

“I don’t think there’s the interest now,” he said. “It’s a little cyclical but also it’s the personality of the justices.”

Looking Forward

The high court’s patent drought hasn’t stopped losing parties at the Federal Circuit from filing cert petitions. Parties are currently petitioning the justices to consider legal questions around the priority dates courts should give inventions disclosed to the patent office that don’t result in granted patents, as well as how generic pharmaceutical companies can label drugs when certain treatments are patented but others aren’t.

Patent attorneys said the high court will eventually jump back into the fray.

All it takes, Phillips said, “is a case where the Federal Circuit’s done something wacky.”

Anderson, who worked in private practice before academia, said he was conflicted about the justices delving back into patents.

“The patent attorney in me wants them to take more cases and give us more guidance,” he said. “But I don’t think when we had four Section 101 decisions in a four-year span that we got much more clarity from that, so maybe it’s best they stay out of what we do.”

One area Anderson said he thought might pique the court’s attention are petitions challenging the PTO director’s power to discretionarily deny patent challenges at the Patent Trial and Appeal Board.

A series of tech companies including Google LLC, Samsung Electronics Co. and SAP America Inc. pressed the Federal Circuit to nix changes instituted by Trump administration appointees scaling back companies’ ability to challenge the validity of patents they’ve been accused of infringing.

“That’s where you could see most of the action in the next few years, if there’s any: what’s the relationship between the judiciary and the administrative state,” he said.