Thirty-three years ago, in Morrison v. Olson,1 the Supreme Court announced a loose, functionalist test for distinguishing between “principal” and “inferior” “Officers of the United States.”2 But the Court quickly retreated from Morrison’s functionalism,3 leading some observers to ask whether Morrison remained good law.4 Last Term, in United States v. Arthrex, Inc.,5 the Supreme Court held — without discussing or citing Morrison — that certain Patent and Trademark Office (PTO) officials exercised powers inconsistent with inferior-officer status.6 Although Arthrex did not formally overrule Morrison, its reasoning suggests that Morrison’s inferior-officer holding should be limited to its facts.
The Constitution distinguishes between principal and inferior “Officers of the United States.”7 Principal officers, but not inferior officers, must be appointed by the President with the advice and consent of the Senate.8 They must also, with exceptions not relevant here, be removable by the President at will.9
Historically, the Supreme Court has taken two distinct approaches in deciding whether particular officers are “principal” or “inferior” under the Constitution. In Morrison, the Supreme Court applied an elastic, multifactor test — looking to the official in question’s “duties,” “jurisdiction,” “tenure,” and insulation from at-will removal — before deciding that an independent counsel appointed under the auspicies of the 1978 Ethics in Government Act was an inferior rather than a principal officer.10 But in Edmond v. United States,11 decided only nine years after Morrison, the Court took a different approach. The Edmond Court declared, more simply, that “[w]hether one is an ‘inferior’ officer depends on whether he has a superior.”12
Administrative Patent Judges (APJs) are executive branch officials who are not Senate confirmed and whom the President cannot appoint or remove at will.13 They sit on the Patent Trial and Appeal Board (PTAB), a subdivision of the PTO that can “reconsider” and “cancel” certain previously issued patents in a process known as inter partes review.14 The Director of the PTO, who is Senate confirmed,15 can summarily decline to initiate inter partes review16 and can decide which APJs will preside over which inter partes proceedings.17 He can also promulgate general rules that all APJs must follow in adjudicating inter partes claims.18 But PTAB decisions are final and unappealable within the executive branch. No executive branch official, including the President, can countermand any final PTAB decision in any particular case.19
In 2017, Arthrex, Inc., appeared before the PTAB to defend one of its patents — for a “knotless suture securing assembly” — in an inter partes proceeding.20 Arthrex lost, and the PTAB canceled the patent.21 Arthrex appealed to the Federal Circuit.22 On appeal, Arthrex argued that the APJs who had heard its case were principal officers and had therefore been unconstitutionally appointed.23
The Federal Circuit agreed with Arthrex and vacated the PTAB’s decision. Applying Edmond, Judge Moore’s majority opinion24 began by asking whether the PTAB APJs “ha[d] a superior,” or some Senate-confirmed official who “directed and supervised” their work.25 Judge Moore concluded that the APJs did not, as no executive branch official could “review and reverse”26 individual APJ decisions and APJs were removable only for cause.27 Next, turning briefly to Morrison, Judge Moore found that the facts favoring inferiority in Morrison were “completely absent.”28 Unlike the special counsel in Morrison, APJs did not have “limited tenure, limited duties, or limited jurisdiction.”29 Thus, because neither Edmond nor Morrison could support a finding of inferiority, the APJs were principal officers and had been unlawfully appointed.30 To eliminate the problem, Judge Moore severed the APJs’ removal protections from the rest of the statute, rendering APJs removable at will by the Patent Office Director and thus inferior officers.31
The Supreme Court granted certiorari, affirmed in part, and reversed in part. Writing for the Court,32 Chief Justice Roberts began by affirming the Federal Circuit’s merits analysis. “Edmond,” the Court explained, “goes a long way towards resolving this dispute.”33 “What was ‘significant’” in Edmond — “review by a superior executive officer” —was “absent” for PTAB APJs.34 Nor did the Secretary of Commerce’s power to remove APJs make them inferior, since the Secretary could fire APJs “only ‘for such cause as [would] promote the efficiency of the service.’”35 “Given the insulation of PTAB decisions from any executive review,” the President could “neither oversee the PTAB himself nor ‘attribute the Board’s failings to those whom he [could] oversee.’”36 Thus, the PTAB’s structure violated the Appointments Clause.37 The Court’s opinion did not mention or cite Morrison.38
Chief Justice Roberts then turned to the question of remedies. “[W]hen confronting a constitutional flaw in a statute,” he wrote, “‘we try to limit the solution to the problem’ by disregarding the ‘problematic portions while leaving the remainder intact.’”39 And here, the most limited remedial approach was to allow the Director of the PTO to review and reverse PTAB decisions. “In every respect save the insulation of their decisions from review within the Executive Branch, APJs appear[ed] to be inferior officers.”40 Removing that insulation was thus the most sensible remedial choice.41 Compared to the Federal Circuit’s remedy, which would have made the APJs removable at will, “review by the Director better reflect[ed] the structure of supervision within the PTO and the nature of APJs’ duties.”42
Justice Gorsuch joined the Court’s merits analysis but dissented as to the remedy. Also citing Edmond, Justice Gorsuch agreed that “[b]y definition, an ‘inferior officer . . . has a superior’” and that the APJs at issue did not have superiors.43 But “the real question” was “what to do about” this problem.44 No single statutory provision, Justice Gorsuch noted, made the APJs principal officers. Only a “combination” of provisions did so.45 Plus, there were multiple ways of solving the principal-officer problem: the Court could “make PTAB decisions subject to review by the [Patent Office] Director,” “specify that PTAB panel members should be appointed by the President and confirmed by the Senate,” or “reassign the power to cancel patents to the [j]udiciary.”46 Given this ambiguity, and following what he described as “traditional remedial principles,”47 Justice Gorsuch would have vacated the PTAB decision and done nothing more.48 The Court’s contrary approach, Justice Gorsuch complained, amounted to a “legislative séance[]” wherein the Court drafted a new statute ex nihilo.49
Justice Thomas dissented on the merits. “[A]dministrative patent judges,” he noted, “sit at the bottom of an organizational chart, nestled under at least two levels of authority.”50 Higher officials could “supervise and direct”51 APJs’ work by, inter alia, promulgating policies to which APJs were required to adhere in inter partes proceedings and firing APJs who did not follow those policies for insubordination.52 “To be sure,” the Director could not “singlehandedly reverse [PTAB] decisions.”53 But there was “no precedential basis” or “historical support” for “boiling down ‘inferior-officer’ status to the way Congress structured a particular agency’s process for reviewing decisions.”54 And “[t]he fact that” the Court had “place[d] administrative patent judges on the side of Ambassadors, Supreme Court Justices, and department heads,” Justice Thomas concluded, should have “suggest[ed]” to the Court “that something [was] not quite right.”55
Justice Breyer also dissented on the merits.56 “[I]n my view,” he wrote, “the Court should interpret the Appointments Clause as granting Congress a degree of leeway to establish and empower federal offices.”57 Moreover, Justice Breyer continued, “when deciding cases such as these,” courts “should conduct a functional examination of the offices and duties in question rather than a formalist, judicial-rules-based approach.”58 Here, because there were good functional reasons for Congress to want to insulate PTAB decisions from further review within the executive branch, “a functional approach” would have “undermine[d]” the Court’s result.59 “For purposes of determining a remedy, however,” Justice Breyer “agree[d]” with the Court’s “remedial holding” and voted to permit the PTO Director to review PTAB decisions.60
Arthrex appears to be the first case in which the Supreme Court ignored Morrison when it was potentially outcome determinative.61 As a result, Arthrex sheds new light on whether Morrison remains good law. And the best view, given Arthrex, is probably that Morrison should be limited to its facts.
After Edmond, keen observers noted that Justice Scalia’s Edmond opinion had essentially eviscerated the rule announced in Morrison.62 Morrison evaluated whether an officer was inferior by looking holistically at the officer’s role, tenure, duties, and jurisdiction.63 But in Edmond the Court brushed that approach aside, explaining that Morrison “did not purport to set forth a definitive test for whether an office is ‘inferior’ under the Appointments Clause.”64 Justice Souter, concurring in Edmond, specifically noted that he would have paid more attention to Morrison’s functional approach than the Edmond majority opinion did.65 “What is needed” in separation-of-powers cases, he wrote, “is a detailed look” at the officer’s “powers and duties . . . to see whether reasons favoring their inferior officer status within the constitutional scheme weigh more heavily than those to the contrary.”66 Edmond’s scant heed for Morrison has led some commentators to conclude that Morrison “is bad law.”67
But Edmond and Morrison were reconcilable in a way that Morrison and Arthrex are not. In Edmond, the Court held that the Morrison test did not set out necessary conditions for an official to be “inferior.”68 Even officials who were not obviously “inferior” under Morrison, potentially including the officials at issue in Edmond, could be inferior if they had powerful-enough superiors.69 By contrast, the Arthrex Court ignored Morrison altogether. Instead, it relied principally on Edmond to conclude that APJs were principal officers, or at least exercised powers inconsistent with inferiority.70 Thus, whereas Edmond held only that having superiors was a sufficient condition of inferiority, Arthrex appears to hold that having a superior is also necessary for an officer to be inferior. And if the test in Edmond lays out both necessary and sufficient conditions of inferiority, that — unlike Edmond standing alone — suggests that Morrison no longer accurately describes the rules setting out whether an officer is “inferior” or “principal.”
In particular, two alternative ways of reconciling Morrison and Arthrex are not persuasive. First, notwithstanding some contrary rhetoric from the Federal Circuit, the facts favoring inferiority in Morrison were not so “completely absent” in Arthrex that Morrison was simply irrelevant to the Arthrex Court’s analysis.71 To be sure, APJs are not “‘limited in tenure,’ as the phrase was used in Morrison to describe ‘appoint[ment] essentially to accomplish a single task [at the end of which] the office is terminated.’”72 Nor are they “‘limited in jurisdiction,’ as used in Morrison to refer to” a special counsel charged with investigating particular crimes or allegations thereof.73 But an APJ’s “duties” are quite narrowly circumscribed. APJs make technical determinations about the validity of particular patents if and only if the head of the PTO directs the APJ to sit on a case requiring the APJ to make those determinations.74 And they may only do so in accordance with such rules and regulations as the PTO’s head may promulgate.75 Plus, although APJs are not as limited in jurisdiction as the special counsel in Morrison, their jurisdiction is far narrower than (say) that of the Secretary of Commerce.76 This comparison is not to suggest that, under Morrison, APJs would be inferior officers. But if the Morrison test still had doctrinal purchase, it would have made sense for the Court to consider these arguments — if only, like the Federal Circuit, to dismiss them in a short paragraph.77 That the Court saw fit to ignore Morrison entirely is a sign that Morrison now has limited “generative power,”78 not that the facts of Arthrex alone made Morrison irrelevant.
Second, it is true that neither the United States nor the private party that had originally challenged Arthrex’s patent in the inter partes review process relied substantially on Morrison in their briefing before the Supreme Court.79 But it does not follow that Morrison is good law. Of course, parties can and do forfeit arguments on appeal if they do not make them cogently in their briefing.80 But this rule did not limit the Arthrex Court to parroting back the exact arguments made in Arthrex’s briefing. Rather, like any U.S. court, the Supreme Court’s practice is to analyze issues “fairly raised” by the parties to a dispute81 and resolve those issues in accordance with the applicable rules of law. And here, if Morrison were in fact a relevant source of law, its relevance would have made it “fairly raised” notwithstanding the parties’ failure to examine it in detail.82 Thus, again, the fact that the Court ignored Morrison in Arthrex indicates that Morrison’s scope of applicability is limited, not that the parties simply declined to raise arguments predicated on Morrison.
This leaves at least two conceivable paths forward. First, Morrison might slowly fade into obsolescence, at least outside of the independent-counsel context. The Supreme Court, pointing to Morrison’s incompatibility with Arthrex, might formally overrule Morrison or limit it to its facts.83 Or litigants, not unlike the litigants in Arthrex itself, might stop citing Morrison in anticipation of such a result. Those who dislike Morrison’s approach to separation of powers issues would applaud such an outcome; those who prefer Morrison’s functionalism to Edmond’s formalism might lament it.84 But whatever Morrison’s virtues or vices, this approach would at least produce a clear rule. Questions involving Morrison’s continued vitality would be “settled,” regardless of whether they were “settled right.”85
Second, the Morrison test might hibernate for a time — only to awaken, without warning, in some future case that seems to call for its application. This outcome, by analogy, has been more or less the fate of Lemon v. Kurtzman86 in the Establishment Clause context. Lemon, which put forward a loose, functionalist, Morrison-esque test for determining when state action amounts to the “establishment of religion,”87 has appeared intermittently and without apparent rhyme or reason in some, but not all, of the Supreme Court’s Establishment Clause cases.88 Justice Scalia, describing this phenomenon, famously compared Lemon to a “ghoul in a late-night horror movie that repeatedly sits up in its grave and shuffles abroad, after being repeatedly killed and buried.”89 One can imagine a similar fate for Morrison. Arthrex notwithstanding, Morrison might linger for years — dead, and yet not.
But, while the Lemon-ization of Morrison is a logical possibility, such an outcome would be inconsistent with fundamental principles of stare decisis. Stare decisis is meant to “promote[] the evenhanded, predictable, and consistent development of legal principles, foster[] reliance on judicial decisions, and contribute[] to the actual and perceived integrity of the judicial process.”90 Overruling past precedent willy-nilly, of course, frustrates these goals. But so too does deciding cases using two sets of books — applying one legal rule on Monday but an equal and opposite rule on Tuesday.91 Put differently, if stare decisis requires courts to avoid killing off precedents absent some “special justification,”92 it also requires that dead precedents stay dead and that limited precedents stay limited. And so, even if some future set of facts appears to call for the application of Morrison’s test, the Court should resist the urge to roust Morrison from its slumber.
To be clear, Morrison remains binding on lower courts on its facts. “If a precedent of [the Supreme] Court has direct application in a case, yet appears to rest on reasons rejected in some other line of decisions,” lower courts must “follow the case which directly controls, leaving to [the Supreme] Court the prerogative of overruling its own decisions.”93 But, outside the independent counsel context, Arthrex and Morrison appear deeply at odds. And in that case, the reasoning of Arthrex, rather than of Morrison, must control.