Competing Questions in Supreme Court Petitions

I enjoy reading competitive questions-presented in Supreme Court petitions.  Although I don’t have evidence to support this, my contention is that respondents have become much more aggressive at recharacterizing the questions from the way they were presented in the original petition.  As that aggression grows, so does the propensity of petitioners to write even more biased questions.

Briefing in Collabo Innovations, Inc. v. Sony Corp., Docket No. 19-601 (Supreme Court 2020), shows how the U.S. Solicitor’s office has gotten on-board the ‘game.’

Compare below:

Collabo Petition:

When U.S. Patent No. 5,952,714 issued in September 1999, the Patent Act provided only two avenues for challenging the validity of the patent’s claims: ex parte reexamination and district court litigation. Shortly thereafter, Congress added a third method, inter partes reexamination, but deliberately chose to exclude older patents from the new proceeding. More than 10 years later, Congress replaced inter partes reexamination with a fundamentally different proceeding, inter partes review, and made it apply retroactively to all prior patents.

Responsive Brief from U.S. Gov’t

For almost four decades, the United States Patent and Trademark Office (USPTO) has “possessed the authority to reexamine – and perhaps cancel – a patent claim that it had previously allowed.” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016). In the Leahy-Smith America Invents Act (AIA), Congress replaced one of the existing mechanisms for administrative reconsideration of issued patents with a new administrative reconsideration proceeding known as inter partes review. Congress further provided that inter partes review “shall apply to any patent issued before, on, or after th[e] effective date” of the AIA.

The questions presented are as follows:

1. Does the retroactive application of inter partes review to a patent that issued before the passage of the AIA, violate the Takings Clause of the Fifth Amendment?

2. Does the retroactive application of inter partes review to a patent that issued before the passage of the AIA, violate the Due Process Clause of the Fifth Amendment?

The questions presented are as follows:

2. Whether the cancellation, following inter partes review, of petitioner’s pre-AIA patent violates the Just Compensation Clause.

1. Whether Congress’s decision to authorize the USPTO to conduct inter partes review of patents issued before the AIA’s effective date is irrational, and thus violates the Due Process Clause.

Notice the competing preambles that talk-past each other without addressing the same key points; The US Gov’t then reordered and rewrote the questions.  On the takings question — petitioner uses the trigger keyword “retroactive application” of IPR while the Gov’t refers to the more neutral “cancellation.”  Cancellation is an important term here because cancellation was already allowed pre-AIA under the reexamination statutes. On the due process question, the Gov’t flips the “rational basis” test to ask instead whether the AIA is “irrational.”  The Gov’t approach on this second question incorrectly suggests that Congressional irrationality is the test or perhaps the issue raised by the petition.  It turns out that neither are true because due process is also concerned with arbitrary government action (as indicated in Collabo’s briefing).

What is most interesting to me here is that these shifts and tilts of the question are all transparent to the Supreme Court justices and their law clerks. Still I expect that the alternate narratives trigger an emotional response; and those emotions are typically the root of decision making even for the highly rational.


41 thoughts on “Competing Questions in Supreme Court Petitions

  1. 5

    The boiling frog comes to mind. Recall Mossinghoff as PTO director under the original Ex Parte reexamination statute issued 2 opinions interpreting the “substantial new question” gateway thereby creating an administrative estoppel frame work for the PTO to work in “harmony” with the Art III courts. Furthermore under the original ex parte statute the PTO could not “cancel” an existing patent without the patent owner right to de novo trial under 35 USC 145, ergo it was an Art III court that adjudicated validity, and one could argue the PTO was no more correct in rejecting the claims and it was issuing the claims in the first instance.

    Anyways, that’s morphed into “for more that 40 years PTO has been cancelling issued patents” wherein the real history belies that superficially misleading argument. This was lost on Oil States counsel at the SCOTUS argument. Seriously, how can you be a competent legal representative without a full understanding of the history of the various PTO post issue review schemes? Ex Parte as it now stands, without 35 USC 145 as an option (the Constitutional safety valve), is just as unconstitutional as the other post review schemes.

    The outlier is the reclassification of 200 years of patent law as suddenly a mere regulatory scheme under the ‘public rights’ doctrine. Breyer needs to retire (he’s purposefully IMHO getting stranger views on IP) and we need 4 more Gorsuch types.

    1. 5.1

      [1] Breyer…’s purposefully IMHO getting stranger views on IP… and [2] we need 4 more Gorsuch types.

      I can entirely agree with you on #1, and partly on #2. Certainly four more Gorsuches would be better for IP law, although I am not sure how much IP law will matter when we all die for lack of breathable air and drinkable water after the five-Gorsuch majority strips out the Clean Air and Clean Water Acts.

      1. 5.1.1

        Post never made it out of the Count Filter, nut in a long story made short, it is not Gorsuch that would provide the “breath of fresh air” for patent law matters, but Kavanaugh.

        After all, it is from Kavanaugh that BOTH shears have been presented that could be used to cut through the Gordian Knot of the mess of eligibility jurisprudence created by the Supreme Court.

  2. 4

    If allowed, the Board’s action — a product of the retroactive application of the AIA — will “take away the rights of property in existing patents” and constitute an unconstitutional taking.

    This excerpt from Collabo’s Petition highlights the inherent problem with the Takings argument, which is vagueness about what is being taken and when. Is it the Board cancellation or the retroactive application of an IPR that constitutes a taking? If the retroactivity is the taking, the thing taken was the right to have validity adjudicated only in an Article III Court under a clear and convincing standard. I have yet to see an argument (as opposed to an assertion) that this a property right, but that is what must be argued. However, if the alleged taking occurs only at cancellation by the Board, the thing taken was the questionable validity of the cancelled claims. If the claims would have been found invalid by an Article III court, nothing was lost. Therefore, the Patentee must argue that despite being found invalid by the Board (presumably after FC appeal), the claims would have nevertheless not been found invalid by a district court. Good luck with that.

    1. 4.1

      Please explain: “I have yet to see an argument (as opposed to an assertion) that this a property right

      Maybe use the i4i case in your explanation. Or the statutory clause written by Congress. Or the background to that clause.

    2. 4.2

      However, if the alleged taking occurs only at cancellation

      Come on now, NS II — you are just being obtuse at this point.

  3. 3

    With respect, anon, I am not sure why you or Dennis are surprised by any of this. Any seasoned appellate advocate will tell you, avoid mealy mouthed or academically-phrased questions, and if you can, write the “questions presented” in a way that the question itself suggests what the outcome should be. It’s arguably inherent in the requirement of zealous advocacy. Of course, you cannot write questions presented that don’t actually reflect the issues in the case, but none of the questions here come close to that line.

    And ultimately this level of advocacy is the fault of the judiciary, because judges rarely if ever call out this conduct, and litigants do not get any discernible kudos for writing their briefs and questions in a more academic/neutral fashion. The Supreme Court will often grant certiorari directly on a biased-sounding question posed by a litigant, which makes some litigants think the advocacy led to the grant. In any context, as here, the lack of guidance on proper conduct by the judiciary, tends to cause lawyers to gravitate towards the very edges of allowable advocacy.

    1. 3.1

      It is less “surprise” and more the simple lack of decorum and objectivity in presenting to the court the actual issue.

      I certainly “get” that training is otherwise (as is the rampant disconnect FROM objectivity).

      And there is nothing wrong with zealous advocacy — don’t misunderstand me on that regard. But as I said, the place for zealous advocacy is NOT in the abject spin of the question presented (and yes, when those questions don’t match and appear to be two different cases, the spin HAS gone too far).

  4. 2

    I am gratified to see the government properly locate the Takings question in the context of the actual V Amendment language (“… nor shall private property be taken for public use, without just compensation,” emphasis added). The real question of a “Takings” case is whether the property has been taken without just compensation. Here, the aggrieved party has never even tried to seek just compensation, so the question is simply unripe for the Court’s review.

    I think that the “Takings” argument is doomed to fail no matter how it be presented. Still and all, if one really wants to see this question answered, one might at least try to put it into a procedural posture in which review would be possible.

    1. 2.1

      You seem to want to put the onus on the wrong party (shockers). It is not up to the aggrieved to turn and attempt to obtain compensation. It is for the taker to PROVIDE just compensation. When NO compensation at all is provided for a Takings that occurs at the Institution Decision point (and prior to any adjudication on the merits) the LACK of ANY compensation is a de facto problem.

      You want to say “not ripe” and you are wrong. This is not the first time that you have pushed the non-ripe angle (exhausting lower possibility remedies), and you were wrong there too.

      Much like patent exhaustion (reread an old exchange this morning), when you are wrong, you are seriously wrong.

      1. 2.1.1

        How could a taking occur at institution? What property has been taken?

        For example, let’s say the PTAB institutes, but then in a FWD finds the claims patentable. The challenger is now estopped, but you’re saying the patent owner should be due some compensation?


          I hope that you have aspirin near to hand, because the answer is going to make your head ache.


            Incidentally, regardless of whatever nonsense answer you get, it is important to remember that “where an owner possesses a full ‘bundle’ of property rights, the destruction of one ‘strand’ of the bundle is not a taking, because the aggregate must be viewed in its entirety” (emphasis added). Andrus v. Allard, 444 U.S. 51, 66 (1979).


              Decent enough quote Greg, but NOT a complete and proper understanding of takings law. Takings may occur regardless of the number of sticks affected if the VALUE of the property is significantly impacted.

              See i4i and the notion that the taking of the presence AND LEVEL of the presumption of validity IS VERY MUCH of significant value.

              (and yes, I ‘get’ that someone will have to repeat this to the inte11ectual coward Greg who would rather snipe about what others may say — even as he cannot read what he snipes about — based on the prior beatdowns that he has received.

              One of those beatdowns was resurfaced of late on another thread: link to


                Doesn’t the issue of taking transcend the mere revocation of an issued patent?

                But for a functional and honest patent system, a patent owner would probably protect his intellectual property via mechanism of trade secret.

                SAWS, Ex parte reexamination, and USPTO review of a claim in an issued patent transform the USPTO into a machine for creating one bait-and-switch con-scam after another because (1) the USPTO pretends to offer an inventor protection for his private intellectual property, which could have otherwise been held in secret, but (2) after pretending to protect the intellectual property or to offer protection thereto, the USPTO then puts it into the public domain (takes it for public use) via churning and groundless rejection (SAWS & Ex parte reexamination + SAWS) or via cancellation (post-grant review).

                When the behavior of the USPTO is described in the above fashion, it can be easily considered a combination of illegal/unconstitutional taking combined with fraud in inducement.

                1. USPTO review of a claim in an issued patent is a legal rat’s nest.

                  GE appears about to argue incorrectness of the CAFC holding of GE’s lack of standing to appeal a FWD.

                  Inherently corruption-inviting USPTO review of a claim in an issued patent was justified in part because an Article I tribunal does not have the strict standing rules of an Article III federal court, and it was argued that only an Article I tribunal could provide an action comparable to an EPO opposition.

                  I contend in “Replacing USPTO Review of Issued Patents (updated version)” that Congress could legislate a federal district court action in which any legal person could have standing.

                  I wonder whether GE will develop arguments of the sort that I am making.

                  If GE prevails against all odds, is there any purpose to the bait-and-switch con-scam of a USPTO post-issuance review proceeding except perhaps to encourage either

                  • bribery of USPTO officials by wannabe infringers or

                  • shakedowns perpetrated by the selfsame officials against firms either accused or likely to be accused of infringement?

                  [I know whereof I speak. My uncle grew rich while he worked in the role of a corrupt IRS official. For a number of years, his son-in-law worked at the USPTO in the role of patent examiner. When my uncle learned how the USPTO was organized, he commented that he had worked for the wrong agency because he could have achieved an order of magnitude more wealth at the USPTO. (My uncle suffered no shame for his criminality.)]

                2. Congress could legislate a federal district court action in which any legal person could have standing.

                  We’ve been over this – you are wrong.

                3. You keep making an assertion of lack of standing, but the cases you cite are between a legal person and a federal government administrative agency. The text of the cases explicitly states that there is a heightened standing requirement when the defendant is the US government.

                  I agree that with these precedents one might not have standing in an action against the USPTO, but in the Quiet/Try Patent Claim Validity action that I propose, the Defendant is not the US government.

                  I presume that GE will point out in its petition for writ of certiorari that the same situation obtains for the appeal that it wishes to bring before the CAFC.

                  I have noticed that there are a few quiet/try title cases that have been pled in federal courts. As the US government attempts to privatize federal parklands and thus remove a geographic region from public use, it will be interesting to find out if a member of the public has standing for a lawsuit against the federal government in that case.

                  I designed a federal action that dealt with an epistemographic region instead of a geographic region. I don’t perceive a reason for different treatment, and in the try/quiet claim validity action the defendant would not even be the federal government but would be the patent holder.

                4. Your standing fraility is not on the defendant side — go back and look at what I provided you previously from the plaintiff side.


          No aspirin needed.

          Compare the sum total of all of the elements of your granted property right immediately before institution and the sum total of what you have after institution.

          Then think of what i4i fought for — and won — at the Supreme Court.

    2. 2.2

      This is exactly right, and drove me nuts about the decision here and in Celgene. In a perfect world, SCOTUS would vacate these decisions, at least as they pertain to the takings issue.

      1. 2.2.1

        Celgene was a serious flub, and I certainly hope that the next attempt is made by someone that actually understands Takings law.

    3. 2.3

      This seems ripe to me. What do you want a Collabo lawsuit against the government asking for $10 million dollars for taking the patent?

      But I agree that if the Scotus takes this or any of the takings cases regarding the AIA that they will figure some way to slip out of it. Seems like the DOJ brief is providing one way to slip out of it.

      1. 2.3.1

        What do you want a Collabo lawsuit against the government asking for $10 million dollars for taking the patent?

        In a word, yes. If you think that the government owes you money, then the law provides a remedy for that. You sue the government in the Court of Federal Claims. If you do not bother to bring that suit, then you have no one to blame but yourself if you have not been compensated.

        The Supreme Court is a court of review, not a court of first instance. The appellant here would (if the question presented were intended in earnest, and not merely a risible effort to salvage the inevitably lost) be asking the Court to assess a just compensation in the first instance—with zero fact in the record on which to make that assessment. This just is not the Court’s job, and there is no degree of appellate advocacy so skilled as to be able to make the taking of that job sound attractive to any four of the nine justices.


            He’s not right — we’ve been over a similar “you have to do “X” first” routine and Greg simply does not know Takings law.


            Maybe you are right.

            Honest, whether I am correct in 2.3.1 is irrelevant to the point that I am making in 2. My point in post #2 is that the SG is rightly situating the case in the context of the applicable law, which requires just compensation in the case of a Taking.

            The problem with the petition here is that Collabo does not want compensation. Collabo wants the entire IPR system to be struck down as unconstitutional (see pg. 32)—or at the very least Collabo wants that its own adverse IPR decision be vacated (pg. 22).

            This just is not a legally available remedy for a Takings. The remedy for Takings is Just Compensation. The fact that Collabo is not asking for just compensation tells you everything that you need to know about the seriousness with which Collabo’s argument should be entertained.


              Seems like Collabo is asking whether the AIA is unconstitutional for not including a compensation if your patent was granted before the AIA and it is invalidated under the AIA.

              The issue is whether for a takings it would have to be included in the statute or not. But I agree that Collabo directed it to overturning IPRs on pre-AIA granted patents or applied for.


                To say that a statute must be struck down as unconstitutional every time the executive takes action according to that statute that is eventually found to be a taking, unless the statute explicitly makes provision for compensation in the event of a taking would be a huge change in Takings law. Moreover, this would be totally out of line with literally centuries of prior practice. If that is really what Collabo is asking the Court to give them (I think that you are giving Collabo more credit than they deserve in reading their petition in that manner), then that just goes to demonstrate what I said above—that is all that you need to know about the seriousness with which Collabo’s argument should be considered.

                1. Writing as someone who knows little about Takings law, but would be interested in the answers to these questions: If the government concedes that a taking has occurred but contends that the petitioner loses anyway because it did not seek just compensation, won’t subsequent litigants seek just compensation? What happens in those subsequent cases?

                2. After Anon,

                  Does not matter because you are accepting a false premise.

                  One simply NEED NOT exhaust the path of seeking just compensation to challenge a law as being unconstitutional under the Takings doctrine.

                  This was covered within the last year and a half. Greg was wrong then. Greg is still wrong now.


              The remedy for Takings is Just Compensation.

              Absolutely wrong.

              Laws can be, are, and have been struck down as unconstitutional — the fallacy here of “remedy of money” fixes the law is just that: a fallacy.

    4. 2.4

      I agree. The patentee needs to prove that a Taking occurred and the value of the loss. For instance a damages award where the patent is held infringed and not invalid under Section 284. That would be a straightforward quantifiable confirmation 1) that a Taking occurred and 2) the just compensation therefor.


          Greg does not believe that the presumption of validity (neither its existence, or its level) is an attribute of the property of the granted patent.


              Not likely.

              I may be the one that is vocal about it. I grant you that.

              But Greg is an inte11ectual coward, and will not deign to actually engage in a dialogue.

              We can why from the dialogue on exhaustion — a similar type of legal issue in which Greg thought that he was correct when he was so completely wrong. He let his undies get all in a bunch and has been nursing his injured ego ever since.


              At a minimum, Collabo disagrees with my position, if only because I disagree with their position. Evidently, around these parts, there appears to be a consensus against Collabo’s argument.


                ??? I don’t think that it is proper to take silence as consensus to your views.

                That’s more than just a bit egotistical.

  5. 1

    I find this less enjoyable and more sanctionable.

    The question presented should be an objective and accurate statement setting the stage for the LATER attempts at advocacy.

    When the questions presented neither match each other, nor the actual issue of the case below, how then is a reviewing court to take seriously (that is, not recognize the bias) in the attempt to set forth plainly the issue?

    These items to the courts are not blog posts (where certain shenanigans run rampant — and yes, I am talking about you, Malcolm).

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