Notice & Comment

Immigration, Patents, and Judicial Review of Agency Action, by Saurabh Vishnubhakat

This week’s Supreme Court decision in Guerrero-Lasprilla v. Barr does more than subject the Board of Immigration Appeals to broader judicial review over the removal of criminal aliens. It offers clues to Thryv v. Click-to-Call Technologies, an important patent law case that is now before the Court—and that was, in fact, argued the same day as Guerrero-Lasprilla. It also signals, through a dissent penned by Justice Thomas and joined less-than-fully by Justice Alito, an emerging debate within the Court over the continuing vitality of administrative law’s presumption in favor of judicial review over agency actions.

The Immigration Case

The judicial review sought in Guerrero-Lasprilla was over the equitable tolling of a statutory deadline. The case began with two such requests for tolling, one by Pedro Pablo Guerrero-Lasprilla and the other by Ruben Ovalles. Both men were ordered removable (and subsequently were removed) under the Immigration and Nationality Act for committing drug-related crimes. Neither of them sought to reopen his removal case within the 90-day deadline set forth in 8 U.S.C. § 1229a(c)(7)(C)(i).

Instead they sought, each over a decade later, to reopen their respective cases because judicial and administrative decisions in the intervening years had made them eligible for discretionary relief. They argued that the 90-day deadline should be equitably tolled, but the Board of Immigration Appeals found that they had not shown the due diligence necessary for equitable tolling and denied both of their petitions. The Fifth Circuit rejected their appeals, concluding that the statute made the BIA’s decisions judicially unreviewable. The Court granted certiorari and consolidated.

The relevant statute, 8 U.S.C. § 1252, insulates certain BIA determinations from judicial review:

Notwithstanding any other provision of law (statutory or nonstatutory), including section 2241 of title 28, or any other habeas corpus provision, and sections 1361 and 1651 of such title, and except as provided in subparagraph (D), no court shall have jurisdiction to review any final order of removal against an alien who is removable by reason of having committed a criminal offense covered in section 1182(a)(2) or 1227(a)(2)(A)(iii), (B), (C), or (D) of this title, or any offense covered by section 1227(a)(2)(A)(ii) of this title for which both predicate offenses are, without regard to their date of commission, otherwise covered by section 1227(a)(2)(A)(i) of this title.

8 U.S.C. § 1252(a)(2)(C) (emphasis added).

The same statute also contains some exceptions, for which judicial review remains intact:

Nothing in subparagraph (B) or (C), or in any other provision of this chapter (other than this section) which limits or eliminates judicial review, shall be construed as precluding review of constitutional claims or questions of law raised upon a petition for review filed with an appropriate court of appeals in accordance with this section.

8 U.S.C. § 1252(a)(2)(D) (emphasis added).

Both petitioners were plainly within the ambit of subparagraph (C), as they were removable for having committed a relevant crime. For both, the BIA had taken the legal standard for equitable tolling’s requirement of due diligence and had applied it to the facts of their respective cases—facts that, according to the petitioners, were undisputed. So the question was, does this application of law to undisputed or established facts amount to a “question of law” that is judicially reviewable under subparagraph (D)?

The Court majority said yes: it is a question of law and is reviewable. The majority reached that holding through ordinary exploration of the statutory text and history and of relevant precedent.

But the bedrock of the majority’s analysis was the “well-settled” and “strong presumption” in favor of finding administrative actions judicially reviewable. Slip op. at 6. That presumption, moreover, can be overcome only by “clear and convincing evidence” that Congress intended to foreclose judicial review. Id. Notably, among the cases that the majority cited was a 2016 decision in which that presumption was overcome, Cuozzo v. Lee. Cuozzo was the Court’s first foray into the procedural details of a new system for the administrative revocation of patent rights.

The Patent Case

Thryv v. Click-to-Call Technologies is the Court’s latest foray into that system. The issue in Click-to-Call is also the availability (or not) of judicial review, specifically judicial review of whether an administrative patent revocation proceeding has been timely sought—in this case, within one year. Thus far, the case is quite similar to Guerrero-Lasprilla. To be sure, there are differences in institutional structure and relevant statutory text between the Board of Immigration Appeals and the Patent Trial and Appeal Board. But as discussed below, those differences point even more strongly toward finding judicial reviewability.

Patent Law Exceptionalism

Indeed, from a patent law perspective, the Guerrero-Lasprilla majority’s invocation of the 2016 decision in Cuozzo was quite apt. It reflected the Court’s continued trend of correcting perceived exceptionalism across patent doctrine. The Cuozzo majority had upheld a nonappealability provision that governs Patent Office revocation proceedings, relying on the Court’s precedents from a variety of other administrative agency contexts and signaling that the Court’s thinking on patent law will draw much from other legal domains. Citing back to it now in Guerrero-Lasprilla sends an equally salient signal that the Court’s patent decisions will also offer much in return.

Much of the Court’s patent jurisprudence over the past two decades has worked to reduce exceptionalism in this way, from eBay v. MercExchange (on the availability of injunctive relief in patent cases) to MedImmune v. Genentech (on the level of Article III standing required in patent cases) to a trilogy of cases culminating in Commil v. Cisco (on the tort foundations of patent infringement liability). The trend has been especially salient for patent exceptionalism in administrative process, beginning with the Court’s 1999 decision in Dickinson v. Zurko (on the applicability of the Administrative Procedure Act to the Patent Office).

Administrative Patent Revocation and Judicial Review

That retrenchment in patent law’s administrative process accelerated in 2011 with the creation of a major new system of agency adjudication, inside the Patent Office, to reevaluate and revoke patents that the agency itself had previously issued. Designed deliberately as an expert substitute for federal court litigation, this system is generally a two-part process:

  1. First, a petitioner (someone other than the patent owner) challenges the validity of a patent and offers initial evidence and argument, as with a court complaint. Based on that petition and a preliminary response by the patent owner, the agency’s Patent Trial and Appeal Board decides whether to “institute” a case, i.e., whether to undertake an adversarial administrative trial on the merits of the patent.
  2. Assuming the case is instituted, second comes the administrative trial itself. The parties can offer and rebut evidence, submit briefing, and make oral arguments. The proceeding does not include all the hallmarks of civil litigation, such as subpoena power and live witness testimony, but in all the adjudication is relatively formal.

What about judicial review? Where the PTAB does institute, the final written decision on the merits by the PTAB panel of three administrative patent judges is subject to judicial review in the Court of Appeals for the Federal Circuit. (Incidentally, the PTAB’s “administrative patent judges” are not ordinary ALJs, which has led to some controversy of its own.)

The decision whether to institute in the first place, however, is not judicially reviewable:

The determination by the Director whether to institute inter partes review under this section shall be final and nonappealable.

35 U.S.C. § 314(d). Moreover, in its 2016 Cuozzo decision, the Court held that § 314(d) is not merely a bar on interlocutory review, i.e., it does not make institution decisions nonreviewable merely at the time (while leaving them reviewable later, as part of the eventual final written decision).

Instead, held the Court, § 314(d) bars all review at any time (even after all the agency tribunal’s other actions have merged into its final written decision) of the decision whether to institute. It also bars review of issues “closely related” to institution. In light of Cuozzo, the question in Click-to-Call is whether the timeliness of a petition for PTAB review is “closely related” to institution.

Judicial Review of Timeliness in Click-to-Call

That question of timeliness is intimately connected to the very purpose of PTAB adjudication as a substitute for federal court litigation. The one-year deadline for seeking PTAB review of a patent runs from the assertion of that patent in an infringement complaint in U.S. district court:

An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).

35 U.S.C. § 315(b) (emphasis added). In other words, someone who has been sued for patent infringement can respond with arguments about the patent’s invalidity, and those arguments can be made either to the court or to the PTAB. But if the accused infringer wishes to come to the PTAB, it must do so within one year of being served or else forgo the expert agency option altogether.

Notably, the nonappealability provision of § 314(d) focuses on determinations by the Director (or, implicitly, by his delegee). The reasoning of Cuozzo, too, frames the institution decision as being nonreviewable because it is within the discretion of the Director. By contrast, the one-year time bar of § 315(b) is written as a statutory limit on agency authority, with no reference to the Director or to agency discretion. As my fellow amici and I have argued, this basic distinction is at the heart of why the one-year bar should be subject to judicial review. The well-settled presumption favoring judicial review of agency action strengthens that conclusion even further.

Back to Guerrero-Lasprilla: The Presumption of Judicial Reviewability

Yet that presumption itself also came under question in Guerrero-Lasprilla. Justice Thomas, joined by Justice Alito, disagreed with the majority’s view that the BIA’s denial of equitable tolling for lack of due diligence is judicially reviewable as a “question of law.” He also criticized the majority opinion for concluding categorically and, in his view, unnecessarily “that federal courts may review immigration judges’ applications of any legal standard to established facts in criminal aliens’ removal proceedings.” Thomas op. at 1 (emphasis in original).

Justice Thomas’s dissent, however, went further in Part II-A-1, where he expressed “doubts about our modern cases applying the presumption of reviewability.” Id. at 6–7. The traditional view, he explained, was that courts are generally empowered to grant relief against unlawful agency action. In the past, though, this merely meant that courts would not preclude judicial review simply because a statute was silent in authorizing it. The modern presumption, meanwhile, goes much further by shaping the interpretation of affirmative nonappealability statutes, not merely of statutory silences.

He also invoked the text of the APA itself. While agreeing that 5 U.S.C. § 702 does generally does provide review for individuals injured by agency action, he noted that § 701(a)(1) just as plainly contemplates that “statutes preclude judicial review.” In his view, the modern presumption arises instead from an atextual preference for the “purpose or spirit of the APA” and from a dubious reliance on legislative intent. Id. at 7–8. It also imposes a high bar for rebutting the presumption (clear and convincing legislative indications), impermissibly intruding upon the Article I and Article III powers of Congress to “to establish the jurisdiction of inferior federal courts and to regulate the appellate jurisdiction of this Court.” Id. at 8–9.

This is a remarkable development both for administrative law generally and for the patent system specifically. In Cuozzo as well as in SAS Institute v. Iancu, a 2018 decision that also implicated the scope of § 314(d) in limiting judicial review of the PTAB, Justice Thomas joined majority opinions of the Court that started from the presumption in favor of judicial review. SAS Institute was decided by a 5–4 majority and tracked the common (if simplistic) shorthand of conservative versus liberal justices, a split that for some was puzzling in the patent law context. There is good reason to think, however, that the decision is best understood as a proxy debate over the constitutional separation of powers between administrative agencies and the Article III courts. (The decision also reflected fractures of its own, with Justice Breyer’s dissent joined by Justices Ginsburg and Sotomayor but joined by Justice Kagan to the exclusion of a section that discussed Chevron deference as a flexible rule of thumb.)

Notably, Justice Alito did not join the dissent as to Part II-A-1 in which Justice Thomas expressed his doubts. Instead, Justice Alito’s position seems to be consistent with a middle way, one that continues to accept the legitimacy of the presumption favoring judicial review of agency action—but that, at least in this case, found the presumption to be successfully overcome by the statutory language. For his part, Justice Alito had dissented in Cuozzo and joined the majority in SAS Institute. That is to say, he would not only have started from the presumption favoring judicial review but would also have concluded that judicial review was ultimately available in both of those prior cases.

If Click-to-Call is, indeed, a clearer candidate for judicial review than Guerrero-Lasprilla, as I have argued above, then one may still reasonably conclude that the PTAB’s one-year time bar of § 315(b) is reviewable even if the presumption of reviewability does no work toward that conclusion. But in the finely divided debate over separation of powers that was already apparent in SAS Institute, Guerrero-Lasprilla may now have opened up a new line of argument in the reviewability of immigration disputes, patent disputes, and beyond.

Saurabh Vishnubhakat is a Professor of Law and a Professor of Engineering at the Texas A&M University and a Fellow of the Duke Law Center for Innovation Policy. He was an author of the Brief of Amici Curiae Professors of Patent and Administrative Law in Support of Respondent in Thryv v. Click-to-Call Technologies.

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