Dickinson v. Zurko
527 U.S. 150 (1999)
Rule of Law:
Judicial review of factual findings made by the Patent and Trademark Office (PTO) is governed by the standards of review set forth in the Administrative Procedure Act (APA), 5 U.S.C. § 706, not the stricter "clearly erroneous" standard.
Facts:
- Respondents applied for a patent for a method designed to increase computer security.
- A patent examiner at the Patent and Trademark Office (PTO) reviewed the application.
- The examiner rejected the application, concluding that the proposed method was obvious in light of prior art.
- Respondents appealed the examiner's decision to the PTO's Board of Patent Appeals and Interferences.
- The Board of Patent Appeals and Interferences affirmed the examiner's decision to deny the patent application.
Procedural Posture:
- Respondents sought judicial review of the Board's decision in the U.S. Court of Appeals for the Federal Circuit.
- A panel of the Federal Circuit, applying the 'clearly erroneous' standard of review to the PTO's factual finding, reversed the Board's decision.
- The Federal Circuit then granted a petition for rehearing en banc to resolve the dispute over the appropriate standard of review.
- The en banc Federal Circuit held that 'clearly erroneous' was the correct standard and affirmed its prior judgment.
- The Commissioner of Patents and Trademarks (Dickinson), the petitioner, successfully petitioned the U.S. Supreme Court for a writ of certiorari.
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Issue:
Does the Administrative Procedure Act's standard of review, rather than the stricter 'clearly erroneous' standard, govern the U.S. Court of Appeals for the Federal Circuit's review of factual findings made by the Patent and Trademark Office?
Opinions:
Majority - Justice Breyer
Yes, the Federal Circuit's review of PTO factfinding must take place within the framework set forth in the Administrative Procedure Act (APA). The PTO is an agency subject to the APA, and its factual findings are agency actions, meaning the APA standards in § 706 apply unless an exception exists. The Federal Circuit argued for an exception under § 559 of the APA, which grandfathers 'additional requirements... recognized by law' that pre-date the APA's 1946 enactment. However, for such an exception to apply, the existence of the heightened standard must be clear, not merely ambiguous. A review of the pre-1946 case law from the Court of Customs and Patent Appeals (CCPA), the Federal Circuit's predecessor, does not clearly establish that a stricter 'clearly erroneous' standard was applied. While those cases used terms like 'manifest error,' the language was inconsistent, and the courts' reasoning—deferring to agency expertise and technical complexity—is characteristic of the deferential court-agency review standard, not the stricter court-court standard. Therefore, no clear pre-APA requirement for a stricter standard existed, the § 559 exception is inapplicable, and the APA's uniform standards must govern.
Dissenting - Chief Justice Rehnquist
No, the 'clearly erroneous' standard was an 'additional requirement... recognized by law' under APA § 559 and should continue to apply. The unanimous en banc Federal Circuit, a specialized court with expertise in patent law, concluded that the stricter standard was the established pre-APA practice, and this Court should defer to that conclusion. The APA was intended to raise the minimum standards of judicial review, not to lower stricter standards that were already in place. The majority improperly creates a 'clear statement' rule for pre-APA common law, as the statute's text requires only that a standard be 'recognized by law,' not 'clearly recognized.' The majority's reasoning conflates the APA's provision for subsequent statutes with its preservation of antecedent common-law requirements.
Analysis:
This decision reinforces the principle of uniformity in administrative law, holding that even specialized appellate courts like the Federal Circuit must adhere to the standard review framework of the APA. It significantly narrows the scope of the APA's § 559 'grandfather clause' by requiring a showing of 'clarity' for any claimed pre-existing common law exception. While the Court suggests the practical difference between the 'substantial evidence' and 'clearly erroneous' standards is subtle, the ruling formally increases the deference the Federal Circuit must give to the PTO's factual determinations, potentially making it more difficult to overturn patent denials based on factual disputes.
