Dickinson v. Zurko, 527 U.S. 150 (1999)

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certiorari to the united states court of appeals for the federal circuit

No. 98-377. Argued March 24, 1999—Decided June 10, 1999

In reviewing a Patent and Trademark Office (PTO) decision to deny respondents' patent application, the Federal Circuit analyzed the PTO's factual finding using a "clearly erroneous" standard of review, which generally governs appellate review of district court findings of fact (court/court review), rather than the less stringent standards set forth in the Administrative Procedure Act (APA), which permit a court to set aside agency findings of fact found to be arbitrary, capricious, an abuse of discretion, or unsupported by substantial evidence (court/agency review), 5 U. S. C. 706. The court found the PTO's factual finding to be clearly erroneous.

Held: The Federal Circuit must use the framework set forth in 706 when reviewing PTO findings of fact. Pp. 154-165.

(a) Absent an exception, a reviewing court must apply the APA's court/agency review standards to agency factual findings. The Federal Circuit bases such an exception on 5 U. S. C. 559, which provides that the APA does "not limit or repeal additional requirements . . . recognized by law." In its view, at the time the APA was adopted in 1946, the Court of Customs and Patent Appeals (CCPA), a Federal Circuit predecessor, applied a court/court standard that was stricter than ordinary court/agency review standards, and this special tradition of strict review amounted to an "additional requirement" that trumps 706's requirements. However, a close examination of the CCPA's cases reviewing PTO decisions do not reflect a well-established court/court standard. The presence of the phrases "clear case of error," "clearly wrong," and "manifest error" in those cases does not conclusively signal such review. The relevant linguistic conventions were less firmly established before the APA's adoption than they are today, with courts sometimes using words such as "clearly erroneous" to describe less strict court/agency review and words such as "substantial evidence" to describe stricter court/court review. The absence of the words "substantial evidence" in the CCPA's cases is not especially significant, since standardization of that term began to take hold only after Congress started using it in various federal statutes. Further, not one of the CCPA's opinions actually uses the words "clear error" or "clearly erroneous," which are terms

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