Dickinson v. Zurko

Mary Zurko applied for a patent on a method of increasing computer security. The United States Patent and Trademark Office (PTO) examiner rejected Zurko’s application on the ground of obviousness in light of the prior art. The PTO appeals board affirmed. Zurko appealed to the United States Court of Appeals for the Federal Circuit, of which a panel reviewed the case. The panel treated the prior-art issue as one of fact and held that the PTO’s factual finding was clearly erroneous. However, the standard of review raised a separate question. The Administrative Procedure Act (APA), which established standards of judicial review of findings of fact by federal agencies, stated in § 706 that a reviewing court shall set aside agency findings that are arbitrary, capricious, or an abuse of discretion. The Federal Circuit reconvened en banc and determined that, despite § 706, clearly erroneous remained the preferable standard—a somewhat stricter standard that allowed for closer judicial review. The PTO disagreed, urging that the § 706 standard applied to Federal Circuit review. Acting PTO commissioner Q. Todd Dickinson petitioned the United States Supreme Court for certiorari to resolve the dispute. Certiorari was granted. The Federal Circuit cited APA § 559, which allowed for exceptions to the § 706 standard for additional requirements recognized by law. The Federal Circuit presented 89 examples of opinions from its predecessor, the Court of Customs and Patents Appeals, that purportedly represented a recognized pre-APA standard of review, though the cited cases used inconsistent standards, and none used the term “clearly erroneous.”