## Facts

- Patent applicants sought a patent that a PTO examiner rejected; the Board of Patent Appeals and Interferences affirmed the rejection.
- The applicants appealed to the U.S. Court of Appeals for the Federal Circuit.
- A Federal Circuit panel reversed the Board, and the court later reaffirmed reversal en banc.
- The Federal Circuit applied a “clearly erroneous” standard to the PTO’s factual findings, treating review as analogous to appellate review of district court fact-finding.
- The Acting Commissioner of Patents and Trademarks petitioned for Supreme Court review to determine the proper standard for judicial review of PTO fact-finding.

## Issues

1. Whether the Federal Circuit, when reviewing PTO factual findings, must apply the Administrative Procedure Act (APA) standards in 5 U.S.C. § 706 rather than the “clearly erroneous” standard.
2. Whether any pre-APA practice of the PTO’s reviewing court constituted an “additional requirement” preserved by 5 U.S.C. § 559 that would displace the APA’s default review framework.

## Decision

- The Supreme Court reversed and remanded.
- The Court held that the Federal Circuit must use the framework set forth in APA § 706 when reviewing PTO findings of fact.
- The Court rejected the Federal Circuit’s reliance on an asserted historical tradition of stricter review as insufficient to create a lawful exception preserved by APA § 559.
- The Court concluded that, absent a valid exception, PTO fact-finding is reviewed under APA standards such as “unsupported by substantial evidence” and “arbitrary, capricious, [or] an abuse of discretion.”
- Chief Justice Rehnquist dissented, joined by Justices Kennedy and Ginsburg, reasoning that historical practice supported more searching review and that APA § 559 preserved it.

## Legal Principles

- Judicial review of federal agency fact-finding is governed by APA § 706 unless a statute or legally recognized exception provides otherwise.
- The “clearly erroneous” standard is a court/court appellate standard and does not apply to review of agency factual determinations absent clear authorization.
- APA § 559 preserves “additional requirements” only if they are genuinely “recognized by law” in a way sufficient to override the APA’s default review provisions.
- Ambiguous pre-APA terminology (e.g., “manifest error,” “clearly wrong”) does not, without more, establish that a stricter, court/court standard applied to PTO decisions.
- Specialized subject matter (including patent administration) does not by itself justify departure from generally applicable administrative law standards.

## Conclusion

The Court required the Federal Circuit to review PTO factual findings under the APA’s § 706 standards—such as substantial-evidence and arbitrary-and-capricious review—rejecting the Federal Circuit’s use of the stricter clearly erroneous standard based on asserted historical practice.


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