Re: SCOTUS grants cert in Lehman v. Zurko

John Noble <jnoble[_at_]dgsys.com> wrote:
>
> On 11/2/98, Terry Carroll <carroll[_at_]tjc.com> wrote:
> >
> > (Patent, not copyright, but I thought it'd be of interest.)
> >
> > Today, the Supreme Cort granted cert to review the Federal
> > Circuit's en banc decision in In Re Zurko, no 96-1258,
> > <http://www.law.emory.edu/fedcircuit/may98/96-1258.wpd.html>. In
> > Zurko, the Federal Circuit held that decisions of the US Patent
> > and Trademark Office determinations of patentability are to be
> > reviewed under the ordinary "clearly erroneous" standard of
> > review, rather than the Administrative Procedures Act standard
> > of review.
> >
> > Under the "clearly erroneous" standard, a decision may be reversed
> > if it is, well, clearly erroneous in its factual determinations
> > under the applicable law, as determined by the court. Under the
> > more deferential APA standard, basically, the decision may be
> > reversed only if it is found to be "arbitrary, capricious, an abuse
> > of discretion, or otherwise not in accordance with law." Under the
> > APA, the court ordinarily defers interpretation of the applicable
> > law to the agency charged with administering that law.
> >
> > I'll go out on a limb on this one and predict affirmance, probably
> > by a unanimous Court.
>
> Wanna bet? I was dumbfounded by the decision below (not so much the
> result as the fact that it was unanimous by the court sitting en banc).
> The cases poses the Federal Circuit's jealously-guarded, long-standing
> practice against the plain language of the APA which applies to judicial
> review of every other agency action. The Court's rationale -- that the
> APA doesn't prohibit the adoption of a more exacting standard -- strikes
> me as extremely strained. I think it's 9-0 to reverse. Also, I thought
> that the PTO essentially (though not formally) abandoned its claim that
> patentability decisions should be reviewed under the arbitrary and
> capricious standard of 706(a) in favor of the argument that they should
> be reviewed under the "substantial evidence" standard of 706(e), which
> is still more deferential than clearly erroneous but less deferential
> than arbitrary and capricious.
>
> > By the way, on the orders list, the Court also granted cert in
> > President Clinton v. James T. Goldsmith, no. 98-347. Anyone know
> > what this case is? (It also granted the motion of National
> > Institute of Military Justice for leave to file a brief as
> > amicus curiae.)
>
> I took a guess based on the identity of the amicus. It's a case out
> of the Court of Appeals for the Armed Forces. See
> http://www.armfor.uscourts.gov/opinions/1997Term/97-8012.htm. Clinton
> is named as Commander-in-Chief. The Court of Appeals held that the Ex
> Post Facto and/or Double Jeopardy clauses of the constitution barred
> Goldsmith's involuntary separation from service in the Air Force under
> a law enacted after he was court-martialed and sentenced to the brig
> for having unprotected sex. He has AIDs.

John is suggesting that the case be reversed 9-0, while Terry is suggesting just the opposite.

Personally, as a patent attorney, I find John's position quite scary (not that he has it, but what I think might happen if he is correct). My view is that the federal courts, esp. the Federal Circuit, act as an effective brake on what appear to me to sometimes be fairly arbitrary decisions by patent examiners. And I think that we all know that appeals within the PTO are less than totally unbiased.

My worry is that whatever arbitrary conduct we currently see in PTO examinations will increase dramatically if the ability to get meaningful review is substantially curtailed.

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Original portions Copyright 1998 Bruce E. Hayden,all rights reserved
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Bruce E. Hayden                      bhayden[_at_]acm.org
Phoenix, Arizona                     bhayden[_at_]ieee.org
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