Re: SCOTUS rules in Dickerson v. Zurko

On 6/10/99, Terry Carroll <carroll[_at_]tjc.com> wrote:
>
> Today, the Supreme Court of the US handed down its opinion in Dickerson
> v. Zurko. As you may recall, the issue in this case was whether a
> court must analyze PTO factual findings under the FRCP "clearly
> erroneous" standard of review, or under the Administrative Procedure
> Act standard of review, which allows the court to overturn only if
> the PTO's findings are arbitrary, capricious, an abuse of discretion,
> or unsupported by substantial evidence.
>
> The court sided, 6-3, with the PTO, reversing the Federal Circuit, and
> said that the Federal Circuit and other courts have to start using the
> APA standard. You can read the case at
>
> <http://supct.law.cornell.edu/supct/html/98-377.ZS.html>.
>
> Breyer wrote for the majority, which included Stevens, O'Connor, Scalia,
> Souter, and Thomas. Rehnquist wrote a dissenting opinion, joined by
> Kennedy and Ginsburg.
>
> This has two consequences: First, it's going to be a lot tougher to
> appeal from a denial of patentability based on an novelty or obviousness
> rejection. (It's also going to be tough to have a court find a patent
> invalid in light of prior art that the PTO allowed the patent over, but
> that's always been tough.)

I suspect that difference will prove more rhetorical than real. The majority notes:

   "The upshot in terms of judicial review is some practical difference    in outcome depending upon which standard is used. The court/agency    standard, as we have said, is somewhat less strict that the    court/court standard. But the difference is a subtle one-so fine    that (apart from the present case) we have failed to uncover a single    instance in which a reviewing court conceded that use of one standard    rather than the other would in fact have produced a different    outcome."

> Second, it means I owe John Noble's favorite charity a donation. I bet
> on affirmance. John, if you would send me the name and address to which
> to donate, I'll be glad to pay off.

You're very gracious. I will admit that I thought this was a slam-dunk, 9-zip, and I'm especially surprised to find Rehnquist in dissent, while Scalia and Thomas hew predictably to the plain language of the statute.

You can send your check to:

SOME (So Others Might Eat)
71 "O" Street, N.W.
Washington, D.C. 20001-1290

Look at http://www.some.org/ if you want to know what they do with the money.

John Noble
<jnoble[_at_]dgsys.com> Received on Fri Jun 11 1999 - 12:42:27 GMT