Re: SCOTUS rules in Dickerson v. Zurko

On Fri, 11 Jun 1999, John Noble <jnoble[_at_]dgsys.com> wrote:
>
> 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>.
....
>
> 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."

The trouble is, the CAFC's "clearly erroneous" standard was basically a de novo review with virtually no deference to the PTO whatsoever. I think that this decision will make a big difference in that we have been observing the spectacle, which would have startled Justice Clark, of the court (namely the CAFC) forcing the PTO to issue patents it didn't wish to issue. I think that there are still issues of agency capture to consider, but the fact is that court capture was even more serious.

John Kasdan
<kasdan[_at_]columbia.edu> Received on Sun Jun 20 1999 - 23:36:34 GMT