In re Zurko, 142 F.3d 1447, 46 U.S.P.Q.2d 1691 (Fed. Cir. May 4, 1998).

[Cert. granted, Nov. 2, 1998]



Whether the U.S. Court of Appeals for the Federal Circuit should review Patent and Trademark Office fact-findings under the Administrative Procedure Act, 5 U.S.C. § 706, standard of review instead of its historic "clearly erroneous" standard.


No.  Section 559 of the Administrative Procedure Act and the doctrine of stare decisis permit the continued application of the "clearly erroneous" standard in the review of PTO fact-findings.


Upon the appeal by Mary E. Zurko et al. on the decision of the Board of Patent Appeals and Interferences rejecting their patent application, the Court of Appeals for the Federal Circuit reversed, holding that the Board's decision was based on "clearly erroneous findings of fact." Zurko, 111 F.3d 887, 42 U.S.P.Q.2d 1476 (Fed. Cir. 1997).  The court reheard the appeal in banc to consider the Commissioner of the Board's question as to whether the court should review Patent and Trademark Office fact-findings under the more deferential Administrative Procedure Act (APA) standard of review of "substantial evidence" instead of the "clearly erroneous" standard applied by the court.  The Commissioner argued that under the APA, the court should accept the factual findings underlying the Board's patentability determinations so long as they are supported by "probative evidence of a substantial nature," Zurko, 142 F.3d at 1449, or if they are not found to be arbitrary or capricious.  In contrast, under the "clearly erroneous" standard, the court had been affirming the Board's decisions if it lacked a "definite and firm conviction that a mistake had been made." Id.  From a historical survey of the U.S. patent statutes, the court found no standard of review of the Board's decision explicitly laid down by statute.  However, the court also found that its "clearly erroneous" standard of review had long been recognized by the common law. Since section 559 of the APA states that the Act was not meant to repeal existing requirements recognized by law, the court concluded that PTO patentability determinations were not necessarily subject to the more deferential "substantial evidence" or "arbitrary or capricious" standards of review under the APA.  Since the APA did not compel the change, the principle of stare decisis required that the court's current standard of review not be altered.

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