Syllabus

of art signaling court/court review. Most of them use "manifest error, which is not now such a term of art. At the same time, this Court's precedent undermines the claim that "clearly wrong" or "manifest error" signal court/court review. Although the Court in Morgan v. Daniels, 153 U. S. 120, used language that could be read as setting forth a court/court standard, the Court's reasoning makes clear that it meant its words to stand for a court/agency standard. The CCPA's cases reveal a similar pattern, using words such as "clearly wrong" and "manifest error" with explanations indicating that they had court/agency, not court/court, review in mind. Pp. 154-161.

(b) Several policy reasons that the Federal Circuit believes militate against using APA review standards-that a change will be disruptive to the bench and bar; that the change will create an anomaly in which a disappointed patent applicant who seeks review directly in the Federal Circuit will be subject to court/agency review, while one who first seeks review in a district court will have any further appeal reviewed under a court/court standard; and that stricter review produces better agency factfinding—are unconvincing. Pp. 161-165.

142 F.3d 1447, reversed and remanded.

BREYER, J., delivered the opinion of the Court, in which STEVENS, O'CONNOR, SCALIA, SOUTER, and THOMAS, JJ., joined. REHNQUIST, C. J., filed a dissenting opinion, in which KENNEDY and GINSBURG, JJ., joined, post, p. 170.

Deputy Solicitor General Wallace argued the cause for petitioner. With him on the briefs were Solicitor General Waxman, Assistant Attorney General Hunger, Edward C. DuMont, William Kanter, Bruce G. Forrest, Albin F. Drost, Karen A. Buchanan, and Kenneth R. Corsello.

Ernest Gellhorn argued the cause for respondents. With him on the brief were Jeffrey S. Lubbers, Ann G. Weymouth, Janice M. Mueller, and Russell Wong.*

*Briefs of amici curiae urging reversal were filed for Intellectual Property Professors by John F. Duffy and Thomas G. Field, Jr.; and for Theis Research, Inc., by Paul R. Johnson.

Briefs of amici curiae urging affirmance were filed for the Biotechnology Industry Organization by Scott F. Partridge, Bob E. Shannon, and Scott K. Field; for the Houston Intellectual Property Law Association by Jeffrey W. Tayon; for the International Trademark Association by Albert Robin; for the New York Intellectual Property Law Association by Bruce

Opinion of the Court

JUSTICE BREYER delivered the opinion of the Court.

The Administrative Procedure Act (APA) sets forth standards governing judicial review of findings of fact made by federal administrative agencies. 5 U. S. C. § 706. We must decide whether § 706 applies when the Federal Circuit reviews findings of fact made by the Patent and Trademark Office (PTO). We conclude that it does apply, and the Federal Circuit must use the framework set forth in that section.

I

Section 706, originally enacted in 1946, sets forth standards that govern the "Scope" of court "review" of, e. g., agency factfinding (what we shall call court/agency review). It says that a

"reviewing court shall—

...

“(2) hold unlawful and set aside agency . . . findings found to be

"(A) arbitrary, capricious, [or] an abuse of discretion,

"(E) unsupported by substantial evidence in a case subject to sections 556 and 557 of this title or otherwise reviewed on the record of an agency hearing provided by statute; ...

M. Wexler and Howard B. Barnaby; for the Patent, Trademark & Copyright Section of the Bar Association of the District of Columbia by Lynn Eccleston, David W. Long, and Harold Wegner; for Pharmaceutical Research and Manufacturers of America by Gerald J. Mossinghoff; and for John P. Sutton, pro se.

Briefs of amici curiae were filed for the Dallas-Fort Worth Intellectual Property Law Association by D. Scott Hemingway; and for Intellectual Property Creators et al. by David Roy Pressman, pro se.

Opinion of the Court

"In making the foregoing determinations, the court shall review the whole record or those parts of it cited by a party...."

Federal Rule of Civil Procedure 52(a) sets forth standards that govern appellate court review of findings of fact made by a district court judge (what we shall call court/court review). It says that the appellate court shall set aside those findings only if they are "clearly erroneous." Traditionally, this court/court standard of review has been considered somewhat stricter (i. e., allowing somewhat closer judicial review) than the APA's court/agency standards. 2 K. Davis & R. Pierce, Administrative Law Treatise § 11.2, p. 174 (3d ed. 1994) (hereinafter Davis & Pierce).

The Court of Appeals for the Federal Circuit believes that it should apply the "clearly erroneous" standard when it reviews findings of fact made by the PTO. In re Zurko, 142 F. 3d 1447, 1459 (1998) (case below). The Commissioner of Patents, the PTO's head, believes to the contrary that ordinary APA court/agency standards apply. See, e. g., In re Kemps, 97 F. 3d 1427, 1430-1431 (CA Fed. 1996); In re Napier, 55 F. 3d 610, 614 (CA Fed. 1995); In re Brana, 51 F.3d 1560, 1568-1569 (CA Fed. 1995).

The case before us tests these two competing legal views. Respondents applied for a patent upon a method for increasing computer security. The PTO patent examiner concluded that respondents' method was obvious in light of prior art, and so it denied the application. See 35 U. S. C. § 103 (1994 ed., Supp. III). The PTO's review board (the Board of Patent Appeals and Interferences) upheld the examiner's decision. Respondents sought review in the Federal Circuit, where a panel treated the question of what the prior art teaches as one of fact, and agreed with respondents that the PTO's factual finding was "clearly erroneous." In re Zurko, 111 F.3d 887, 889, and n. 2 (1997).

The Federal Circuit, hoping definitively to resolve the review-standard controversy, then heard the matter en banc.

Opinion of the Court

After examining relevant precedents, the en banc court conIcluded that its use of the stricter court/court standard was legally proper. The Solicitor General, representing the Commissioner of Patents, sought certiorari. We granted the writ in order to decide whether the Federal Circuit's review of PTO factfinding must take place within the framework set forth in the APA.

II

The parties agree that the PTO is an "agency" subject to the APA's constraints, that the PTO's finding at issue in this case is one of fact, and that the finding constitutes "agency action." See 5 U. S. C. § 701 (defining "agency" as an "authority of the Government of the United States"); § 706 (applying APA "Scope of review" provisions to "agency action"). Hence a reviewing court must apply the APA's court/agency review standards in the absence of an exception.

The Federal Circuit rests its claim for an exception upon § 559. That section says that the APA does "not limit or repeal additional requirements . . . recognized by law." In the Circuit's view: (1) at the time of the APA's adoption, in 1946, the Court of Customs and Patent Appeals (CCPA), a Federal Circuit predecessor, applied a court/court “clearly erroneous" standard; (2) that standard was stricter than ordinary court/agency review standards; and (3) that special tradition of strict review consequently amounted to an "additional requirement" that under § 559 trumps the requirements imposed by § 706.

Recognizing the importance of maintaining a uniform approach to judicial review of administrative action, see, e. g., Universal Camera Corp. v. NLRB, 340 U. S. 474, 489 (1951); 92 Cong. Rec. 5654 (1946) (statement of Rep. Walter), we have closely examined the Federal Circuit's claim for an exception to that uniformity. In doing so, we believe that respondents must show more than a possibility of a height

Opinion of the Court

ened standard, and indeed more than even a bare preponderance of evidence in their favor. Existence of the additional requirement must be clear. This is suggested both by the phrase "recognized by law" and by the congressional specification in the APA that "[n]o subsequent legislation shall be held to supersede or modify the provisions of this Act except to the extent that such legislation shall do so expressly." § 12, 60 Stat. 244, 5 U. S. C. §559. A statutory intent that legislative departure from the norm must be clear suggests a need for similar clarity in respect to grandfathered common-law variations. The APA was meant to bring uniformity to a field full of variation and diversity. It would frustrate that purpose to permit divergence on the basis of a requirement "recognized" only as ambiguous. In any event, we have examined the 89 cases which, according to respondents and supporting amici, embody the pre-APA standard of review. See App. to Brief for New York Intellectual Property Law Association as Amicus Curiae 1a-6a (collecting cases), and we conclude that those cases do not reflect a well-established stricter court/court standard of judicial review for PTO factfinding, which circumstance fatally undermines the Federal Circuit's conclusion.

The 89 pre-APA cases all involve CCPA review of a PTO administrative decision, which either denied a patent or awarded priority to one of several competing applicants. See 35 U. S. C. §59a (1934 ed.) (granting CCPA review authority over PTO decisions); 35 U. S. C. § 141 (current grant of review authority to the Federal Circuit). The major consideration that favors the Federal Circuit's view consists of the fact that 23 of the cases use words such as "clear case of error" or "clearly wrong" to describe the CCPA's review standard, while the remainder use words such as "manifest error," which might be thought to mean the same thing. See App. to Brief for New York Intellectual Property Law Association as Amicus Curiae 1a-6a. When the CCPA decided many of these cases during the 1930's and early 1940's,