Abhyanker v. U.S. Pat. & Trademark Off., No. 23-00746, 2024 WL 3908107 (N.D. Cal. Aug. 19, 2024) (Martínez-Olguín, J.)

Abhyanker v. U.S. Pat. & Trademark Off., No. 23-00746, 2024 WL 3908107 (N.D. Cal. Aug. 19, 2024) (Martínez-Olguín, J.)

Re:  Request for records concerning USPTO ethics investigation into plaintiff’s legal practice

Disposition:  Granting defendant’s motion for summary judgment

• Litigation Considerations, Evidentiary Showing, Adequacy of Search:  The court notes that plaintiff’s request “sought . . . specific documents.”  The court finds that, “[g]iven that [the United States Patent & Trademark Office’s (“USPTO”)] found all of the documents [plaintiff] requested in his two FOIA requests, there can be no question that USPTO used a search method sufficient to produce the information [plaintiff] requested.”  “Though [plaintiff] focuses his argument on the absence of well-defined search terms to demonstrate the extent of USPTO’s search, his arguments do not stand up against this fact.”

• Exemption 5, Attorney Work-Product Privilege:  The court holds that “because the Committee memo is attorney work product, it is properly exempted from disclosure under FOIA Exemption 5.”  The court finds that “the Committee memo was prepared by . . . the OED attorney who was assigned to investigate misconduct allegations against [plaintiff].”  “OED’s Committee on Discipline considered allegations that [plaintiff], a registered practitioner before USPTO, violated various provisions of the USPTO Code of Professional Responsibility and/or the USPTO Rules of Professional Conduct.”  “The Committee memo is dated September 25, 2019, and consists of [the] legal analysis and recommendations regarding [plaintiff’s] alleged misconduct.”  “[The OED attorney] presented the memo as part of the presentation of evidence for the Committee on Discipline to consider in determining whether probable cause existed to bring charges under 37 C.F.R. § 11.32 against [plaintiff]; the Committee’s probable cause findings and recommendations were then forwarded to the OED Director.”  “The OED Director reviewed these findings in deciding whether to file a complaint against the practitioner.”  “Given this context, it is clear that [the OED attorney] prepared the Committee memo in anticipation of litigation.”  “[Plaintiff] argues that the attorney work product privilege does not apply here because the materials sought were prepared in the routine work of the agency, not in anticipation for litigation.”  “He fails to present any evidence to this effect.”

• Exemption 5, Deliberative Process Privilege:  “[T]he Court finds that USPTO properly withheld the Committee memo under Exemption 5 because it is both attorney work product and protected by the deliberative process privilege.”  The court finds that “the Committee memo is predecisional because it does not constitute OED’s final decision regarding discipline (i.e., OED Director’s complaint against Plaintiff) and instead represents the investigating attorney’s recommendation to the Committee, which is responsible for reviewing the evidence and providing a probable cause finding to the OED Director.”  “To disclose this information would reveal internal deliberations between the OED Director and the Committee, namely, internal analysis, impressions, and recommendations.”  “Disclosure would jeopardize the candid and comprehensive discussions that are essential for efficient and effective agency decision-making regarding the discipline of practitioners.”  “The interests of OED attorneys in presenting their analysis and recommendations to the Committee without fearing that these sensitive internal communications will be released publicly remains a compelling interest supporting withholding of such internal communications.”

• Exemption 7(A):  The court relates that “USPTO asserts Exemption 7(A) covers the redacted portions of [a 2019] memo and the Committee memo.”  The court finds that “[t]he documents in question here were compiled and/or created in furtherance of the USPTO’s mission:  to enforce the disciplinary rules pursuant to its authorities under 35 U.S.C. § 2(b)(2)(D), which authorizes the USPTO to ‘govern the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Office.’”  “[Plaintiff’s] FOIA requests seek records regarding OED’s investigation into his alleged misconduct.”  “While the investigative phase of the attorney discipline enforcement proceeding has ended, the proceeding is still active because the parties are awaiting the decision from the administrative law judge, and once that decision is issued, the parties have various administrative appeal options and federal court options.”  “The [2019] memo concerns OED’s initial findings, impressions, and opinions regarding whether OED should proceed in opening a disciplinary case against [plaintiff].”  “Disclosure of portions of the [2019] memo withheld under Exemption 7(A) would impede the ongoing disciplinary proceedings.”  “USPTO similarly contends that Exemption 7(A) applies to the Committee memo.”  “The memo was drafted at the conclusion of the investigation into [plaintiff] by an attorney and reflects the strengths and weaknesses of whether charges should be brought and which charges should be brought against him.”  “To provide this memo to [plaintiff] by way of a FOIA request would prejudice the Government’s ongoing case.”  “The Court accordingly agrees that the redacted memo and the withheld memo fall within the law enforcement protection afforded by Exemption 7(A).”

• Exemption 6; Exemption 7(C):  “The Court finds that USPTO properly invoked Exemptions 6 and 7(C) . . . .”  “USPTO advances that Exemption 6, in conjunction with Exemption 7(C), applies to a small portion of the first page of the [2019] memo that contains information about OED’s disciplinary investigations of individuals other than [plaintiff].”  “Using the same privacy-based combination, USPTO avers that Exemption 6 and Exemption 7(C) apply to the names and signatures of the members of the Committee on Discipline.”  “The Court concurs.”  “Both of these groups of redactions are similar to personnel or medical files in that their disclosure would impair the privacy interests of others facing disciplinary investigations separate from [plaintiff] as well as the privacy interests of members of the Committee on Discipline.”  “The privacy interests of these groups are significant, particularly to prevent embarrassment of irrelevant parties and harassment of members of the Committee on Discipline.” 
  
  “In response to both redactions, [plaintiff] states only ‘that the public interest in disclosure significantly outweighs the privacy concerns cited, especially given the alleged malfeasance.’”  “His stated FOIA interest in disclosure accordingly warrants little weight, particularly where he has obtained the substantive portions of the documents without those relatively minimal redactions.”  “Finally, there exists only minimal, if any, public interest in the information withheld under Exemption 7(C), because disclosing the redactions in the [2019] memo and the names redacted from [the] probable cause determination would not significantly increase ‘public understanding of the operations and activities of the Government.’”
   
• Litigation Considerations, Evidentiary Showing, “Reasonably Segregable” Showing:  The court finds that “USPTO conducted a line-by-line review of all responsive material to identify and release information that was either non-exempt or that qualified for discretionary waiver.”  “USPTO has provided thorough explanations for redacting or withholding the materials not fully released to [plaintiff], including asserting several privileges.”  “The Court finds that USPTO satisfies the standard for withholding the Committee memo in full, particularly because [plaintiff] presents no countervailing evidence that USPTO failed to present reasonably segregable portions of the applicable record.”