Boundy v. U.S. Patent & Trademark Off., No. 21-1366, 2023 WL 2567350 (E.D. Va. Mar. 17, 2023) (Tolliver Giles, J.)

Boundy v. U.S. Patent & Trademark Off., No. 21-1366, 2023 WL 2567350 (E.D. Va. Mar. 17, 2023) (Tolliver Giles, J.)

Re:  Request for records concerning acceptable signatories for patent applications

Disposition:  Granting defendant’s motion for summary judgment; denying plaintiff’s motion for summary judgment

• Litigation Considerations, Mootness and Other Grounds for Dismissal:  The court relates that, “[a]s an initial matter, Defendant argues that Plaintiff’s claim is moot and should be dismissed because Defendant ‘has fully complied with Plaintiff’s FOIA request’ by producing all responsive records to Plaintiff.”  “[The] Court finds that Plaintiff’s claim is not moot because Plaintiff challenges the adequacy of Defendant’s search, and this Court must still determine whether the pages withheld in full and in part by Defendant are being properly withheld under the FOIA.”
   
• Litigation Considerations, Adequacy of Search:  The court holds that “Defendant, in light of the totality of the circumstances, conducted a search that was reasonably calculated to find records responsive to Plaintiff’s request.”  “[A]ccording to [defendant], in response to Plaintiff's’ request, at least ten custodians conducted searches across [multiple offices].”  “[Defendant’s] Declaration also sets forth the methodology of and rationale behind the search process; indicates the types of searches performed; lists the various locations searched; and specifies the search terms used.”  “Plaintiff himself stated he thought he was ‘requesting at most a handful of documents,’ . . . and Defendant was permitted to ‘rel[y] on its identified custodians to know where and how to search for guidance on such a narrow, esoteric subject,’ . . . .”  “Plaintiff’s challenge to the adequacy of Defendant’s search focuses on the search terms used (and not used) by those custodians in their searches.”  “However, ‘[i]n general, a FOIA petitioner cannot dictate the search terms for his or her FOIA request.’”  “‘Rather, a federal agency has discretion in crafting a list of search terms that they believe to be reasonably tailored to uncover documents responsive to the FOIA request.’”  Additionally, the court finds that “[w]hen it became clear to Defendant that Plaintiff had not, in fact, intended to narrow his request and sought more documents beyond the 2016 Authority Chart, Defendant remanded and reopened Plaintiff’s request, and conducted a reexamination of the records that had been collected via its initial search.”  “Furthermore, Defendant’s willingness to conduct additional searches in response to Plaintiff’s objections – even though Defendant was not required to make additional searches . . . ‘substantially undercut[s] any suggestion of bad faith.’”  Finally, the court finds that “although Plaintiff ‘seems to believe that there are other documents that he is entitled to, this belief, standing alone, is inadequate to withstand a motion for summary judgment.’”
   
• Exemption 5, Deliberative Process Privilege:  “Upon in camera review, the Court finds that while most of the information was properly redacted pursuant to Exemption Five, some information – namely, two images . . . – was improperly withheld and must be disclosed to Plaintiff.”  The court relates that “Defendant contends that it redacted certain information that consisted of ‘communications between agency personnel’ regarding: ‘a proposed change to an existing guidance document (the 2016 Authority Chart) that was never finalized;’ ‘the application of existing regulation, policy, and guidance to specific patent applications being processed by [the United States Patent and Trademark Office (“USPTO”)]’; and ‘Plaintiff’s FOIA request, including whether specific documents were releasable to the public.’”  The court finds that “[a]ll of the withheld documents consist of email discussions between USPTO personnel.”  “In camera review of [four documents] confirms that the information therein is predecisional and deliberative and, thus, properly redacted under the deliberative process privilege.”  “[The first document reviewed] focuses on the application of existing policy to specific situations posed by specific patent applications and contains comments from individual USPTO employees as to how the Manual of Patent Examining Procedure (‘MPEP’), a public document, and the Authority Chart should be applied in approving or denying specific titles.”  “[This document] also evidences internal debate over objective and subjective interpretations of the MPEP.”  “As these discussions reflect ‘recommendations’ and ‘the personal opinions of the writer rather than the policy of the agency,’ they are covered by the deliberative process privilege and were properly redacted.”  “[Three more documents] contain discussions about a draft version of the Authority Chart that had not been distributed . . . , and with changes still pending approval . . . .”  “‘A draft is, by definition, a preliminary version of a piece of writing subject to feedback and change.’”  “However, a draft is not ‘inherently deliberative,’ as the USPTO argues.”  “Here, there are discrepancies between the 2016 Authority Chart (the version of the document produced to Plaintiff) and the withheld draft.”  “Redacted discussion is also consistent with Defendant’s representation to Plaintiff that no update to the 2016 Authority Chart had been ‘finalized or distributed for use by USPTO personnel.’”  “Based on the redacted information, it appears the draft was neither widely distributed to USPTO personnel, nor regarded by USPTO personnel as the ‘functionally final’ version of that document.”  “Thus, the draft is covered by the deliberative process privilege and was properly withheld.”  “In camera review of [one more document] confirms, similarly, that most of the withheld information therein is predecisional and deliberative.”  “Like [the first document reviewed], the email discussions between USPTO personnel about the application of existing policy to specific situations posed by specific patent applications are covered by the deliberative process privilege and were properly redacted.”  “However, [two pages] of [this document] contain images of the 2013 Authority Chart, which was previously disclosed to Plaintiff.”  “This information is neither predecisional nor deliberative and was not properly withheld under Exemption Five, and should be produced to Plaintiff.”
   
• Exemption 5, Attorney-Client Privilege:  The court relates that defendant withheld “emails to and from . . . attorneys,” specifically “emails in which [a legal advisor] seeks legal advice on matters from . . . attorneys,” as well as “emails in which . . . attorneys . . . seek information to assist them in processing Plaintiff’s FOIA request, the subject of this litigation.”  The court finds that “[t]hese confidential communications fall squarely within the attorney-client privilege.”