Malone v. U.S. Pat. & Trademark Off., No. 23-1050, 2024 WL 3030650 (E.D. Va. June 17, 2024) (Hilton, J.)

Malone v. U.S. Pat. & Trademark Off., No. 23-1050, 2024 WL 3030650 (E.D. Va. June 17, 2024) (Hilton, J.)

Re:  Request for records concerning paneling procedures for an Inter Partes Review (“IPR”) proceeding that was pending before USPTO’s Patent Trial and Appeal Board (“PTAB”), as well as request for records concerning information about potential conflicts of interest of the Administrative Patent Judges (“APJs”) for different IPR proceeding

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

• Exemption 5, Deliberative Process Privilege:  The court notes that “[a]t the core of the parties’ dispute over certain documents that were withheld or redacted is whether the communications between panel APJs and non-panel USPTO employees fall within the scope of Exemption 5.”  “Plaintiff points to the use of the Circulation Judge Pool, a group of non-management APJs that review and provide suggested edits for some draft decisions by panel APJs, as an illustration of communications that Plaintiff claims fall outside of the scope of Exemption 5.”  “Plaintiff argues that the practice of the panel ALJs consulting other USPTO employees when deciding a case is a practice that violates the Administrative Procedures Act (APA).”  “Plaintiff then argues that, because these communications between the panel APJs and other USPTO employees were made ex parte without giving the parties notice and opportunity to respond, the communications fall outside the scope of Exemption 5.”  The court finds that, “[i]n essence, Plaintiff is attempting to shoehorn an argument that intra-agency communications between panel APJs and other non-panel USPTO employees are unconstitutional and in violation of the APA into a FOIA case.”  “However, Plaintiff provides no legal authority to demonstrate to the Court that it should reach such a broad conclusion on the legality and constitutionality of these communications when addressing such FOIA claims.”  “If one seeks such a holding regarding constitutional and statutory violations with such far-reaching implications as the one Plaintiff seeks here, that issue is best addressed through a case brought by parties that could be injured by those violations, not through FOIA claims.”
  
  “That said, it is still required that the documents withheld and redacted by USPTO under Exemption 5 be predecisional and deliberative.”  “These withheld and redacted documents are about draft PTAB decisions sent between the panel APJs and other non-panel PTAB employees, many of whom are also APJs.”  “There is little doubt that the documents are pre-decisional, as they relate to draft decisions that have not yet been published by the PTAB panel.”  “These draft decisions are also precisely the type of documents that are considered deliberative, as they constitute initial drafts of decisions and feedback from other PTAB employees about the decisions.”  “Such communications reflect the give-and-take of the consultative process that occurs within PTAB, and such communications would reveal the manner in which PTAB evaluates these cases.”  “Accordingly, USPTO has carried its burden of showing that these documents were properly withheld under Exemption 5.”
   
• Attorney Fees, Eligibility:  The court finds that “Plaintiff is not eligible for attorneys’ fees in this case, as he has failed to prove that he has ‘substantially prevailed.’”  The court notes that “[t]he timeline of the productions in this case is relevant to consider when evaluating whether the lawsuit caused USPTO to expedite its productions.”  “Plaintiff puts forward two categories of production that he alleges result in him ‘substantially prevailing’ in this case.”  “First, Plaintiff argues that his lawsuit expedited USPTO’s production of documents.”  “Additionally, Plaintiff claims that USPTO’s promise to complete a substantive portion of its production for the second FOIA request by January 19, 2024 is evidence that their efforts were expedited by this litigation.”  “However, Plaintiff offers little more than a post hoc, ergo propter hoc justification for the June 2023 production, which is exactly the rationale that courts have routinely rejected as failing to provide a sufficient causal link between the litigation and production.”  “Furthermore, the fact that USPTO completed its search for documents responsive to the first FOIA request in April 2023, before the litigation began, supports a conclusion that the litigation had no impact on the timing of the production.”  “Similarly, Plaintiff’s claim that USPTO’s production responsive to the second FOIA request was expedited as a result of the litigation fails from lack of evidence.”  “While Defendant did agree, as part of the litigation, to complete its production by January 19, 2024, there is no evidence before this Court that USPTO would not have completed its production by that date anyway, especially when considering it had made prior interim productions.”  “Without more, Plaintiff fails to meet his burden of proving that the litigation expedited Defendant’s productions.”
  
  “Second, Plaintiff argues that the late production made in February 2024 is evidence that he substantially prevailed in this litigation.”  “Since this production was made two days before the deadline for USPTO to file its motion for summary judgment and Vaughn index, Plaintiff contends that this voluntary change was clearly made as a result of this litigation.”  “The timing of the February 2024 production is such that the Court can reasonably draw a causative connection between this litigation and the release of those documents.”  “However, that is not the end of the analysis, as the production must be viewed in the context of the totality of the case.”  “Importantly, as Defendant notes, this production involved only fourteen pages that were previously redacted or withheld.”  “The size of this production was minor compared to the 1,505 pages produced to Plaintiff across both of his FOIA requests.”  “Moreover, these pages appear to be relatively insignificant when viewing the case in its totality.”  The court finds that “[the pages provided] seem to contain information about the administrative process of informing the public and the parties of a change that had already taken place.”  “They do not appear to relate to the internal processes involved in the replacement of the APJ on the panel.”  “The descriptions of the other pages produced give the impression that they only contain information about ministerial functions of PTAB, such as logistics, rather than the substantive information Plaintiff seeks.”  “As such, Plaintiff fails to prove that this production was anything more than minimally significant.”