Smartflash, LLC v. U.S. Pat. & Trademark Off., No. 23-3237, 2024 WL 4836402 (D.D.C. Nov. 20, 2024) (Howell, J.)
Smartflash, LLC v. U.S. Pat. & Trademark Off., No. 23-3237, 2024 WL 4836402 (D.D.C. Nov. 20, 2024) (Howell, J.)
Re: Request for earlier FOIA request filed by plaintiff’s lawyer
Disposition: Granting defendant’s motion for summary judgment; denying plaintiff’s cross-motion for summary judgment
- Exemption 5, Deliberative Process Privilege & Foreseeable Harm and Other Considerations; Waiver & Discretionary Disclosure, Waiver: The court holds that “[the United States Patent and Trademark Office’s (“USPTO”)] Vaughn index and declarations amply demonstrate that the redacted portions at issue of six emails contained in the 16 pages produced in response to request -81 are predecisional and deliberative and that disclosure would foreseeably cause harm.” “They were properly withheld under the deliberative process privilege, and since that privilege has not been waived, summary judgment for USPTO is warranted.”
First, the court relates that “the disputed redactions here are in communications by subordinate employees at the agency discussing how to interpret and respond to a prior FOIA request . . . and its appeal.” The court finds that “[t]hese documents and associated redactions are predecisional because all of the emails predate the decisions they discuss, namely, either the initial agency response to [that] request . . . , or the decision on appeal . . . .” “Moreover, these redactions are deliberative because they contain exchanges among non-decisionmakers about their preliminary impressions, analysis, questions, and recommendations.”
“[Plaintiff] contends that one of the responsive documents (a spreadsheet) discussed in some of the emails had previously been disclosed in response to a different FOIA request, so a decision had already been made and discussions about that document could not be part of the ‘give-and-take.’” “To the contrary, no decision had yet been made with respect to using the spreadsheet to respond to this request . . . , so any discussions about that spreadsheet or other responsive documents remain a part of the deliberative process.” Additionally, “[plaintiff] tries to differentiate between ‘general questions,’ which it contends are not covered by the privilege, and recommendations, proposals, and suggestions, which are.” “Questions posed in order to determine how to process the FOIA request embed subjective views, ‘help the agency formulate its position,’ . . . and ‘reflect[ ] the give-and-take of the consultative process[]’ . . . .” “Like recommendations and proposals, they fall within the deliberative process privilege.”
Regarding foreseeable harm, the court finds that “USPTO’s Vaughn index and declarations contain strong justifications for the harm that would be caused by disclosure of the redacted material in each document here.” “Despite [plaintiff’s] contentions that the Vaughn index’s explanations are perfunctory and generic, . . . USPTO has specifically and thoroughly explained the harm that would result from disclosure, including the ‘chilling effect’ that ‘would seriously diminish USPTO’s ability to efficiently respond to FOIA requests[]’ . . . .” “‘The FOIA Office and business units must be able to discuss how to respond to FOIA requests without fearing that these sensitive internal communications will be released publicly.’” “The relatively small FOIA Office is able swiftly to move through requests only because of the free flow of ‘impressions, opinions, and recommendations.’” “‘Expressions of candid recommendations [also] helps to ensure that [USPTO’s] disclosure determinations are correct and legally defensible, which provides a great benefit to the public.’” “These explanations make the requisite ‘link between the specified harm’ – i.e., the negative effect on FOIA requests and FOIA appeals – and ‘the specific information’ withheld – i.e., initial impressions of and back-and-forth discussions about FOIA requests.”
“[Plaintiff’s] final argument challenging the withholdings is that USPTO waived the deliberative process privilege in two ways: (1) by adopting the withheld communications ‘formally or informally, as the agency position on an issue’ or by using these withheld communications ‘in its dealings with the public[]’ . . . and (2) by making ‘testimonial use’ of the redacted emails in the adversarial setting of the prior litigation between [plaintiff] and USPTO about the response to [the request at issue]’ . . . .” “[Plaintiff’s] first argument invokes two related forms of waiver: waiver based on adoption and waiver based on public disclosure.” “Yet, [plaintiff] provides no evidence whatsoever that the decisionmaking FOIA Officer expressly adopted any of the emails or communications into the final decision.” “[Plaintiff] has not indicated, nor tried to argue, that the specific redacted portions of the emails have been previously publicly released in full detail.” “At most, [plaintiff] argues that USPTO’s declaration in the prior litigation . . . referred to the general contours of the information redacted from the emails, such as the FOIA Coordinator asking his colleagues to conduct searches, . . . but this falls short of pointing to where USPTO revealed exactly what the FOIA Coordinator said, or the content of the deliberations themselves.” “[Plaintiff’s] second argument that USPTO has waived the privilege based on testimonial use likewise fails.” “[Plaintiff] cannot point to any testimonial use of the redacted portions of the emails in this case whatsoever.” “[Plaintiff] instead argues that USPTO previously made ‘testimonial use’ of the redacted contents of the emails because the agency’s declarant in [the prior litigation] ‘testif[ied] as to who searched, where they searched, what was and was not found,’ etc. . . . to justify the sufficiency of the search in response to [the request at issue], which was at issue in that litigation.” “The declarant in [the prior litigation] merely spoke generally about the searches undertaken, noting the dates, people involved, and requests made.” “The declarant never, however, cited or quoted any of the emails – let alone the redacted portions.” “Nor does the declarant indicate that she is even referencing the emails; her statements could be derived from knowledge wholly apart from the emails.” “Such general references fall far short of the kind of ‘testimonial use’ contemplated . . . .” “Importantly, as USPTO argues, . . . if such general explanations of the agency’s search process could waive the deliberative process privilege over the emails effectuating that process, an agency would be unable to submit a nonconclusory declaration describing its search process while maintaining privilege over its internal communications about responding to a FOIA request.” “[Plaintiff] cites no authority holding that the deliberative process privilege in a meta-FOIA case may be eviscerated in such a way.”
- Litigation Considerations, Evidentiary Showing, “Reasonably Segregable” Showing: The court finds that, “[h]ere, 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.’” “This line-by-line approach is apparent from emails where only portions of lines are redacted.” “USPTO also ‘determined that the only information that has been withheld could not be further segregated without disclosing information that warrants protection under the law . . . and would result in reasonably foreseeable harm to the interests protected by this Exemption if released.’”