US Inventor, Inc. v. U.S. Patent & Trademark Off., No. 21-2893, 2024 WL 4286102 (D.D.C. Sept. 25, 2024) (Chutkan, J.)
US Inventor, Inc. v. U.S. Patent & Trademark Off., No. 21-2893, 2024 WL 4286102 (D.D.C. Sept. 25, 2024) (Chutkan, J.)
Re: Requests for records concerning inter partes review (“IPR”) proceedings involving tribal sovereign immunity and state sovereign immunity
Disposition: Denying plaintiff’s motion for summary judgment; granting defendant’s cross-motion for summary judgment
- Litigation Considerations, Evidentiary Showing, Adequacy of Search: The court finds that “Defendant’s declaration demonstrates that it conducted an adequate search as to both of Plaintiff’s FOIA requests.” The court explains that “the declaration explains the steps Defendant took to recover responsive records, including specific terms searched by the identified individuals.” “Moreover, nothing in the declaration indicates that Defendant identified sources of potentially responsive documents yet failed to search them.” “Plaintiff contends that Defendant failed to conduct an adequate search because it did not release records related to the dates [Administrative Patent Judges (“APJ”)] were assigned to panels for the proceedings.” “Defendant declares that it did not know that this information was embedded in its case management system until Plaintiff filed its motion.” “Defendant has since provided Plaintiff with this data for the first request, and ‘explained in detail the reason it doesn’t exist’ for the second request.” “Plaintiff does not contend in its reply that Defendant’s explanation for why that record did not exist was inadequate or unpersuasive.” “Consequently, the court will grant Defendant summary judgment as to the adequacy of its search.”
- Exemption 5, Deliberative Process Privilege, Attorney Work-Product Privilege, Attorney-Client Privilege: The court relates that, “[f]irst, Plaintiff argues that Defendant incorrectly withheld records reflecting discussion between APJs and agency officials regarding the proceedings at issue in its FOIA requests.” “The parties do not dispute that these communications were both generated before the agency’s decision and reflect the consultative process.” “Plaintiff argues, however, that these records may not be withheld because they reflected improper ex parte communications.” “The court agrees with the parties that, ‘where there is reason to believe the documents sought may shed light on government misconduct,’ the deliberative process privilege ‘is routinely denied.’” “The court disagrees, however, with Plaintiff’s contention that these communications were improper.” The court finds that the applicable law and regulations at issue do “not prohibit the communications at issue here.”
“Second, Plaintiff argues that Defendant improperly withheld communications sent from counsel representing patent owners involved in the proceedings as well as Plaintiff’s President to the Trials@USPTO.GOV email address.” “After Plaintiff filed its motion, Defendant agreed with Plaintiff’s assessment and released the unredacted versions of those emails.” “‘[T]he release of requested documents to a plaintiff renders its FOIA suit moot “with respect to those documents.”’”
“Third, Plaintiff argues that Defendant improperly withheld email subject lines.” “Here, it is both logical and plausible that the remaining email subject lines reflect the deliberative process.” “Email senders typically place the topic or bottom-line conclusion of an email in the subject line.” “Consequently, when discussing an ongoing proceeding, the subject line may reveal a participant’s thought process or how they are inclined to rule.”
“Fourth, Plaintiff argues that Defendant improperly withheld an email in which [an APJ] forwarded [another APJ] an article that was published online.” “According to the Vaughn Index, ‘[t]he redacted comments relate the email to issues raised in a pending IPR decision,’ and ‘reflect[ ] the views of [the APJ] on issues presented’ in that proceeding.” “This suffices to establish that the redacted information is protected under the deliberative process privilege because it both clarifies that the comments related to a pending proceeding, and were therefore predecisional, and provides that the comments expressed one APJ telling another APJ their ‘view’ on the ‘issues presented’ in a proceeding before them, making it part of the ‘consultative process’ . . . .”
“Finally, Plaintiff argues that records reflecting communications between agency officials and the agency’s general counsel as well as work product regarding the IPRs were improperly withheld.” “Defendant claims it withheld this information under the attorney-client privilege and work product doctrines.” “Exemption 5 encompasses both.” “Plaintiff represents in its Reply that it ‘does not object’ to the withholding of this information on attorney-client privilege or work product grounds, but maintains that it does object ‘on the basis of the deliberative process exemption.’” “That position makes no sense.” “In conceding that the information was properly withheld under the attorney-client privilege and work product doctrine, Plaintiff has conceded that withholding under Exemption 5 was proper.”
- Exemption 6: The court relates that “Plaintiff also argues that Defendant incorrectly withheld two forms that APJs submitted to claim production credit for work on cases under Exemption 6 . . . .” The court finds that “[i]n its Vaughn Index, Defendant explained that it withheld these forms pursuant to both Exemptions 5 and 6 because they both ‘reflect the pre-decisional meeting notes for a specific IPR’ and constitute an ‘internal personnel matter.’” “In its Reply, Plaintiff conceded that, so long as ‘the APJ was not soliciting advice on the IPR beyond [the] panel,’ it ‘has no objection to’ withholding under Exemption 5.” “Nothing in the Vaughn Index or elsewhere in the record indicates the forms included ‘soliciting advice on the IPR beyond [the] panel.’” “Consequently, the court will accept Plaintiff’s concession that these forms were properly withheld under Exemption 5.”
- Litigation Considerations, Evidentiary Showing, “Reasonably Segregable” Showing: The court relates that “Plaintiff contends that Defendant failed to ‘take reasonable steps necessary to segregate and release nonexempt information’ under FOIA.” The court finds that “Defendant has done so here.” “In its Vaughn index, it enumerated each record that was redacted in whole or in part and explains why it chose to do so.” “Moreover, Defendant’s declaration provides that its ‘FOIA Office reviewed each page and each line of each responsive record to identify reasonably segregable, non-exempt information, and released all such information.’” “‘The material being withheld has been limited to the minimum necessary,’ and ‘is so inextricably intertwined with any disclosable information that it could not be meaningfully segregated for release without destroying the integrity of the document or disclosing the substance of the records.’”