UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA

US INVENTOR, INC.,

Plaintiff,

v. Civil Action No. 21-cv-2893 (TSC) UNITED STATES PATENT AND TRADEMARK OFFICE,

Defendant.

MEMORANDUM OPINION

Plaintiff US Inventor, Inc.—a nonprofit organization that seeks to educate inventors,

lawmakers, agencies, and courts on matters affecting inventors—filed suit against the United

States Patent and Trademark Office, alleging violations of the Freedom of Information Act

(“FOIA”). Having considered the record and the briefing, the court will DENY Plaintiff’s

Motion for Summary Judgment, ECF No. 15, and GRANT Defendant’s Cross Motion for

Summary Judgment, ECF No. 21.

I. BACKGROUND

This case concerns two FOIA requests Plaintiff submitted in April 2021—Requests F-21-

00100 and F-21-00102. Def.’s Statement of Undisputed Material Facts, ECF No. 21-2 ¶¶ 1–6.

The first request addressed inter partes review (“IPR”) proceedings involving tribal sovereign

immunity, id. ¶ 1, and the second addressed IPR proceedings involving state sovereign

immunity, id. ¶ 4. Plaintiff filed suit on November 2, 2021, after more than six months passed

without any document production from Defendant. Compl., ECF No. 1 ¶ 29. It alleges that

Defendant violated FOIA by failing to produce documents within the statutory time limit yet still

Page 1 of 15 retaining the search fees it assessed against Plaintiff. Id. ¶¶ 32–39. “Over the next year and a

half, Defendant made a series of productions, with certain redactions under Exemption 5, based

on the deliberative process privilege, attorney-client privilege, and work-product doctrine, as

well as under Exemption 6.” Def.’s Statement of Undisputed Material Facts ¶ 8; see Vaughn

Index, ECF No. 21-12. The parties then reached an impasse regarding the sufficiency of

Defendant’s production and filed cross motions for summary judgment. See Joint Status Report,

ECF No. 13; Pl.’s Mot. for Summ. J., ECF No. 15; Def.’s Cross Mot. for Summ. J., ECF No. 21.

II. LEGAL STANDARD

Under Federal Rule of Civil Procedure 56(a), courts “shall grant summary judgment if

the movant shows that there is no genuine dispute as to material fact and the movant is entitled to

judgment as a matter of law.” “FOIA cases typically and appropriately are decided on motions

for summary judgment.” Georgacarakos v. FBI,

(D.D.C. 2012)

(quotation omitted). In reviewing a motion for summary judgment in a FOIA case, the court

must view the facts in the light most favorable to the requester. Weisberg v. U.S. Dep’t of Just.,

(D.C. Cir. 1984) (“Weisberg II”). Unlike non–FOIA cases, the defendant,

rather than the plaintiff, bears the initial burden.

(a)(4)(B). Once the defendant

meets that burden, “the plaintiff must come forward with ‘specific facts’ demonstrating that there

is a genuine issue with respect to whether the agency has improperly withheld . . . records.”

Span v. U.S. Dep’t of Just.,

(D.D.C. 2010) (quoting U.S. Dep’t of Just.

v. Tax Analysts,

(1989)).

Page 2 of 15 III. ANALYSIS

A. Reasonably Calculated Search

Plaintiff first contends that Defendant failed to conduct an adequate search for responsive

records. “The fundamental principle animating FOIA is public access to government

documents.” Valencia-Lucena v. U.S. Coast Guard,

(D.C. Cir. 1999) (citation

omitted). “The law in this circuit on agency obligations under FOIA” “embraces” this purpose

even though “the number of requests for information may pose burdens on agencies.”

To

prevail on summary judgment, an agency must show “that it has conducted a search reasonably

calculated to uncover all relevant documents.” Weisberg v. U.S. Dep’t of Just.,

(D.C. Cir. 1983) (“Weisberg I”). To do so, the “agency must show that it made a good

faith effort,” “using methods which can be reasonably expected to produce the information

requested.” Oglesby v. U.S. Dep’t of Army,

(D.C. Cir. 1990) (“Oglesby I”).

This reasonableness standard requires an adequate search, not a perfect one—the agency is not

obliged to “search every record system,”

or “speculate about potential leads,” Kowalczyk v.

Dep’t of Just.,

(D.C. Cir. 1996). Moreover, the plaintiff may not prevail by

showing only that “further documents might conceivably exist.” Weisberg I,

(quoting Perry v. Block,

(D.C. Cir. 1982) (per curiam)); see Iturralde v.

Comptroller of Currency,

(D.C. Cir. 2003) (“[F]ailure of an agency to turn up

one specific document in its search does not alone render a search inadequate.”).

An agency “may rely upon affidavits to show it has conducted a reasonable search, as

long as they are ‘relatively detailed and nonconclusory and submitted in good faith.’”

Weisberg I,

(quoting Goland v. CIA,

(D.C. Cir. 1979)). For

example, the D.C. Circuit in Oglesby v. U.S. Dep’t of Army,

, 1185–86 (D.C. Cir.

1996) (“Oglesby II”), concluded that the FBI’s search for records was adequate despite the Page 3 of 15 plaintiff’s concern that a “section tickler” noted in a document meant that more responsive

records existed. The court pointed out that the agency did not locate any additional documents

and had informed the plaintiff that the “section tickler” reference “did not indicate that any other

responsive documents existed.”

The court refused to “second-guess FBI’s affidavit”

regarding the meaning of this “section tickler” reference.

; accord

(refusing to

second-guess State Department’s affiant regarding how a given repository could be searched).

By contrast, the D.C. Circuit found the affidavit in Oglesby I,

, inadequate

because it merely stated: “Based upon the information contained in Mr. Oglesby’s letter, and

consistent with customary practice and established procedure, a search was initiated of the

Department record system most likely to contain the information which had been requested.”

Among other flaws, that conclusory affidavit did not “identify the terms searched or explain how

the search was conducted.” Id.; accord Steinberg v. U.S. Dep’t of Just.,

, 551–52

(D.C. Cir. 1994) (agency affidavits that do not “describe in any detail what records were

searched, by whom, and through what process” are inadequate at summary judgment).

A court should deny summary judgment “if a review of the record raises substantial

doubt” regarding the reasonableness of the search, “particularly in view of ‘well defined requests

and positive indications of overlooked materials.’” Valencia-Lucena,

(quoting

Founding Church of Scientology v. NSA,

(D.C. Cir. 1979)). Accordingly, in

Valencia-Lucena, the D.C. Circuit concluded that summary judgment for the agency was

inappropriate where the defendant had told the plaintiff that the records requested “may be

located at the federal records center in Georgia,” but then declined to search that office. Id.

at 327. The court held that “[i]t is well-settled that if an agency has reason to know that certain

places may contain responsive documents, it is obligated under FOIA to search” those locations

Page 4 of 15 “barring an undue burden.” Id. This principle, however, requires proof in the record; “mere

speculation that as yet uncovered documents may exist does not undermine the finding that the

agency conducted a reasonable search for them.” Iturralde,

(quoting SafeCard

Servs. v. SEC,

(D.C. Cir. 1991)); accord Steinberg,

(“[M]ere

reference to other files does not establish the existence of documents that are relevant to [the

plaintiff’s] FOIA request.”).

“Once an agency has made a prima facie showing” of an adequate search, “the burden

shifts to the plaintiff to provide countervailing evidence sufficient to raise substantial doubt

concerning the adequacy of the agency’s search.” Rodriguez v. Dep’t of Defense,

(D.D.C. 2017) (quotation omitted). Thus, under this burden-shifting

framework, once the agency shows the search was adequate, the court will grant it summary

judgment unless the plaintiff can provide evidence to the contrary.

Defendant’s declaration demonstrates that it conducted an adequate search as to both of

Plaintiff’s FOIA requests. Regarding Plaintiff’s first request, Defendant circulated it to

Administrative Patent Judge (“APJ”) Scott Moore, who initiated the collection of responsive

records within the Patent Trial and Appeal Board (“PTAB”). Decl. of Kathryn Siehndel, ECF

No. 21-13 ¶¶ 17, 20 (“Siehndel Decl.”). Judge Moore sent the request to almost all the

individuals named in the request along with a Patent Quality Review Assurance Specialist and

additional APJs who were not named in the request but “would likely have been involved in any

policy determinations concerning sovereign immunity.” Id. ¶ 20. The only individual named in

the request who was not initially contacted no longer worked at the PTAB. Id. Defendant’s

declarant, however, later confirmed with that individual that he had no responsive records. Id.

These individuals searched their files by searching for the inter partes review numbers

Page 5 of 15 enumerated in the request and/or using keywords that correlated with the request, depending on

the individual and the type of files. Id. ¶ 21. Of all the records these searches produced,

Defendant determined that only 63 pages were responsive. Id. ¶¶ 21, 24, 26.

The second request proceeded much like the first. Defendant sent it to APJ Moore, id.

¶ 40, who circulated it to the listed APJs who still worked at PTAB, the Patent Quality Review

Assurance Specialist, and two additional APJs likely to have been involved, id. ¶ 44. These

individuals searched their files, and Defendant eventually determined that it had 428 pages of

responsive records. Id. ¶¶ 45, 48.

This declaration suffices to make a prima facie showing of an adequate search. See

Rodriguez,

. Unlike in Ogelsby I,

, the declaration explains

the steps Defendant took to recover responsive records, including specific terms searched by the

identified individuals. E.g., Siehndel Decl. ¶ 21 (individuals searched the terms “sovereign

immunity,” “Mohawk,” or “tribe” along with reviewing their files for the proceedings

enumerated). Moreover, nothing in the declaration indicates that Defendant identified sources of

potentially responsive documents yet failed to search them. See Valencia-Lucena, 180 F.3d

at 326–27.

Plaintiff contends that Defendant failed to conduct an adequate search because it did not

release records related to the dates APJs were assigned to panels for the proceedings. Mem. in

Supp. of Pl.’s Mot. for Summ. J., ECF No. 16 at 15–16 (“Pl.’s Mot.”). Defendant declares that it

did not know that this information was embedded in its case management system until Plaintiff

filed its motion. Siehndel Decl. ¶ 29. 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,

¶ 57: the enumerated APJ was added for a narrow purpose, and therefore was not entered into the

Page 6 of 15 paneling database, id. ¶ 50. 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.

B. Exemption 5

Plaintiff next claims that Defendant incorrectly withheld records under Exemption 5,

which provides agencies need not disclose “inter-agency or intra-agency memorandums or letters

that would not be available by law to a party other than an agency in litigation with the agency.”

(b)(5). This “deliberative process privilege shields documents that debate and

discuss proposed agency decisions before they are finalized.” Campaign Legal Ctr v. U.S. Dep’t

of Just.,

(D.C. Cir. 2022). “Ultimately, the privilege is designed to improve

governmental decisionmaking by encouraging public servants to speak candidly with one

another and to fully flesh out the reasons for and against potential agency actions before they are

taken.”

. To fall under this exemption, “a document must be both predecisional”—

meaning it was “generated before the agency’s final decision”—and “deliberative,” meaning it

“reflects the give-and-take of the consultative process.”

(quotations omitted).

i. Communications between agency officials and panel-member APJs

First, 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. See

. Plaintiff argues, however, that these

records may not be withheld because they reflected improper ex parte communications. Pl.’s

Mot. at 17–21. 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

Page 7 of 15 “is routinely denied.” In re Sealed Case,

(D.C. Cir. 1997) (quotation

omitted). But see Notice of Supplemental Authority: Malone v. U.S. Patent and Trademark

Office, ECF No. 32-1 at 5 (concluding that deciding the “legality and constitutionality of these

communications” is unnecessary to decide whether they were properly withheld under FOIA).

The court disagrees, however, with Plaintiff’s contention that these communications were

improper.

The Administrative Procedure Act (“APA”) provides that an APJ may not “consult a

person or party on a fact in issue, unless on notice and opportunity for all parties to participate.”

(d)(1). In construing this provision, the Supreme Court has explained that an

administrative law judge may not “consult any person or party, including other agency officials,

concerning a fact at issue in the hearing, unless on notice and opportunity for all parties to

participate.” Butz v. Economou,

(1978). The Federal Circuit has also

considered this concept in the due process context, holding that “[t]he introduction of new and

material information by means of ex parte communications to the deciding official undermines

the public employee’s constitutional due process guarantee of notice . . . and the opportunity to

respond.” Stone v. FDIC,

(Fed. Cir. 1999).

This doctrine does not prohibit the communications at issue here. For one thing, the D.C.

Circuit has held that Stone is “confined” to “instances where the decider received ‘new and

material’ information” to consider in its decision, Sw. Airlines Co. v. TSA,

(D.C. Cir. 2009), and Defendant’s declarant stated that the withheld communications involve

“[a]t most” “legal and policy issues across cases”—not “new factual information” about any

“specific” proceeding, Siehndel Decl. ¶ 67. For another, the APA definition of the “persons” an

APJ may not consult “on a fact at issue” categorically excludes agency officials. Section 551

Page 8 of 15 defines “person” to include “an individual, partnership, corporation, association, or public or

private organization other than an agency.”

(2) (emphasis added). The agency

officials here are members of “Agency leadership and/or management,” who speak on behalf of

the agency. Def.’s Mem. of P. & A. in Opp’n to Pl.’s Mot. for Summ J. & in Supp. of Cross

Mot. for Summ. J., ECF No. 21-1 at 12 (“Def.’s Cross Mot.”); accord Siehndel Decl. ¶ 67

(communications involved Defendant’s “officials”). Consequently, another court in this district

has held that communication between a deciding official and an agency official was not improper

because it merely “presented the evidence to which [plaintiff] already had the opportunity to

respond during prior steps of the [administrative] process and offered the agency’s rebuttal to

[plaintiff’s] arguments,” and the communication was not “the type likely to result in undue

pressure upon the deciding official to rule in a particular manner.” Trinka v. McDonough,

No. 21-2904 (RC),

, at *16 (D.D.C. Sept. 21, 2023) (quoting Stone,

). So too here.

Plaintiff also argues that these communications are prohibited by regulation. Pl.’s Mot.

at 20; Pl.’s Reply in Supp. of Mot. for Summ. J. & Resp. to Def.’s Cross Mot. for Summ. J., ECF

No. 26 at 12 (“Pl.’s Reply”). The regulation provides: “Communication regarding a specific

proceeding with a Board member defined in 35 U.S.C. 6(a) is not permitted unless both parties

have an opportunity to be involved in the communication.”

(d). Section 6(a)

defines the “Board” as including the Director, Deputy Director, Commissioner for Patents,

Commissioner for Trademarks, “and the administrative patent judges.” This regulation does not

support Plaintiff’s position because it is best read to prohibit to communications between parties

and Board members; not among Board members. Defendant’s guide for practitioners implies as

much, explaining that this regulation captures “[a]ll substantive communications with the Board

Page 9 of 15 regarding a proceeding,” but does not extend to “[m]inisterial communications with support

staff,” “conference calls or hearings in which opposing counsel declines to participate,” or

“informing the Board in one proceeding of the existence or status of a related Board proceeding.”

Office Patent Trial Practice Guide,

, 48,758 (Aug. 14, 2012). Each scenario

contemplates a party communicating with a Board member—not Board members

communicating with each other. Construing the regulation the way Plaintiff does would render it

absurd by prohibiting, for example, the Director and the Deputy Director—both Board

members—from discussing any ongoing proceeding without involving both of the parties. See,

e.g., Mova Pharm. Corp. v. Shalala,

(D.C. Cir. 1998) (“[S]tatutes are to be

read to avoid absurd results.”).

ii. Communication from counsel and parties to Defendant

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 [email protected] email address. Pl.’s Mot. at 22–24. After Plaintiff filed its motion,

Defendant agreed with Plaintiff’s assessment and released the unredacted versions of those

emails. Siehndel Decl ¶¶ 71–72. “[T]he release of requested documents to a plaintiff renders its

FOIA suit moot ‘with respect to those documents.’” Newport Aeronautical Sales v. Dep’t of Air

Force,

(D.C. Cir. 2012) (citation omitted). Consequently, this claim is moot.

iii. Email subject lines

Third, Plaintiff argues that Defendant improperly withheld email subject lines. See Pl.’s

Mot. at 23–26. According to its declarant, Defendant “unredacted approximately two dozen

subject lines in its revised redactions,” after Plaintiff filed its motion, and the subject lines that

remain redacted “reflect the content of specific deliberations.” Siehndel Decl. ¶ 75.

Page 10 of 15 The “agency’s justification for invoking a FOIA exemption is sufficient if it appears

‘logical’ or ‘plausible.’” Shapiro v. U.S. Dep’t of Just.,

(D.C. Cir. 2018)

(citation omitted). 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. Indeed, other courts in this district have similarly held that the Government complied

with FOIA in withholding email subject lines where disclosure would reveal exempt

information. See, e.g., Pub. Citizen, Inc. v. U.S. Dep’t of Educ.,

(D.D.C.

2019); Khatchadourian v. DIA,

, 110–11 (D.D.C. 2022).

iv. Communication between APJs

Fourth, Plaintiff argues that Defendant improperly withheld an email in which APJ Bisk

forwarded APJ Bonilla an article that was published online. See Pl.’s Reply at 24. 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 APJ Bisk on issues presented” in that proceeding. Vaughn

Index at 18. 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,” Campaign Legal Ctr,

(quotation

omitted).

Plaintiff contends that Defendant “has not met its burden of establishing . . . that the e-

mail contents were pre-decisional (much less deliberative).” Pl.’s Reply at 24. But that

Page 11 of 15 “burden” is not onerous; the agency’s justification must only appear “‘logical’ or ‘plausible.’”

Shapiro,

(citation omitted). Plaintiff fails to explain why Defendant’s

representations that the redacted comments pertained to a pending proceeding and expressed an

APJ’s view on that proceeding were not “logical” or “plausible.”

v. Communications between agency officials and agency attorneys; attorney work product

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. Def.’s Cross Mot. at 18–21. Exemption 5 encompasses both. Nat’l Sec.

Archive v. CIA,

(D.C. Cir. 2014), superseded by statute on other grounds

(b)(5). 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.” Pl.’s Reply at 23 n.12. 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.

B. Internal Credit Forms

Plaintiff also argues that Defendant incorrectly withheld two forms that APJs submitted

to claim production credit for work on cases under Exemption 6, which covers “personnel and

medical files and similar files the disclosure of which would constitute a clearly unwarranted

invasion of personal privacy.”

(b)(6). In 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.”

Page 12 of 15 Vaughn Index at 6, 49. 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. Pl.’s Reply at 26. 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.

D. Segregation of Nonexempt Information

Lastly, Plaintiff contends that Defendant failed to “take reasonable steps necessary to

segregate and release nonexempt information” under FOIA.

(a)(8)(A)(ii)(II).

“Producing segregable information is an essential ingredient for agencies’ FOIA compliance.”

Ctr. for Investigative Reporting v. U.S. Customs & Border Prot.,

, 114

(D.D.C. 2019). “Even if an exemption covers an entire agency record, the agency still must

release any reasonably segregable information within the record that could be disclosed without

causing reasonably foreseeable harm to an interest that the exemption protects.” Leopold v. U.S.

Dep’t of Just.,

(D.C. Cir. 2024).

“Agencies are entitled to a presumption that they complied with the obligation to disclose

reasonably segregable material.” Sussman v. U.S. Marshals Serv.,

(D.C.

Cir. 2007) (citation omitted). To “demonstrate that all reasonably segregable material has been

released, the agency must provide a ‘detailed justification’ for its non-segregability.” Johnson v.

Exec. Off. for U.S. Atty’s,

(D.C. Cir. 2002) (citation omitted). An agency may

satisfy this requirement by describing the documents withheld and why in its Vaughn index and

providing affidavits explaining the process used to determine that no further information could

be released. See

Page 13 of 15 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. See, e.g., Vaughn Index at 13

(providing that the document “is a case from the Federal Circuit,” was withheld “in its entirety

because it elucidates legal arguments of importance to APJ Bisk as she considered and discussed

the legal issue addressed in Document 5 relevant to a then-pending IPR,” and explaining the

“specific harm from releasing the information,” including “chilling future discussions between

APJ’s”). 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.” Siehndel Decl. ¶ 87. “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.”

Plaintiff argues that Defendant’s blocks of full-page redactions and redactions of title

lines, senders, and recipients of emails demonstrate that it has not fully segregated nonexempt

portions of responsive records. Pl.’s Mot. at 27–28. Defendant, however, declared that it

reviewed “each line” and determined that it was withholding the minimum information necessary

to avoid disclosing exempt information. Siehndel Decl ¶ 87. And it makes sense that title lines

along with senders and recipients of emails might confer exempt information in some situations,

see supra at 10–11; the mere fact that they were redacted does not undermine Defendant’s

declaration.

Page 14 of 15 IV. CONCLUSION

For the foregoing reasons, the court will DENY Plaintiff’s Motion for Summary

Judgment, ECF No. 15, and GRANT Defendant’s Cross Motion for Summary Judgment, ECF

No. 21. An Order will accompany this Memorandum Opinion.

Date: September 25, 2024

Tanya S. Chutkan TANYA S. CHUTKAN United States District Judge

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