UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA

US INVENTOR, INC.,

Plaintiff,

v. Civil Action No. 21-cv-2894 (TSC) UNITED STATES PATENT AND TRADEMARK OFFICE,

Defendant.

MEMORANDUM OPINION

Plaintiff U.S. Inventor, Inc. sued the United States Patent and Trademark Office (“PTO”)

under the Freedom of Information Act (“FOIA”), for failure to produce documents responsive to

its FOIA request. The parties cross moved for summary judgment on whether Defendant

conducted searches reasonably expected to uncover all relevant documents. In its cross motion,

Defendant provided a detailed, 15-page declaration, explaining the individuals and offices it

consulted in response to Plaintiff’s FOIA request, the searches it undertook, and why, and what

documents those searches turned up. That declaration is sufficient to show that Defendant

conducted reasonable searches, and when the burden shifts, Plaintiff fails to create substantial

concern to the contrary.

Thus, having considered the record and the parties’ briefing, the court will DENY

Plaintiff’s motion for summary judgment and GRANT Defendant’s cross motion.

I. BACKGROUND

On August 4, 2021, Plaintiff filed a FOIA request with Defendant, seeking records

regarding the PTO Director’s delegations of authority to its Commissioner, Andrew Hirshfeld,

Page 1 of 14 and to various Administrative Patent Judges (“APJs”). Def.’s Statement of Undisputed Material

Facts, ECF No. 19-9 ¶¶ 1–5 (“Statement of Facts”). 1 Plaintiff sought materials delegating

authority to Hirshfeld (Request 1); notifying the Comptroller General of the Director vacancy

(Request 2); delegating authority to the APJs to institute proceedings (Request 3); and delegating

authority to the APJs to adjudicate proceedings on the merits (Request 4). Id. ¶¶ 2–5.

Defendant acknowledged receipt of the request on August 5, 2021, when it stated that it

expected to send its response to this request no later than September 1, 2021. Id. ¶ 7. Defendant

did not send Plaintiff a response, however, until September 22, 2021, when it claimed that its

“twenty-day statutory response period for the Agency’s initial determination is September 22,

2021,” and “extended” that period by “ten additional working days to October 6, 2021.” Id. ¶ 9.

The following day Plaintiff responded, notifying Defendant of a discrepancy regarding the

calculation of business days in its letter. Id. ¶ 10. Defendant acknowledged the error,

apologized, and indicated it would release responsive records as quickly as possible. Id. ¶ 11.

Plaintiff received no response, and filed this action on November 2, 2021, seeking a

declaration that Defendant violated FOIA, and an injunction requiring Defendant to immediately

process and disclose the requested records. Compl., ECF No. 1 ¶ 23. Plaintiff claims Defendant

violated FOIA by failing to comply with the time limits in

(a)(6)(A)(i) for making

an initial determination or producing responsive documents.

¶¶ 21–22.

On November 19, 2021, Defendant produced 42 pages of records responsive to Requests

1, 3, and 4, noting there were no responsive documents to Request 2. Statement of Facts ¶¶ 13–

14. Two pages of records responsive to Request 2 were produced in August 2022.

.

1 Plaintiff responded to Defendant’s statement of facts, agreeing with some and disagreeing with others. See Pl.’s Resp. to Def.’s Statement of Undisputed Facts, ECF No. 22-1. The court relies only on facts upon which Plaintiff and Defendant agree.

Page 2 of 14 Following an impasse between the parties regarding whether Defendant had produced all

responsive records, both sides moved for summary judgment.

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)

(citation 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)).

III. ANALYSIS

A. Reasonably calculated searches under FOIA

“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 may pose burdens on agencies.”

(citations omitted). 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. Page 3 of 14 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 the 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.

U.S. 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))

(formatting modified). 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 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).

Page 4 of 14 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

“barring an undue burden.” Id. (citations omitted). 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.”).

Page 5 of 14 “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). 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. See

As explained below, Defendant’s declaration demonstrates that its search in response to

Plaintiff’s FOIA request was reasonable. Plaintiff has not raised substantial doubt regarding the

adequacy of the search, and therefore summary judgment in favor of Defendant is warranted.

B. Request 1

In Request 1, Plaintiff sought “all communications, documents, orders, or letters

delegating to Mr. Andrew Hirshfeld the performance of the functions of the duties of the

Director effective after January 20, 2021, including the identification of the PTO officer who

made the delegation, and any documents evidencing [his] acceptance of that delegated

authority.” Statement of Facts ¶ 2. In response to this request, Defendant released two

documents: Agency Organization Order 45-1, and former Director Iancu’s succession

memorandum. Decl. of Kathryn Siehndel, ECF No. 19-8 ¶¶ 21–22 (“Decl.”).

In its search, Defendant enlisted the assistance of the Correspondence Specialist for the

Office of the Under Secretary (“OUS”) who “searched the document management database in

OUS called ‘IQ,’ which is used to manage official correspondence, memoranda, reports, and

supplemental information.” Id. ¶ 19. Defendant’s declaration explained that, “[i]f OUS had any

official delegation or acceptance of delegation of Mr. Hirshfeld’s role as Director, it would have

been contained in the IQ,” but OUS found no responsive records. Id. Defendant also sent a

Page 6 of 14 search request to the Senior Counsel for Legislative and Regulatory Affairs in the Office of

General Counsel, who confirmed that the delegation to Hirshfeld was set forth in Agency

Organization Order 45-1 and that former Director Iancu had prepared a memorandum prior to his

departure setting forth a succession plan, which identified Hirshfeld to serve as Director. Id.

¶ 21. Both documents were provided to Defendant and then released to Plaintiff. Id. ¶¶ 21–22.

This detailed declaration shows that Defendant “made a good faith effort” to uncover all

relevant documents and used methods it “reasonably expected to produce the information

requested.” Oglesby I,

; see Weisberg I,

. The declaration

explained in detail who conducted the searches, why those parties were enlisted to search, and

what kinds of records were stored and searched by those parties. See Steinberg, 23 F.3d at 551–

52. It also explained why the agency was unable to find some of the requested records:

Defendant “had no specified records evidencing Mr. Hirshfeld’s acceptance of the delegated

authority to perform the duties and functions of the Director of the USPTO, because he did not

sign any such documents.” Decl. ¶ 22. Finally, Defendant averred that “using key word

searches,” such as “delegation and/or acceptance,” “was not the path to finding useful records for

Plaintiff,” as such a search would not have even resulted in finding the two responsive records.

Id. ¶ 26.

Accordingly, the burden shifts to Plaintiff to raise substantial doubt concerning the

adequacy of Defendant’s search. Plaintiff claims that Defendant’s search was inadequate

because it released no records “evidencing Mr. Hirshfeld’s acceptance of [the] delegated

authority” and did not ask Hirshfeld if he had any such records. Mem. in Supp. of Mot. for

Summ. J., ECF No. 13-1 at 8–9 (“Motion”); Pl.’s Combined Reply in Supp. of Mot. for Summ.

J. and Opp’n to Def.’s Cross Mot. for Summ. J., ECF No. 22 at 8–10 (“Pl.’s Reply”). But the

Page 7 of 14 declaration indicates that Defendant did, in fact, ask Hirshfeld “whether any records of a written

delegation or acceptance existed,” and he “confirmed that the answer was no.” Decl. ¶ 23.

Plaintiff also claims that “[i]t is inconceivable that [Defendant] has no records of Commissioner

Hirshfeld’s acceptance of those functions and duties.” Motion at 9. But Plaintiff’s “mere

speculation” that such “documents may exist does not undermine a finding that the agency

conducted a reasonable search for them.” Iturralde,

(quoting SafeCard Servs.,

).

Plaintiff also claims Defendant left “the Court in the dark as to the actual extent of the

search,” leaving open the possibility that Defendant “searched the proverbial backyard

swimming pool.” Pl.’s Reply at 9–11. But, to the extent Defendant intends this as a serious

argument, this amounts to “mere speculation” and leaves the court “in the dark” regarding what

additional details Plaintiff believes were required in the declaration. See Iturralde,

(quoting SafeCard Servs.,

).

In sum, the record indicates that Defendant’s search in response to Request 1 was

reasonably calculated to uncover all relevant documents.

C. Request 2

In Request 2, Plaintiff sought “notifications that the PTO provided under

(a)(1) to the Comptroller General of the United States and to each House of Congress of

the vacancy that occurred in January 2021, in the office(s) whose functions and duties were

delegated to” Hirshfeld. Statement of Facts ¶ 3. Defendant initially produced no records in

response to this request, Decl. ¶ 20, but eventually obtained two pages of records from a parent

agency and released them to Plaintiff,

.

Page 8 of 14 In its search, Defendant had the Office of Governmental Affairs look for responsive

records, which would maintain “[a]ny reporting to the Comptroller General or other branch of

Congress,” but it found no responsive records.

. Moreover, Defendant learned that it

“did not file vacancy reports with either the Comptroller General or Congress” under the Federal

Vacancies Reform Act, which it confirmed with individuals who “would have been involved in

any such filing.”

. Nevertheless, after learning that the Department of Commerce had

reported Defendant’s Director vacancy, Defendant obtained a copy of the transmittal email and

submission and released them to Plaintiff.

. That disclosure went above and beyond

Defendant’s obligations under FOIA, since agencies “need not produce records maintained by

another federal government agency.” Callaway v. U.S. Dep’t of Treasury,

(D.D.C. 2012). And, again, Defendant explained that key word searches would not have

been helpful in the search. Decl. ¶ 26.

Plaintiff contends Defendant’s search in response to Request 2 was unreasonable because

its late production of the Department of Commerce documents show that Defendant did not take

its request seriously and failed to conduct “anything beyond a perfunctory search.” Motion at 9–

10; accord Pl.’s Reply at 11. Defendant’s declaration squarely rebuts that assertion by

explaining the various inquiries it made, both to verify that it did not file anything related to the

Director vacancy and to seek out any reporting to the Comptroller General or Congress. Decl.

¶¶ 20, 24–26. Indeed, Defendant went beyond FOIA’s search requirements by finding and

producing the Department of Commerce documents. Callaway,

(Agencies “need not produce records maintained by another federal government agency or obtain

records from any other sources.”).

Page 9 of 14 Plaintiff also argues that Defendant’s search was inadequate because it did not explain

how it decided which subject matter experts were relevant to Plaintiff’s request and consulting

subject matter experts “is not a search of communications on a specific issue to specific

recipients.” Pl.’s Reply at 12. Defendant explained that it had the Office of Governmental

Affairs search for records, because that office would have been responsible for any reporting to

the Comptroller General or other branch of Congress, Decl. ¶ 20, and that it asked the individuals

who “would have been involved in” any filing under the Federal Vacancies Reform Act to verify

whether such documents existed, id. ¶ 24. Thus, Defendant first had the relevant office search

for the records Plaintiff requested, and then, when that search did not turn up responsive records,

verified with individual experts to ensure it had not missed the records. To be sure, Defendant’s

declaration does not explain how the declarant knew that the individual would have been

involved in any such filing, but Plaintiff has given the court no reason to second guess the

declarant. Moreover, the fact that Defendant’s parent agency, the Department of Commerce, did

report the vacancy further supports Defendant’s conclusion that it did not do so itself. Plaintiff

therefore fails to raise substantial doubt concerning the adequacy of Defendant’s search in

response to Request 2.

D. Requests 3 and 4

In Request 3, Plaintiff sought “all communications, documents, orders, or letters

delegating to the [APJs] the Director’s authority under

, 324 to institute the

respective trial proceedings identified . . . and any documents evidencing [their] acceptance of

that delegated authority,” including, but not limited to, “records of delegation and sub-delegation

of other persons in the chain of delegation from the Director to the APJs, including any

documents evidencing each of these persons’ acceptances of such delegated authority.”

Page 10 of 14 Statement of Facts ¶ 4. Relatedly, in Request 4, Plaintiff sought “all communications,

documents, orders, or letters designating under 35 U.S.C. [§] 6(c) the [APJs] to perform the duty

of adjudication on the merits in the respective proceedings identified . . . and any documents

evidencing each of these APJ’s acceptance of that duty,” including, but not limited to, “records

of delegation and sub-delegation of other persons in the chain of designation to the APJs,

including any documents evidencing each of these persons’ acceptances of such delegated

authority.” Id. ¶ 5. Defendant released two Standard Operating Procedure documents and

referred Plaintiff to a public regulation authorizing the Patent Trial and Appeal Board (“PTAB”)

to institute trials on behalf of the Director. Decl. ¶¶ 32–33.

In its search, Defendant’s FOIA coordinator and the APJ assigned to the search shared

the requests with the Chief Judge, Deputy Chief Judge, and Vice Chief Judge of the Patent

Board, who consulted the Executive Team. Id. ¶ 29. Collectively, the PTAB concluded they did

not have any directly responsive records because that authority is delegated through regulation

and policy, not on a case-by-case basis. Id. ¶ 30. Accordingly, the PTAB collected copies of the

regulatory and policy documents outlining the delegations of authority to APJs, but Defendant

determined most of these documents were not appropriate for release in response to a FOIA

request because they are publicly available on Defendant’s website and were not directly

responsive to Plaintiff’s request. Id. ¶¶ 30–31. Defendant did, however, release the two most

recent versions of the PTAB Standard Operating Procedure 1 “Assignment of Judges to Panels”

to Plaintiff, which contained an overview of the delegation of the Director’s authority to the

Chief Judge, and the Chief Judge’s ability to further delegate that authority. Id. ¶ 32.

Consulting PTAB leadership—the Chief Judge, Deputy Chief Judge, Vice Chief Judge,

and Executive Team—was reasonable. As Defendant explained, any request for a designation of

Page 11 of 14 authority to an APJ would have come from somewhere in the leadership chain, and any

acceptance of such designation would have gone back to leadership. Id. ¶ 34. By confirming

with leadership that authority was delegated only on an aggregate basis and not on an individual

basis, and releasing the documents outlining that delegation process, Defendant “made a good

faith effort” and used methods it “reasonably expected to produce the information requested.”

Oglesby I,

.

Plaintiff fails to raise substantial doubt concerning the adequacy of Defendant’s search.

First, it contends that there “must be written records of such delegation of authority to each APJ

to adjudicate each of these cases.” Motion at 10. To support its assertion, Plaintiff provides

examples of types of documents that it believes exist, such as “an appointment letter or other

document specifying the duties and authority to be assumed by the APJ,” “written panel

designation to each specific case,” and the APJ’s “acknowledgement” “that they will serve on

the specific panel,” along with examples of possible searches Defendant should have done.

at

11–12. But, again, “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.,

). And “mere speculation” is all Plaintiff

has. For instance, a written panel designation to a specific case is not necessarily a delegation of

authority. An administrative office could assign APJs to panels, just as a Clerk of Court’s office

assigns cases to Article III judges. See Def.’s Combined Mem. in Opp’n to Pl.’s Mot. for Summ.

J. & Cross-Mot. for Summ. J., ECF No. 19 at 18–19 (“[T]he Board communicates its panel

assignments electronically via a docketing system.”). But judicial power is not delegated to

Article III judges through individual case assignments from the Clerk of Court. Plaintiff does

not give any reason to assume that APJs receive their authority from panel assignments.

Page 12 of 14 Second, Plaintiff insists that the Standard Operating Procedures Defendant produced

were not responsive because they did not enumerate specific APJs. Pl.’s Reply at 13. Defendant

explained that it did “not have specific written designations of authority to institute or adjudicate

individual [trials], and accordingly, no acceptance of such designations.” Decl. ¶ 31. It did,

however, have the Standard Operating Procedures documents, which contained “an overview of

the delegation of the Director’s authority to the Chief Judge, and the Chief Judge’s ability to

further delegate that authority.” Id. ¶ 32. Plaintiff faults Defendant simply because the

documents it sought did not exist. That, however, does not render Defendant’s search

unreasonable.

Third, Plaintiff argues that Defendant’s search was unreasonable because Defendant did

not search the records of the APJs enumerated in Plaintiff’s FOIA request. Pl.’s Reply at 15–16.

Defendant, however, avers that it did not send its search request to each of the APJs listed in

Plaintiff’s request “because that effort would not have resulted in the production of responsive

records.” Decl. ¶ 34. According to Defendant, any records regarding the designation of

authority to the APJs would have come from somewhere in the PTAB leadership chain, which

Defendant consulted, and any records regarding APJ’s acceptances of authority would have then

been received by leadership. Id. Plaintiff gives no reason why this might not be the case.

Instead, Plaintiff invites the court to “micro manage the executive branch” by second guessing

the agency’s “administrative judgment and expertise.” Johnson v. Exec. Off. for U.S. Atty’s,

(D.C. Cir. 2002). The court declines the invitation.

Finally, Defendant contends that Defendant improperly “narrowly interpreted” these

requests, Pl.’s Reply at 12, by reading Plaintiff’s request “as looking for formal statements

granting or delegating authority to individual judges to institute and adjudicate cases, and the

Page 13 of 14 subsequent acceptance of such authority by those judges,” Decl. ¶ 29. But even a “narrow”

interpretation of FOIA request is permissible “as long as the narrowed scope is a reasonable

interpretation of what the request seeks.” Wilson v. U.S. Dep’t of Transp.,

(D.D.C. 2010). And Plaintiff does not explain why interpreting “all communications,

documents, orders, or letters” to mean “formal statements” is so unreasonable. Consequently,

Plaintiff fails to meet its burden to create substantial concern regarding the adequacy of

Defendant’s search.

IV. CONCLUSION

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

Judgment, ECF No. 13, and GRANT Defendant’s Cross Motion for Summary Judgment, ECF

No. 19. Two separate Orders will accompany this Memorandum Opinion.

Date: February 16, 2024

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

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