United States District Court, District of Columbia
R. DANNY HUNTINGTON, Plaintiff,
U.S. DEPARTMENT OF COMMERCE, Defendant.
E. BOASBERG United States District Judge
R. Danny Huntington, an intellectual-property attorney, wants
to know more about a recently scrapped confidential program
of the U.S. Patent and Trademark Office (USPTO) to flag
certain patent applications as involving particularly
sensitive subject matter. He believes that applications
pulled into the secret program's ambit were kept pending
far longer than those permitted to proceed normally.
See ECF No. 11-2 (Declaration of R. Danny
Huntington), ¶ 17. In pursuit of his suspicions,
Huntington submitted several Freedom of Information Act
requests to the USPTO, a component of Defendant U.S.
Department of Commerce. After the USPTO searched for
responsive records, produced some, and withheld others,
Plaintiff administratively appealed and eventually filed suit
here. Both sides now move for summary judgment. The Court
concludes that an issue of material fact exists as to whether
Defendant conducted adequate searches, but it finds that the
USPTO did appropriately withhold responsive documents under
FOIA Exemption 5. The Court will, therefore, largely deny
each party's Motion.
typical process, a patent application submitted to the USPTO
is assigned to a patent examiner in one of nine Technology
Centers, each of which deals with a particular area of
technology. See ECF No. 14-4 (Declaration of John
Ricou Heaton), ¶ 19. The patent examiner assesses the
application and reviews it for compliance with legal
requirements. Id. If they are met, the USPTO will
grant the patent by issuing a Notice of Allowance.
Id., ¶¶ 19-20.
1994, the Office introduced a new program called the
Sensitive Application Warning System (SAWS), which
“allow[ed] patent examiners to alert leadership when a
patent might issue on a sensitive matter.”
Id., ¶ 21. The SAWS program “was
integrated” into the regular patent-application review
process: upon receiving an application for review, a patent
examiner considered whether it should be included in the
program based on “subject matter criteria” that
varied by Technology Center. Id. Such criteria
included, for example, whether the application “would
potentially generate unwanted media coverage”; had
“pioneering scope”; was “[s]illy or
extremely basic”; posed a danger to individuals, the
environment, or national security; “appear[ed] to
violate the laws of chemistry or physics”; involved
“[c]ontroversial, [i]llegal, objectionable, or
derogatory subject matter”; or specifically invoked
race. See ECF No. 11-4, Exh. 2-3 at B-89.
in the SAWS program did not itself determine whether a patent
application would ultimately be granted or denied.
See ECF No. 18 (Supplemental Declaration of John
Ricou Heaton), ¶ 9. It could, however, trigger “an
internal quality assurance check, ” which would be
conducted using “the same substantive standards of
patentability as all other applications.” Heaton Decl.,
¶ 22. If an application referred to the SAWS program was
ultimately granted by a patent examiner, before a Notice of
Allowance would be mailed to the applicant, the USPTO would
prepare a SAWS report that described the invention and
explained why the application was considered sensitive.
Id. The report would be forwarded to a Technology
Center Director, who would decide whether the Commissioner
for Patents Office should be notified. Id.,
¶¶ 19, 22. That an application had been flagged for
SAWS review was never disclosed to the applicant or the
public, as the agency believed that doing so risked coloring
the public's view of the application and giving rise to
“unjustified inferences as to the issued patent's
strength and weakness.” Id., ¶ 22
USPTO retired the SAWS program in March 2015. Id.
Approximately 0.04% of the total number of patent
applications filed were referred to the SAWS program during
its operation. Id., ¶ 21.
the first half of 2015, Huntington submitted several FOIA
requests to the USPTO seeking records related to the SAWS
program. He submitted the first such request - assigned
Request No. F-15-00107 and referred to by the parties as R1 -
in February 2015. See ECF No. 11-4, Exh. 2-1. That
request sought: (1) the biannual SAWS update, including
documents relating to any SAWS procedures and statutory bases
for the program; (2) documents “directing, instructing,
or specifying the action(s) to be taken upon receiving a
notification that ‘an allowance of a SAWS application
is mistakenly mailed prior to the SAWS report'”;
(3) information pertaining to complete SAWS reports; and (4)
information pertaining to forwarded, non-forwarded, and
removed SAWS reports. Id. In response, the USPTO
released to Plaintiff 118 pages of responsive documents, some
portions of which were redacted pursuant to Exemption 5.
Id., Exh. 2-2 at ¶ 002. Huntington then filed
an administrative appeal, which the USPTO denied.
Id., Exhs. 2-3, 2-4.
April 2015, Huntington submitted three additional FOIA
requests. See ECF No. 11-5, Exhs. 3-1, 3-2, 3-3. The
USPTO consolidated them into one request, assigned Request
No. F-15-00190. See Heaton Decl., ¶ 9-10. The
first portion (R3) sought certain information on patent
applications designated, flagged, or grouped under the SAWS
program, including their filing dates. See ECF No.
11-5, Exh. 3-1. (The identifier R2 never appears in the
record.) The second portion (R4) sought “manuals,
instructions, training material, screen-shots, or
records” relating to “the ‘flagging'
and ‘unflagging' of SAWS Applications” and
“the exportation of data or generation of reports
pertaining to SAWS Applications”; “records,
reports, or emails providing summary reports . . . on SAWS
applications by Technology Centers”; and, separated by
Technology Center, information on SAWS applications for
applicants claiming micro-entity, small-entity, and
large-entity status. Id., Exh. 3-2. Finally, the
third portion (R5) sought “all communication records
concerning Kimberly Jordan becoming the Board [of Patent
Appeals'] SAWS Point of Contact”; “all
communications, letters, memoranda, or emails concerning the
SAWS program sent to the Board's personnel including to
Administrative Patent Judges . . . since 1994 which contain
any alerts to the SAWS program or explanations or
instructions for how APJs should use or consider SAWS flag
information or the SAWS memoranda”; and “all
post-decisional communications, letters, memoranda, or emails
concerning the retirement of the SAWS program or instructions
. . . of tasks and procedures for terminating or winding down
the SAWS program.” Id., Exh. 3-3.
receiving Request No. F-15-00190, the USPTO informed
Huntington that the processing fees would be approximately
$5, 307.55. Id., Exh. 3-4 at 1. Plaintiff pledged to
pay $250 to cover the cost of R3 and asked for a breakdown of
the fees for R4 and R5. Id., Exh. 3-6. In July 2015,
the USPTO issued a final response letter to Huntington for
R3, explaining that it had located responsive records but was
withholding them in full pursuant to Exemption 5.
Id., Exh. 3-8. Plaintiff filed an administrative
appeal, which was denied. Id., Exhs. 3-9, 3-10. He
then sent another letter to the USPTO's FOIA Office,
explaining that he remained interested in his R4 and R5
requests. Id., Exh. 3-11. The USPTO subsequently
designated those requests No. F-16-00037. See ECF
No. 1 (Complaint), ¶ 32.
several months of back-and-forth correspondence between the
parties, Plaintiff filed the present action in December 2015,
alleging Defendant had failed both to conduct an adequate
search and to produce responsive records. See
Complaint, ¶¶ 34-43. The USPTO then undertook
“a more thorough subsequent search, ” Heaton
Decl., ¶ 23, and, via six different response letters,
released 4, 114 pages and five spreadsheets of material, of
which one document was redacted in full and 132 pages of 59
documents were redacted in part pursuant to Exemptions 3, 5,
and 6. Id., ¶¶ 44-50.
that Defendant's search remains inadequate and that
certain records were still improperly withheld, Huntington
moved for summary judgment. See ECF No. 11 (Pl.
Mot.). Defendant, conversely, believes it has satisfied its
FOIA obligations and thus cross-moved for summary judgment.
See ECF No. 14 (Def. Mot.). Those Motions are now
judgment may be granted if “the movant shows that there
is no genuine dispute as to any material fact and the movant
is entitled to judgment as a matter of law.”
Fed.R.Civ.P. 56(a). A fact is “material” if it is
capable of affecting the substantive outcome of the
litigation. See Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 248 (1986). A dispute is “genuine” if
the evidence is such that a reasonable jury could return a
verdict for the nonmoving party. See Scott v.
Harris, 550 U.S. 372, 380 (2007); Liberty
Lobby, 477 U.S. at 248. “A party asserting that a
fact cannot be or is genuinely disputed must support the
assertion” by “citing to particular parts of
materials in the record” or “showing that the
materials cited do not establish the absence or presence of a
genuine dispute, or that an adverse party cannot produce
admissible evidence to support the fact.” Fed.R.Civ.P.
56(c)(1). The moving party bears the burden of demonstrating
the absence of a genuine issue of material fact. See
Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). In
the event of conflicting evidence on a material issue, the
Court is to construe the conflicting evidence in the light
most favorable to the non-moving party. See Sample v.
Bureau of Prisons, 466 F.3d 1086, 1087 (D.C. Cir. 2006).
cases typically and appropriately are decided on motions for
summary judgment. See Brayton v. Office of U.S. Trade
Rep., 641 F.3d 521, 527 (D.C. Cir. 2011). In a FOIA
case, a court may grant summary judgment based solely on
information provided in an agency's affidavits or
declarations when they “describe the justifications for
nondisclosure with reasonably specific detail, demonstrate
that the information withheld logically falls within the
claimed exemption, and are not controverted by either
contrary evidence in the record nor by evidence of agency bad
faith.” Larson v. Dep't of State, 565 F.3d
857, 862 (D.C. Cir. 2009) (citation omitted). “Unlike
the review of other agency action that must be upheld if
supported by substantial evidence and not arbitrary or
capricious, the FOIA expressly places the burden ‘on
the agency to sustain its action' and directs the
district courts to ‘determine the matter de
novo.'” Dep't of Justice v. Reporters Comm.
for Freedom of the Press, 489 U.S. 749, 755 (1989)
(quoting 5 U.S.C. § 552(a)(4)(B)).
enacted FOIA in order “to pierce the veil of
administrative secrecy and to open agency action to the light
of public scrutiny.” Dep't of the Air Force v.
Rose, 425 U.S. 352, 361 (1976) (quotation marks and
citation omitted). “The basic purpose of FOIA is to
ensure an informed citizenry, vital to the functioning of a
democratic society, needed to check against corruption and to
hold the governors accountable to the governed.”
John Doe Agency v. John Doe Corp., 493 U.S. 146, 152
(1989) (citation omitted). The statute provides that
“each agency, upon any request for records which (i)
reasonably describes such records and (ii) is made in
accordance with published rules . . . shall make the records
promptly available to any person.” 5 U.S.C. §
552(a)(3)(A). Consistent with this statutory mandate, federal
courts have jurisdiction to order the production of records
that an agency improperly withholds. See id. §
552(a)(4)(B); Reporters Comm., 489 U.S. at 754-55.
“At all times courts must bear in mind that FOIA
mandates a ‘strong presumption in favor of
disclosure.'” Nat'l Ass'n of Home
Builders v. Norton, 309 F.3d 26, 32 (D.C. Cir. 2002)
(quoting Dep't of State v. Ray, 502 U.S. 164,
course of their briefing, the parties have helpfully narrowed
the issues in this dispute to two: (1) the adequacy of the
USPTO's search for responsive records, and (2) the
propriety of its withholding certain records in whole or in
part pursuant to Exemption 5. In other words, Plaintiff no
longer challenges the applicability of Exemptions 3 or 6 to
any of the records at issue. Compare Pl. Mot. at 1
n.1, with ECF No. 15 (Pl. Opposition) at 1 n.1. In
addition, the Court considers only the specific challenges
Plaintiff raises to Defendant's search.
the Department of Commerce also contends that it is not the
proper Defendant in this action, and that Huntington should
instead have sued the USPTO, it only raised that argument in
a brief footnote and failed to discuss it in its Reply.
See Def. Mot. at 1 n.1. The Court thus considers the
issue forfeited. Gold Reserve Inc. v. Bolivarian Republic
of Venezuela, 146 F.Supp.3d 112, 126-27 (D.D.C. 2015)
(holding “obliquely” raising issue in footnote
insufficient to surmount waiver threshold); see also
Hutchins v. Dist. of Columbia, 188 F.3d 531, 539 n.3
(D.C. Cir. 1999) (en banc) (explaining courts
“need not consider cursory arguments made only in a
footnote”); Johnson v. Panetta, 953 F.Supp.2d
244, 250 (D.D.C. ...