United States District Court, District of Columbia
GILBERT P. HYATT, Plaintiff,
U.S. PATENT AND TRADEMARK OFFICE, Defendant.
C. Lamberth United States District Judge.
the Court is an action under the Freedom of Information Act
("FOIA"), 5 U.S.C. §552, challenging the
withholding of a single email message by the United States
Patent and Trademark Office ("PTO"). The email
at-issue was sent by one PTO patent examiner to another using
PTO's email system, in reply to the receiving
examiner's initial email concerning a patent applicant,
plaintiff Gilbert P. Hyatt, whose patent applications the two
examiners were (and perhaps still are) responsible for
examining. The PTO nevertheless denied Mr. Hyatt's
request for production of this email message on the ground
that it is not an agency record, or, alternatively, that it
is exempt from disclosure under FOIA's Exemption 6.
Hyatt is a prolific inventor who has received more than
seventy issued patents and has pending at various stages of
prosecution and appeal nearly 400 patent applications before
the PTO, the federal agency responsible for examining patent
applications and for granting U.S. patents. 35 U.S.C. §
1, et seq. Beginning no later than 2005, Mr. Hyatt
has been litigating several of his patent applications before
this Court pursuant to 35 U.S.C. §145. See,
e.g., 05-cv- 2310; 09-cv-1864; 09-cv-1869;
09-CV-1872. Certain limited discovery related to a
portion of that litigation gave rise to his becoming aware of
the document that is now the subject of his FOIA request.
considered Mr. Hyatt's Motion for Summary Judgment, ECF
no. 3, the PTO's opposition thereto and Cross-Motion for
Summary Judgment, ECF nos. 15 and 16, the related reply
briefs, the disputed document itself, see ECF no.
and the entire record in this case, the Court
GRANTS Mr. Hyatt's Motion for Summary
Judgment, ECF no. 3, and DENIES the
PTO's Cross-Motion for Summary Judgment, ECF no. 15.
the conclusion of summary judgment proceedings in the
above-cited §145 actions, which resulted in the
necessity of holding trials on the merits in three of those
cases,  the PTO asserted the affirmative defense
of prosecution laches, arguing that unreasonable and
unexplained delay by Mr. Hyatt cut off his entitlement to
issuance of any patents still under consideration. In
response, Mr. Hyatt sought and obtained discovery regarding
the PTO's handling of his applications, relating to
documents that might tend to show that the PTO handled his
applications in bad faith so as to amount to "unclean
hands" that would preclude the PTO from asserting
prosecution laches. In response to Mr. Hyatt's discovery
requests, the PTO produced, inter alia, a March 10,
2016 email by Walter Briney (the "Briney email"), a
patent examiner assigned to work on Mr. Hyatt's
applications. The Briney email was addressed to all members
of the PTO's Art Unit 2615, a part of the PTO sometimes
referred to as the "Hyatt Unit" because it was
established in large part for the very purpose of examining
Mr. Hyatt's unique and uniquely situated patent
applications. In the email, Mr. Briney shared with his
colleagues a link to a 1993 newspaper article concerning
legal proceedings relating to Mr. Hyatt's years-earlier
divorce. In the body of the email, Mr. Briney opined that the
article "provides a unique glimpse into Hyatt's mind
..." In a sworn deposition on September 28, 2017, Mr.
Briney stated one of recipients of his email, examiner Hien
Dieu Thi (Cindy) Khuu, responded to his message.
producing the Briney email in response to Mr. Hyatt's
document requests in the patent litigation before this Court,
the PTO did not produce Ms. Khuu's reply (the "Khuu
email"). Nor did the PTO identify the Khuu email as
potentially responsive to Mr. Hyatt's discovery requests;
the first Mr. Hyatt learned of its existence was during Mr.
Briney's deposition. The PTO subsequently declined to
produce the Khuu email to Mr. Hyatt, and on October 4, 2017,
Mr. Hyatt moved in the four §145 actions to compel its
production. ECF no. 182 (05-2310); ECF no. 178 (09-1864); ECF
no. 182 (09-1869); ECF no. 180 (09-1872). The PTO opposed Mr.
Hyatt's motion on the ground that the Khuu email was
outside of the scope of discovery authorized by this Court.
In its opposition, the PTO characterized the Khuu Email as,
"An e-mail between two USPTO examiners reflecting their
mental impressions in the context of Mr. Hyatt's divorce
litigation." ECF no. 185 (05-2310); ECF no. 181
(09-1864); ECF no. 185 (09-1869); ECF no. 183 (09-1872). Mr.
Hyatt's Motion to Compel in the §145 cases was
subsequently mooted on October 16, 2017 by this Court's
granting Mr. Hyatt's Federal Rule of Civil Procedure
52(c) motion at the close of the PTO's case-in-chief in
the trial concerning PTO's prosecution laches
November 6, 2017, Mr. Hyatt filed a FOIA request for the Khuu
Email; the PTO acknowledged receipt of that request on
November 9, 2017. On December 7, 2017, the PTO denied the
FOIA request, stating that it had "reviewed the
requested record," but the Khuu Email "is not an
agency record and so there is no agency record responsive to
your request." It contained no additional reasoning or
explanation for denying the FOIA request.
Hyatt appealed the denial on December 13, 2017. On December
26, 2017, the PTO wrote to acknowledge its receipt of Mr.
Hyatt's appeal, and subsequently denied that appeal on
January 19, 2018. The PTO's appeal denial took note that
the Khuu Email "was created by an Agency employee and is
located within the Agency's email system" and that
its sender "may not have had an expectation of
privacy" in emails sent through the PTO's email
system. But the PTO nevertheless concluded anew that the Khuu
Email was not an agency record subject to FOIA because
"it was not used ... in conducting official Agency
business." The Appeal denial states that it is the
PTO's final decision and is subject to judicial review.
Hyatt brought his request to this Court on February 1, 2018,
and on the same day moved for summary judgement as to
PTO's obligation to produce the requested email. ECF no.
3. At the same time, Mr. Hyatt also filed a Motion to Compel
the Khuu email for ex parte, in camera review,
arguing, "in camera review promises to
substantially advance judicial and party economy." ECF
no. 4. PTO opposed Hyatt's motion and filed its own
cross-motion for summary judgment, as well as its opposition
to the Motion to Compel, on April 9, 2018. ECF nos. 15, 16,
17. Each respective motion ripened after the appropriate
subsequent opposition and reply briefs were filed.
23, 2018, this Court granted Mr. Hyatt's Motion to
Compel, ECF no. 22, finding that not to do so would result in
a waste of judicial and party resources. Id. at 3.
Later that day, Mr. Hyatt filed a document styled as a
"notice of supplemental authority," ECF no. 21,
which he made the Court aware of the status of another FOIA
request he had pending before the PTO.
August 2, 2018, the government complied with the Court's
Order on Hyatt's Motion to Compel, delivering to the
Court a hard-copy of the single page in-dispute here. The
Court has reviewed the twenty-eight word email and, for the
reasons articulated below, finds it to be releasable pursuant
to Mr. Hyatt's FOIA request.
judgment is appropriate where "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. Pro. 56(a). It is "appropriate only in
circumstances where 'the evidence is such that a
reasonable jury could not return a verdict for the nonmoving
party.'" Washington Post Co. v. U.S. Dep 't
of Health & Human Servs., 865 F.2d 320, 325 (D.C. Cir.
1989) (quoting Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 248 (1986)). The Court must view all evidence
"in the light most favorable to the nonmoving
party" and, if a genuine dispute exists, "parties
should be given the opportunity to present direct evidence
and cross-examine the evidence of their opponents in an
adversarial setting." Id.
applied in a FOIA case, an agency defendant may be entitled
to summary judgment if it demonstrates that 1) no material
facts are in dispute, 2) it has conducted an adequate search
for responsive records, and 3) each responsive record that it
has located has either been produced to the plaintiff or is
exempt from disclosure. Miller v. U.S. Dep't of
Justice,872 F.Supp.2d 12, 18 (D.D.C. 2012) (citing
Weisberg v. DOJ,627 F.2d 365, 368 (D.C. Cir. 1980)).
Agencies can meet their burden on FOIA matters through a
"reasonably detailed affidavit," see Oglesby v.
U.S. Dep't of Army,920 F.2d 57, 68 (D.C. Cir.
1990), which is to be "accorded a presumption ...