Hyatt v. U.S. Patent and Trademark Office

          MEMORANDUM OPINION

          Royce C. Lamberth United States District Judge.

         Before 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.

         Mr. 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.^[1] 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.

         Having 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. 22, ^[2] 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.

         Background

         After 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, ^[3] 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.

         Despite 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 defense.^[4]

         On 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.

         Mr. 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.

         Mr. 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.

         On July 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, ^[5] in which he made the Court aware of the status of another FOIA request he had pending before the PTO.

         On 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.

         Legal Standard

         Summary Judgment

         Summary 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.

         As 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 ...