IP Law Daily, PATENT—D.D.C.: Inventor gets mixed results in FOIA suit against Patent and Trademark Office, (Jun 1, 2022)

By Thomas K. Lauletta, J.D.

The inventor’s motion for summary judgment to waive FOIA fees was denied; Classification of the inventor as a “commercial user” was remanded to the PTO to explain its reasoning or to take new agency action.

The federal district court in the District of Columbia gave the USPTO a win against a Freedom of Information requester moving for a fee waiver but remanded to the agency for a fuller explanation of its determination that the requester would have to pay FOIA processing fees as a “commercial user.” The court held that the requester, inventor Gilbert Hyatt, did not prove his case for a fee waiver because he failed to show with reasonable specificity that his FOIA requests would contribute to the public understanding of PTO operations and would reach a reasonably broad segment of the public interested in the subject to be disclosed. However, holding that the PTO did not provide a sufficient administrative record regarding its basis for classifying the requester as a commercial user, the court remanded the question to the PTO for a fuller explanation for the reasoning underlying its decision, or for the PTO to take new action on the PTO request (Hyatt v. USPTO, May 27, 2022, Chutkan, T.).

Plaintiff Gilbert P. Hyatt is a named investor on approximately 400 patent applications, nearly all of which were filed in 1995 or earlier. The plaintiff’s present action seeks summary judgment against the PTO for a FOIA fee waiver, and reversal of the PTO’s classification of him as a commercial user for purposes of setting FOIA fees.

Because the FOIA process can be costly, agencies may defray their costs in meeting FOIA requests. These fees vary based on the requester’s intended use of the information: commercial requesters are charged for search, duplication, and review costs; all other requesters are charged lesser fees. The agency—here, the PTO—may choose to waive FOIA fees if: (1) disclosure “is in the public interest because it is likely to contribute significantly to public understanding” of government operations, and (2) the requester’s use is not primarily commercial (5 U.S.C. § 552(a)(4)(A)(iii)).

Fee waiver. The plaintiff seeks a FOIA waiver from the PTO on the grounds that disclosure of the requested information would contribute to public understanding of the processes by which the PTO treats patent applications, and that the plaintiff would disseminate the disclosed information to a reasonably broad audience of persons interested in the subject. The court determined that the plaintiff failed to establish his allegations with “reasonable specificity” that were based on “non-conclusory terms.” Accordingly, the court denied the plaintiff’s motion for summary judgment to waive his FOIA fees.

Commercial use determination. Because the PTO classified the plaintiff’s request as for commercial use, it assessed fees for “reasonable standard charges for document search, duplication, and review.” The plaintiff seeks to set aside his classification as a commercial user, which, if granted would lower his FOIA request fees. The PTO defended its classification of commercial use on its conclusion that because the plaintiff’s “preferred venue for pursuing his allegations against the PTO is litigation” and the plaintiff “has a significant financial interest in his litigation against the agency,” the requested records must be for commercial use. The court rejected this reasoning, stating that not all litigation derived from FOIA requests is for commercial benefit. Here, the court concluded that the administrative record lacked sufficient information regarding the basis of the PTO’s decision to deny the plaintiff’s request for reclassification. Accordingly, the court remanded to the PTO to either offer a fuller explanation of the PTO’s reasoning for the classification or take new action on the plaintiff’s reclassification request.

Court action. The court denied the plaintiff’s motion for summary judgment on his fee waiver claim and remanded the plaintiff’s fee reclassification request to the PTO for further action.

The Case is No 1:18-cv-02800-TSC.

Attorneys: Andrew M. Grossman (Baker & Hostetler LLP) for Gilbert P. Hyatt. Sean Michael Tepe, U.S. Department of Justice, for the USPTO.

Cases: Patent DistrictofColumbiaNews USPTO