IP Law Daily, PATENT—E.D. Va.: Refusing to ‘shoehorn’ constitutional argument about intra-agency communications into FOIA case, court sides with USPTO, (Jun 20, 2024)

By Robert Margolis, J.D.

Inventor had sought intra-agency communications between panel Administrative Patent Judges and non-panel USPTO employees, to support argument such communications are unconstitutional and violate Administrative Procedures Act.

The federal district court in Alexandria, Virginia has granted summary judgment to the U.S. Patent and Trademark Office (USPTO) and denied a cross-motion by inventor Josh Malone, holding that documents he sought through a Freedom of Information Act (FOIA) request are exempted from production as “predecisional” and “deliberative.” The court also sided with the USPTO in holding that the handful of documents it provided Malone after he filed suit to enforce his FOIA request did not entitle Malone to recover attorney fees, since there was no evidence the lawsuit caused the USPTO to produce them (Malone v. USPTO, No. 1:23-cv-1050 (E.D. Va. June 17, 2024)).

FOIA requests. In February 2023, Malone submitted two FOIA requests to the USPTO, seeking (1) information concerning paneling procedures for a pending Inter Partes Review (IPR) proceeding before the Patent Trial and Appeal Board; and (2) information about potential conflicts of interest of the Administrative Patent Judges (APJs) for a different IPR proceeding. The USPTO provided more than 1,500 pages to Malone combined for the two requests. However, the USPTO cited Exemption 5 in FOIA to withhold or redact certain documents. Malone’s challenge to that invocation was at issue before the court. In addition, Malone contended he was entitled to attorney fees from the USPTO as a party who substantially prevailed in a lawsuit under FOIA.

Deliberative process. FOIA mandates production of federal agency documents unless the documents fall within an enumerated exemption. The USPTO invoked Exemption 5 on certain documents, 5 U.S.C. § 552(b)(5), which courts have read to exempt materials that would be protected under attorney-client privilege, attorney work product privilege, or the deliberative process privilege. Here the USPTO was invoking deliberative process, so it had the burden of proving that the documents are both “predecisional” and “deliberative.” The USPTO met its burden, the court held.

The withheld or redacted documents concerned communications between panel APJs and non-panel USPTO employees. Malone argued that the use of a Circulation Judge Pool, which are non-management APJs who review and provide suggested edits for some draft decisions of panel APJs, falls outside of Exemption 5, because the practice of panel APJs consulting other USPTO employees violates the Administrative Procedures Act (APA) and the Constitution. But the court rejected this argument, finding that Malone was “attempting to shoehorn” a substantive argument about the propriety of the communications into a FOIA case. Malone cited no authority to demonstrate to the court that it needed to reach that underlying issue in order to resolve whether the documents were properly withheld under Exemption 5. Any challenge to the administrative practice should come from parties potentially harmed by the alleged violations, not from FOIA cases brought by third parties likely without standing to bring the challenges.

As to the narrower question of whether Exemption 5 applies to the documents, the court found that the USPTO met its burden. The withheld and redacted documents concerned draft PTAB decisions sent between the panel APJs and non-panel PTAB employees, many of whom also are APJs. The documents are predecisional, as they are drafts of decisions that have yet to be published. They also are deliberative, because they constitute initial drafts along with feedback from other PTAB employees about the draft decisions.

Attorney fees. FOIA permits a court to assess against the United States reasonable attorney fees and other costs reasonably incurred in litigation where the complainant has “substantially prevailed.” 5 U.S.C. § 552(a)(4)(E)(i). Malone asserted that he was entitled to fees because, as a result of his bringing suit, the USPTO voluntarily or unilaterally changed its position, resulting in a production to him that was “not insubstantial.” 5 U.S.C. § 552(a)(4)(E)(ii). The court found otherwise.

Malone had to prove that documents were turned over to him as a result of his lawsuit and that the produced documents were more than “minimally significant.” He failed on both showings. The timeline of the litigation showed that the USPTO produced documents responsive to Malone’s first FOIA request in April 2023, before he filed his lawsuit, and within a month of the lawsuit’s filing completed that production to him. It then produced documents responsive to the second request. The USPTO later lifted some of the withholdings it had made on roughly 14 pages of documents that had been previously redacted or withheld. Based on this, Malone argued that his lawsuit expedited the USPTO’s production or documents. But there was no evidence to support the inference that the lawsuit caused the documents to be produced any more rapidly than they otherwise would have been produced, the court noted. Malone offered nothing more than a “post hoc, ergo propter hoc” argument, which was insufficient to meet his burden.

As for the 14 pages that the USPTO ultimately produced after initially withholding them, the court found that these did not meet the “minimally significant” threshold. The pages included draft agendas for hearings, emails about logistics, and email chains regarding a finalized order and an email to send to the parties in the PTAB proceedings. These documents did not concern the internal processes involved in the replacement of the APJ on the panel, but instead logistics about informing the parties of a change that had already taken place. Malone had sought the substantive information about the change, which the documents did not reflect.

The Case is No. 1:23-cv-1050.

Judge: Hilton, C.

Attorneys: Jacob Nephi Tingen (Tingen & Williams PLLC) for Josh Malone. Carolyn M. Wesnousky for the USPTO.

Cases: Patent VirginiaNews USPTO