Abhyanker v. United States Patent & Trademark Office

• Court: District Court, N.D. California
• Decided: August 19, 2024
• Docket: 3:23-cv-00746
• Status: Unknown

Opinion

1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 RAJ ABHYANKER, Case No. 23-cv-00746-AMO

8 Plaintiff, ORDER RE: DEFENDANT’S MOTION 9 v. FOR SUMMARY JUDGMENT

10 UNITED STATES PATENT & Re: Dkt. No. 35 TRADEMARK OFFICE, 11 Defendant.

12 13 This is a Freedom of Information Act (“FOIA”) case. Defendant United States Patent & 14 Trademark Office’s (“USPTO”) motion for summary judgment was heard before this Court on 15 May 9, 2024. Having carefully considered the arguments advanced at the hearing, together with 16 the parties’ papers, as well as the relevant legal authority, the Court hereby GRANTS USPTO’s 17 motion, for the following reasons. The Court additionally considers the several pending 18 administrative motions to seal. 19 I. BACKGROUND 20 Plaintiff Raj Abhyanker is an attorney and principal of the law firm Legalforce RAPC 21 Worldwide, P.C. He initiated a FOIA request and this lawsuit based on a FOIA request to obtain 22 documents related to the USPTO’s ethics investigation into his legal practice. See ECF 1. 23 Defendant USPTO is the federal agency responsible for granting United States patents and 24 registering trademarks. In doing so, the agency fulfills the mandate of Article I, Section 8, Clause 25 8, of the Constitution. Under Title 35 U.S.C. § 2(b)(2)(D), Congress vested USPTO with 26 authority to promulgate regulations that “may govern the recognition and conduct of agents, 27 attorneys, or other persons representing applicants or other parties before the Office.” In 1 the USPTO’s disciplinary jurisdiction, and the USPTO’s Office of Enrollment and Discipline 2 (“OED”) is authorized to investigate possible grounds for discipline. Trujillo Decl. ¶ 39. 3 A. USPTO’s Disciplinary Investigation of Abhyanker 4 The disciplinary proceeding against Abhyanker commenced with a complaint filed on 5 December 23, 2019, pursuant to 37 C.F.R. §§ 11.32 and 11.34. See Ferman Decl. ¶ 2. A 6 designated hearing officer conducted a hearing in Abhyanker’s disciplinary proceeding pursuant to 7 37 C.F.R §§ 11.39 and 11.44. Id. ¶ 3. The hearing concluded on April 20, 2023. Id. The matter 8 has been briefed and submitted, and the parties await an initial decision from the hearing officer, 9 pursuant to 37 C.F.R. § 11.54. Id.1 10 B. Abhyanker’s FOIA Requests 11 Abhyanker made two FOIA requests related to USPTO’s investigation and decision to 12 initiate disciplinary action against him. 13 1. First FOIA Request (No. FP-22-00010) 14 On May 29, 2022, Abhyanker submitted a FOIA request. Trujillo Decl. ¶ 4, Ex. 1. He 15 requested:

16 All records containing, describing, pertaining to, or referring to:

17 A. Memo Authorizing the Investigation against me, Raj Abhyanker, in G3651 believed to authored by USPTO attorney at the Office of 18 Enrollment and Discipline (OED), Ronald Jaicks on or about March 2019. 19 B. Charging Document against me, Raj Abhyanker, in G3651 20 believed to be authored by USPTO staff attorney at the OED, Paul Nguyen Ba on or about September 2019-January 2020. 21 22 23

24 1 After a hearing officer issues an initial decision, either party, or both, may appeal that initial decision to the USPTO Director pursuant to 37 C.F.R. § 11.55. If a hearing officer’s initial 25 decision is appealed, the USPTO Director is tasked with reviewing the appeal and issuing a final decision under 37 C.F.R. § 11.56. Either party, or both, may request reconsideration of the 26 USPTO Director’s final decision. Under 37 C.F.R. § 11.57(a), “[r]eview of the final decision by the USPTO Director in a disciplinary case may be had by a petition filed in accordance with 35 27 U.S.C. § 32. Any such petition shall be filed within 30 days after the date of the final decision.” 1 Id., Ex. 1. On June 1, 2022, USPTO’s FOIA Office sent an acknowledgment letter to Abhyanker 2 and assigned his request tracking number FOIA Request No. FP-22-00010. Id. ¶ 5, Ex. 2. The 3 FOIA Office responded to Abhyanker’s FOIA request on February 17, 2023, noting that it had 4 identified responsive records, but withheld all records in full pursuant to FOIA Exemptions 5, 6, 5 7(C), and 7(E). Id. ¶ 6, Ex. 3. 6 Abhyanker submitted an administrative appeal of the USPTO’s initial denial of FOIA 7 Request FP-22-00010 on February 23, 2023. Trujillo Decl. ¶ 8, Ex. 4. In this appeal, he narrowed 8 the scope of the request by removing the language “[a]ll records containing, describing, pertaining 9 to, or referring to” from the beginning of the requested records. Id., Ex. 4. 10 On March 23, 2023, USPTO issued a decision on Abhyanker’s FOIA appeal. Id. ¶ 9, Ex. 11 5. The agency reviewed Abhyanker’s administrative appeal (A-23-00007) de novo and upheld the 12 denial on modified grounds – it added more exemptions as bases to deny the release of the 13 requested records, including FOIA (5 U.S.C. § 552) Exemption 7(A) and Privacy Act (5 U.S.C. 14 § 552a) Exemptions (d)(5) and (k)(2). Id. ¶ 10, Ex. 5. Lastly, the USPTO upheld the original 15 bases for denial, FOIA Exemptions 5, 6, 7(C), and 7(E). Id. 16 2. Second FOIA Request (No. FP-23-00013) 17 On March 23, 2023, with this suit pending, Abhyanker submitted another FOIA request, 18 seeking:

19 A. List of exhibits that Paul Nguyen Ba use to “make a package” for his recommendation. 20 B. Outline of memorialized notes by Nguyen Ba in the USPTO 21 docketing system for this case.

22 C. The Committee on Discipline’s determination of probable cause as described in 37 CFR § 11.32. 23 24 Trujillo Decl. ¶ 11, Ex. 6. That same day, the FOIA Office sent an acknowledgement to 25 Abhyanker and assigned it FP-23-00013. Id. ¶ 12, Ex. 7. 26 On August 4, 2023, the FOIA Office responded to FP-23-00013. Id. ¶ 13, Ex. 8. The 27 response explained that the FOIA Office had already released the list of exhibits that Abhyanker 1 litigation. Id. (citing Bates USPTO000340-000341). The response further explained that, with 2 regard to Parts B and C of the request, responsive records had been identified, but such records 3 were being withheld in full pursuant to FOIA Exemptions 5, 7(A) and Privacy Act Exemptions 4 (d)(5) and (k)(2). Id. 5 Abhyanker submitted an administrative appeal of the USPTO’s initial denial of FOIA 6 Request FP-23-00013 on August 8, 2023. Id. ¶ 14, Ex. 9. USPTO denied Abyanker’s appeal on 7 September 1, 2023. Id. ¶ 16, Ex. 11. On December 30, 2023, Abhyanker amended his complaint 8 in this case to include FP-23-00013. ECF 27. 9 3. USPTO’s Search for Responsive Documents 10 Based on the nature of Abhyanker’s FOIA requests, the FOIA Office determined that all 11 responsive records would be located within Office of Enrollment and Discipline (“OED”), since 12 his requests sought records related to his disciplinary investigation. Trujillo Decl. ¶ 17. OED is 13 responsible for registering attorneys and agents to practice before the USPTO and for developing 14 and administering the registration examination. See generally, 37 C.F.R. Part 11. OED located 15 the two memoranda that Abhyanker sought in FP-22-00010 and provided them to the FOIA Office 16 for processing. Id. ¶ 20. Additionally, OED located Nguyen Ba’s memorialized notes (which also 17 happened to be contained within the exhibits of the Committee on Discipline memorandum) and 18 the Committee on Discipline probable cause determination, which Abhyanker seeks in FP-23- 19 00013, and provided them to the FOIA Office for processing. Id. ¶ 21. 20 As described above, UPSTO identified the two memoranda that Abhyanker requested in 21 FP-22-00010. The memoranda and their associated exhibits consisted of a total of 1,619 pages of 22 material: “the Ron Jaicks memorandum;” a seven-page memorandum (USPTO000001-000007) 23 and 14 exhibits (USPTO000008-000124) (together, the “Jaicks memo”); and Nguyen Ba’s 24 recommendation memorandum to the Committee on Discipline; a 44-page memorandum 25 (USPTO000125- 000168), Rule Violation Chart (USPTO 000169- 000170), Appendices A-C 26 (USPTO 000171- 000339), Exhibit List (USPTO000340- 000341), and 39 Exhibits 27 (USPTO000342- 001619) (together, the “Committee memo”). See Trujillo Decl. ¶ 22. 1 As described above, the FOIA Office identified a two-page exhibit list requested in FP-23- 2 00013 (USPTO000340-000341), including Nguyen Ba’s memorialized notes and a one-page 3 probable cause determination (USPTO001620). Id. ¶ 23. 4 4. Production of Responsive Documents 5 During the pendency of the lawsuit, the FOIA Office re-reviewed the responsive records 6 and elected to revise its earlier denial decisions. On June 29, 2023, the USPTO provided 7 Abhyanker with 1,566 of the 1,619 pages that were identified as responsive. Trujillo Decl. ¶ 24. 8 All 1,566 pages were released in their entirety and without any redactions. Id. Specifically, the 9 FOIA Office released all of the exhibits that corresponded to the Jaicks memo. Id. The FOIA 10 Office also released all appendices, the rule violations chart, the exhibit list, and exhibits that 11 corresponded to the Committee memo. Id. 12 Subsequently, on December 1, 2023, USPTO released a redacted version of the Jaicks 13 memo, which had previously been withheld in its entirety. Trujillo Decl. ¶ 25, Ex. 12. On 14 February 5, 2024, USPTO released a redacted version of the one-page probable cause 15 determination, which had previously been withheld in its entirety and further explained that 16 Nguyen Ba’s memorialized notes had already been provided in the June 29, 2023 supplemental 17 production. Id. ¶ 26, Exs. 14-15. 18 USPTO continues to withhold the Jaicks memo (7 pages) in part and the Committee memo 19 (44 pages) in full. Trujillo Decl. ¶ 27. USPTO continues to partially withhold the probable cause 20 determination identified in the second FOIA request (1 page). Id. Altogether, USPTO continues 21 to withhold, in full or in part, 52 pages. 22 USPTO withholds portions of the Jaicks memo pursuant to FOIA Exemptions 6, 7(A) and 23 7(C) and Privacy Act Exemptions (d)(5) and (k2). Trujillo Decl. ¶ 28. USPTO withholds the 24 Committee memo pursuant to the attorney work product privilege and deliberative process 25 privilege recognized under FOIA Exemption 5 and FOIA Exemption 7(A) and Privacy Act 26 Exemptions (d)(5) and (k2). Id. USPTO withholds portions of the probable cause determination, 27 specifically, the signature blocks of the committee members, pursuant to Exemptions 6 and 7(C) 1 II. DISCUSSION 2 There are several motions pending. The Court first addresses the administrative motions to 3 seal before turning to the merits of the USPTO’s motion for summary judgment. 4 A. Administrative Motions to Seal 5 Abhyanker moves to file under seal Exhibits 1 through 7 of the First Amended Complaint. 6 ECF 28. There is a strong presumption in favor of public access to judicial records and 7 documents. Kamakana v. City & Cnty. Of Honolulu, 447 F.3d 1172, 1178 (9th Cir. 2006). 8 Accordingly, when considering a sealing request, “a ‘strong presumption in favor of access’ is the 9 starting point.” Id. (quoting Foltz v. State Farm Mut. Auto. Ins. Co., 331 F.3d 1122, 1135 (9th Cir. 10 2003)). Parties seeking to seal judicial records relating to motions that are “more than tangentially 11 related to the underlying cause of action” bear the burden of overcoming the presumption with 12 “compelling reasons” that outweigh the general history of access and the public policies favoring 13 disclosure. Ctr. for Auto Safety v. Chrysler Grp., 809 F.3d 1092, 1099 (9th Cir. 2016); Kamakana, 14 447 F.3d at 1178-79. 15 In addition, in this district, all parties requesting sealing must comply with Civil Local 16 Rule 79-5. That rule requires, among other things, the moving party provide “the reasons for 17 keeping a document under seal, including an explanation of: (i) the legitimate private or public 18 interests that warrant sealing; (ii) the injury that will result if sealing is denied; and (iii) why a less 19 restrictive alternative to sealing is not sufficient.” Civ. L.R. 79-5(c)(1). Further, Civil Local Rule 20 79-5 requires the moving party to provide “evidentiary support from declarations where 21 necessary.” Civ. L.R. 79-5(c)(2). And the proposed order must be “narrowly tailored to seal only 22 the sealable material.” Civ. L.R. 79-5(c)(3). 23 Here, the exhibits attached to his First Amended Complaint are more than tangentially 24 related to Plaintiff’s claims – they constitute the very substance of his FOIA challenge – and 25 Abhyanker must accordingly provide a compelling reason for sealing. To that end, Abhyanker 26 moves to seal the materials “to protect the privacy and security of certain individuals and facts” 27 named in his filings. ECF 28 at 2. In support of his motion, Abhyanker declares that the materials 1 individuals whose privacy rights should be protected, who have not provided consent, and the 2 disclosure of which might materially harm reputations.” See Abhyanker Decl. (ECF 29) ¶ 3.2 3 This thin, vague explanation falls well short of the “compelling reasons” standard necessary to 4 overcome the presumption in favor of public access. Ctr. for Auto Safety, 809 F.3d at 1099. It 5 also falls well short of the explanations and specific tailoring required by Civil Local Rule 79-5. 6 Therefore, the Court DENIES the administrative motion to seal. 7 B. Motion for Summary Judgment 8 USPTO moves for summary judgment on all of Abhyanker’s FOIA claims, arguing that 9 the agency adequately searched for documents responsive to his requests and that the agency 10 properly withheld or redacted certain documents under applicable FOIA exemptions. The Court 11 sets forth the legal standard for summary judgment before turning to the adequacy of USPTO’s 12 search and the application of the several FOIA exemptions. 13 1. Legal Standard 14 A party may move for summary judgment on a “claim or defense” or “part of . . . a claim 15 or defense.” Fed. R. Civ. P. 56(a). Summary judgment is appropriate when there is no genuine 16 dispute as to any material fact and the moving party is entitled to judgment as a matter of law. Id. 17 The party seeking summary judgment bears the initial burden of informing the court of the basis 18 for its motion, and of identifying those portions of the pleadings and discovery responses that 19 demonstrate the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 20 317, 323 (1986). Material facts are those that might affect the outcome of the case. Anderson v. 21 Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute as to a material fact is “genuine” if there 22 is sufficient evidence for a reasonable jury to return a verdict for the nonmoving party. Id. 23 24

25 2 During the hearing, the Court discussed with the parties the need to maintain under seal the documents involved in the ongoing USPTO disciplinary matter brought against Abhyanker. That 26 conversation revealed that at least part of Abhyanker’s motivation in seeking to seal these materials is to prevent potential personal embarrassment arising from public disclosure of the 27 documents. To the extent Abhyanker seeks to prevent public disclosure of the documents 1 When the moving party has carried its burden, the nonmoving party must respond with 2 specific facts, supported by admissible evidence, showing a genuine issue for trial. Fed. R. Civ. P. 3 56(c), (e). The asserted disputed facts must be material – the existence of only “some alleged 4 factual dispute between the parties will not defeat an otherwise properly supported motion for 5 summary judgment.” Anderson, 477 U.S. at 247-48. 6 When deciding a summary judgment motion, a court must view the evidence in the light 7 most favorable to the non-moving party and draw all justifiable inferences in its favor. Id. at 255; 8 Hunt v. City of Los Angeles, 638 F.3d 703, 709 (9th Cir. 2011). However, when a non-moving 9 party fails to produce evidence rebutting defendants’ showing, then an order for summary 10 adjudication is proper. Nissan Fire & Marine Ins. Co. v. Fritz Companies, Inc., 210 F.3d 1099, 11 1103 (9th Cir. 2000) (“If the nonmoving party fails to produce enough evidence to create a 12 genuine issue of material fact, the moving party wins the motion for summary judgment.”). The 13 court’s function on a summary judgment motion is not to make credibility determinations or 14 weigh conflicting evidence with respect to a disputed material fact. See T.W. Elec. Serv., Inc., v. 15 Pac. Elec. Contractors Ass’n, 809 F.2d 626, 630 (9th Cir. 1987). 16 Summary judgment is recognized as a proper avenue for resolving a FOIA claim. See 17 Sakamoto v. U.S. Envt’l Prot. Agency, 443 F. Supp. 2d 1182, 1188 (N.D. Cal. 2006). In fact, it “is 18 the procedural vehicle by which nearly all FOIA cases are resolved.” Nat’l Resources Defense 19 Council v. U.S. Dep’t of Defense, 388 F. Supp. 2d 1086, 1094 (C.D. Cal. 2005). In FOIA cases, 20 the usual summary judgment standards apply and “if there are genuine issues of material fact in a 21 FOIA case, the district court should proceed to a bench trial or adversary hearing” and issue 22 findings of fact and conclusions of law. Animal Legal Def. Fund v. U.S. Food & Drug Admin., 23 836 F.3d 987, 990 (9th Cir. 2016) (citing Fed. R. Civ. P. 52(a)(1)); see also Cameranesi v. U.S. 24 Dep’t of Defense, 856 F.3d 626, 636 (9th Cir. 2017) (clarifying that courts apply the usual 25 summary judgment standard to FOIA cases). An agency bears the burden of establishing that an 26 exemption applies. Lahr v. Nat’l Transp. Safety Bd., 569 F.3d 964, 973 (9th Cir. 2009). 27 The government may meet its burden by submitting agency affidavits or declarations that 1 demonstrate that the information withheld logically falls within the claimed exemption, and are 2 not controverted by either contrary evidence in the record nor by evidence of agency bad faith.” 3 Military Audit Project v. Casey, 656 F.2d 724, 738 (D.C. Cir. 1981); see also Kamman v. IRS, 56 4 F.3d 46, 48 (9th Cir. 1995) (noting that government affidavits “may not rely upon conclusory and 5 generalized allegations of exemptions”). “If the affidavits contain reasonably detailed descriptions 6 of the documents and allege facts sufficient to establish an exemption, the district court need look 7 no further” and may grant summary judgment to the government based entirely on the basis of 8 information set forth in the affidavit. Lane v. Dep’t of the Interior, 523 F.3d 1128, 1135-36 (9th 9 Cir. 2008); Kamman, 56 F.3d at 48; Military Audit Project, 656 F.3d at 738. 10 2. Adequacy of USPTO’s Search for Responsive Records 11 Abhyanker challenges the adequacy of USPTO’s search for records responsive to his two 12 FOIA requests. “FOIA requires an agency responding to a request to ‘demonstrate that it has 13 conducted a search reasonably calculated to uncover all relevant documents.’” Lahr, 569 F.3d at 14 986 (quoting Zemansky v. EPA, 767 F.2d 569, 571 (9th Cir. 1985)). FOIA requires the agency to 15 show that it “conducted a search reasonably calculated to uncover all relevant documents.” Rojas 16 v. Fed. Aviation Admin., 989 F.3d 666, 677 (9th Cir. 2021) (en banc) (quoting Zemansky, 767 F.2d 17 at 571). In evaluating the adequacy of the search, the issue “is not whether there might exist any 18 other documents possibly responsive to the request, but rather whether the search for those 19 documents was adequate.” Lahr, 569 F.3d at 987; see also SafeCard Servs., 926 F.2d at 1201 20 (“[T]he factual question . . . is whether the search was reasonably calculated to discover the 21 requested documents, not whether it actually uncovered every document extant.”). A requester 22 cannot challenge the adequacy of a search by “purely speculative claims about the existence and 23 discoverability of other documents.” SafeCard Servs., Inc. v. S.E.C., 926 F.2d 1197, 1200 (D.C. 24 Cir. 1991). 25 USPTO maintains that its search efforts were reasonable and adequate under law because, 26 plainly, Plaintiff requested specific records regarding the disciplinary case against him, and the 27 USPTO found the documents Plaintiff requested. See Trujillo Decl. ¶¶ 17-21. 1 Related to Abhyanker’s first FOIA request, No. FP-22-00010, UPSTO identified the two 2 memoranda that Abhyanker sought in FP-22-00010, which consisted of a total of 1,619 pages of 3 material: the Jaicks memo and the Committee memo, along with their associated exhibits. Trujillo 4 Decl. ¶ 22. Further, the FOIA Office identified a two-page exhibit list, Nguyen Ba’s 5 memorialized notes and a one-page probable cause determination. Id. ¶ 23. 6 Abhyanker’s first FOIA requested “[a]ll records containing, describing, pertaining to, or 7 referring to” the two specified documents; however, in his appeal, he narrowed the scope of the 8 request by removing this language. Id. ¶ 8, Ex. 4. Abhyanker acknowledges that he narrowed the 9 scope of his request in this way and that he sought only these memoranda. 10 Abhyanker’s subsequent FOIA request (No. FP-23-00013) sought the following specific 11 documents: (A) List of exhibits that Paul Nguyen Ba use to “make a package” for his 12 recommendation; (B) Outline of memorialized notes by Nguyen Ba in the USPTO docketing 13 system for this case; and (C) The Committee on Discipline’s determination of probable cause as 14 described in 37 C.F.R. § 11.32. See Trujillo Decl. ¶ 11, Ex. 6. In its response to the FOIA 15 request, the FOIA Office explained that the list of exhibits sought in Part A of his request had 16 already been released to Plaintiff. Id. ¶ 13, Ex. 8. Additionally, OED located Nguyen Ba’s 17 memorialized notes (which also happened to be contained within the exhibits of the Committee on 18 Discipline memorandum) and the Committee on Discipline probable cause determination, which 19 Abhyanker seeks in FP-23-00013. Id. ¶ 21. 20 Given that USPTO found all of the documents Abhyanker requested in his two FOIA 21 requests, there can be no question that USPTO used a search method sufficient to produce the 22 information Abhyanker requested. See Lahr, 569 F.3d at 986 (finding an agency’s record search 23 adequate where it used methods which could be reasonably expected to produce the information 24 requested). Though Abhyanker focuses his argument on the absence of well-defined search terms 25 to demonstrate the extent of USPTO’s search, his arguments do not stand up against this fact. The 26 Court therefore finds that USPTO’s searches were reasonable and adequate under the 27 circumstances of this case and controlling law. 1 3. FOIA Exemption 5 2 The Supreme Court has consistently rejected the idea that a party can “obtain through the 3 FOIA material that is normally privileged [because it] would create an anomaly in that the FOIA 4 could be used to supplement civil discovery.” United States v. Weber Aircraft Corp., 465 U.S. 5 792, 801 (1984). To this end, “Exemption 5 encompasses records ‘normally privileged in the civil 6 discovery context.’” Am. Civil Liberties Union of N. Calif. v. U.S. Dep’t of Justice, 880 F.3d 473, 7 483 (9th Cir. 2018) (quoting Nat. Labor Relations Bd. v. Sears, Roebuck & Co., 421 U.S. 132, 149 8 (1975)). FOIA Exemption 5 also withholds from disclosure “inter-agency or intra-agency 9 memorandums or letters” that are not discoverable in litigation. 5 U.S.C. § 552(b)(5). 10 USPTO argues that the Committee memo falls within the bounds of Exemption 5 because 11 it is privileged as (1) attorney work product and (2) product of the agency’s deliberative process. 12 a. Work Product 13 “To qualify for work-product protection, documents must: (1) be ‘prepared in anticipation 14 of litigation or for trial’ and (2) be prepared ‘by or for another party or by or for that other party’s 15 representative.’” United States v. Richey, 632 F.3d 559, 567 (9th Cir. 2011). 16 Here, the Committee memo was prepared by Nguyen-Ba, the OED attorney who was 17 assigned to investigate misconduct allegations against Abhyanker. Trujillo Decl. ¶ 31. OED’s 18 Committee on Discipline considered allegations that Abhyanker, a registered practitioner before 19 USPTO, violated various provisions of the USPTO Code of Professional Responsibility and/or the 20 USPTO Rules of Professional Conduct. Id. The Committee memo is dated September 25, 2019, 21 and consists of Nguyen-Ba’s legal analysis and recommendations regarding Abhyanker’s alleged 22 misconduct. Id. ¶ 32. Nguyen-Ba presented the memo as part of the presentation of evidence for 23 the Committee on Discipline to consider in determining whether probable cause existed to bring 24 charges under 37 C.F.R. § 11.32 against Abhyanker; the Committee’s probable cause findings and 25 recommendations were then forwarded to the OED Director. See also Trujillo Decl. ¶ 32. The 26 OED Director reviewed these findings in deciding whether to file a complaint against the 27 practitioner. Id. Given this context, it is clear that Nguyen-Ba prepared the Committee memo in 1 Abhyanker argues that the attorney work product privilege does not apply here because the 2 materials sought were prepared in the routine work of the agency, not in anticipation for litigation. 3 He fails to present any evidence to this effect. Moreover, his contention is directly contradicted by 4 the record evidence presented by the USPTO, which shows that it was prepared in contemplation 5 of litigation that the agency then initiated. 6 On this same point, the administrative law judge presiding over Abhyanker’s disciplinary 7 proceeding, Administrative Law Judge J. Jeremiah Mahoney, denied Plaintiff’s request to obtain 8 the Committee memo during discovery. Trujillo Decl. ¶ 34. In a May 22, 2022 Order, the judge 9 ruled that the Committee memo is protected by the attorney work product privilege. Id. & Ex. 15. 10 In sum, because the Committee memo is attorney work product, it is properly exempted 11 from disclosure under FOIA Exemption 5. 12 b. Deliberative Process 13 Exemption 5 also protects from disclosure documents created as part of an agencies’ 14 deliberative process, which encompasses “inter-agency or intra-agency” documents “reflecting 15 advisory opinions, recommendations and deliberations comprising part of a process by which 16 governmental decisions and policies are formulated.” Carter v. U.S. Dep’t of Commerce, 307 17 F.3d 1084, 1089 (9th Cir. 2002) (quoting Dep’t of Interior v. Klamath Water Users Protective 18 Ass’n, 532 U.S. 1, 8 (2001)). The deliberative process privilege is intended to “enhance the 19 quality of agency decisions, by protecting open and frank discussion among those who make them 20 within the Government” and “rests on the obvious realization that officials will not communicate 21 candidly among themselves if each remark is a potential item of discovery and front page news.” 22 Klamath, 532 U.S. at 8-9 (internal citations omitted). The purpose of the deliberative process 23 privilege “is to prevent injury to the quality of agency decisions.” Maricopa Audubon Soc’y v. 24 U.S. Forest Serv., 108 F.3d 1089, 1092 (9th Cir. 1997). 25 The deliberative process privilege “shields from disclosure documents that are both 26 ‘predecisional’ and part of the agency’s ‘deliberative process.’” Kowack v. U.S. Forest Serv., 766 27 F.3d 1130, 1135 (9th Cir. 2014); see also Maricopa Audubon Soc’y, 108 F.3d at 1093. 1 his decision,’” Assembly of State of Cal. v. U.S. Dep’t of Com., 968 F.2d 916, 921 (9th Cir. 1992) 2 (quoting Renegotiation Board v. Grumman Aircraft Engineering Corp., 421 U.S. 168, 184 3 (1975)), and may include “recommendations [and] draft documents,” Assembly of the State of 4 Cal., 968 F.2d at 920. Predecisional materials are “deliberative” if “disclosure of the materials 5 would expose [the] agency’s decisionmaking process in such a way as to discourage candid 6 discussions within the agency and thereby undermine the agency’s ability to perform its 7 functions.” Kowack, 766 F.3d at 1135. 8 Here, the Committee memo is predecisional because it does not constitute OED’s final 9 decision regarding discipline (i.e., OED Director’s complaint against Plaintiff) and instead 10 represents the investigating attorney’s recommendation to the Committee, which is responsible for 11 reviewing the evidence and providing a probable cause finding to the OED Director. See Trujillo 12 Decl. ¶ 37. To disclose this information would reveal internal deliberations between the OED 13 Director and the Committee, namely, internal analysis, impressions, and recommendations. Id. 14 ¶ 38. Disclosure would jeopardize the candid and comprehensive discussions that are essential for 15 efficient and effective agency decision-making regarding the discipline of practitioners. See 16 Kowack, 766 F.3d at 1135. The interests of OED attorneys in presenting their analysis and 17 recommendations to the Committee without fearing that these sensitive internal communications 18 will be released publicly remains a compelling interest supporting withholding of such internal 19 communications. Id. 20 Therefore, the Court finds that USPTO properly withheld the Committee memo under 21 Exemption 5 because it is both attorney work product and protected by the deliberative process 22 privilege. 23 4. FOIA Exemption 7(A) 24 USPTO asserts Exemption 7(A) covers the redacted portions of the Jaicks memo and the 25 Committee memo. FOIA Exemption 7(A) exempts from disclosure “records or information 26 compiled for law enforcement purposes, but only to the extent that the production of such law 27 enforcement records or information [ ] could reasonably be expected to interfere with enforcement 1 documents were compiled for law enforcement purposes, which requires an examination of 2 whether the agency serves a “law enforcement function.” Church of Scientology Int’l v. IRS, 995 3 F.2d 916, 919 (9th Cir. 1993). The distinction between civil and criminal law enforcement 4 proceedings does not alter this analysis. See Tax Analysts v. IRS, 294 F.3d 71 (D.C. Cir. 2002) 5 (“‘law enforcement purposes’ under Exemption 7 includes both civil and criminal matters within 6 its scope . . . FOIA makes no distinction between agencies whose principal function is criminal 7 law enforcement and agencies with both law enforcement and administrative functions.”) (citing 8 Pratt v. Webster, 673 F.2d 408, 416 (D.C. Cir. 1982)). 9 The documents in question here were compiled and/or created in furtherance of the 10 USPTO’s mission: to enforce the disciplinary rules pursuant to its authorities under 35 U.S.C. 11 § 2(b)(2)(D), which authorizes the USPTO to “govern the recognition and conduct of agents, 12 attorneys, or other persons representing applicants or other parties before the Office.” See Trujillo 13 Decl. ¶ 41. Abhyanker’s FOIA requests seek records regarding OED’s investigation into his 14 alleged misconduct. Id. While the investigative phase of the attorney discipline enforcement 15 proceeding has ended, the proceeding is still active because the parties are awaiting the decision 16 from the administrative law judge, and once that decision is issued, the parties have various 17 administrative appeal options and federal court options. Id. 18 The Jaicks memo concerns OED’s initial findings, impressions, and opinions regarding 19 whether OED should proceed in opening a disciplinary case against Abhyanker. Trujillo Decl. 20 ¶ 42. Disclosure of portions of the Jaicks memo withheld under Exemption 7(A) would impede 21 the ongoing disciplinary proceedings. See 5 U.S.C. § 552(b)(7)(A). 22 USPTO similarly contends that Exemption 7(A) applies to the Committee memo. Mot. at 23 15 (citing Trujillo Decl. ¶ 43). The memo was drafted at the conclusion of the investigation into 24 Abhyanker by an attorney and reflects the strengths and weaknesses of whether charges should be 25 brought and which charges should be brought against him. Id. To provide this memo to 26 Abhyanker by way of a FOIA request would prejudice the Government’s ongoing case. The 27 Court accordingly agrees that the redacted memo and the withheld memo fall within the law 5. FOIA Exemption 6 and 7(C) Redactions 1 USPTO advances that Exemption 6, in conjunction with Exemption 7(C), applies to a 2 small portion of the first page of the Jaicks memo that contains information about OED’s 3 disciplinary investigations of individuals other than Abhyanker. Exemption 6 protects information 4 about individuals in “personnel and medical files and similar files” when the disclosure of such 5 information “would constitute a clearly unwarranted invasion of personal privacy.” 5 U.S.C. 6 § 552(b)(6). Under Exemption 6, the concept of privacy not only encompasses that which is 7 inherently private, but also includes an “individual’s control of information concerning his or her 8 person.” DOJ v. Reporters Comm. for Freedom of the Press, 489 U.S. 749, 763 (1989). In order 9 to determine whether Exemption 6 protects against disclosure, courts require that agencies engage 10 in a multi-part process. First, a court must determine whether the information at issue is contained 11 within a personnel, medical, or “similar” file. 5 U.S.C. § 552(b)(6). Second, a court must 12 determine whether there is a significant privacy interest in the requested information. See Multi 13 Ag Media LLC. v. USDA, 515 F.3d 1224, 1229 (D.C. Cir. 2008) (superseded on other grounds by 14 7 U.S.C. § 8791(b)(2)). Third, the court must evaluate the requester’s asserted FOIA public 15 interest in disclosure. See Nat’l Archives & Records Admin. v. Favish, 541 U.S. 157, 160 (2004). 16 Finally, if there is a significant privacy interest in nondisclosure and a FOIA public interest in 17 disclosure, the court must balance those competing interests to determine whether disclosure 18 “would constitute a clearly unwarranted invasion of personal privacy.” 5 U.S.C. § 552(b)(6). In 19 particular, Exemption 6 states that FOIA does not apply to “personnel and medical files and 20 similar files the disclosure of which would constitute a clearly unwarranted invasion of personal 21 privacy.” 5 U.S.C. § 552(b)(6). Because Exemption 6 speaks of an “unwarranted” invasion of 22 personal privacy, “a court must balance the public interest in disclosure against the interest 23 Congress intended the [e]xemption to protect.” U.S. Dep’t of Def. v. Fed. Labor Relations Auth. 24 (FLRA), 510 U.S. 487, 495 (1994). 25 By slight contrast, Exemption 7(C) exempts disclosure of information based on privacy 26 concerns by permitting an agency to withhold from disclosure information that is “compiled for 27 law enforcement purposes, but only to the extent that the production of such law enforcement 1 records or information . . . could reasonably be expected to constitute an unwarranted invasion of 2 personal privacy.” 5 U.S.C. § 552(b)(7)(C). 3 Here, USPTO avers that a combination of the privacy interests delineated in Exemption 6 4 and Exemption 7(C) applies to a small portion of the first page of the Jaicks memo 5 (USPTO000002) which contained information about OED’s disciplinary investigations of 6 individuals other than Abhyanker. Trujillo Decl. ¶ 46. Using the same privacy-based 7 combination, USPTO avers that Exemption 6 and Exemption 7(C) apply to the names and 8 signatures of the members of the Committee on Discipline. Id. ¶ 47. The Court concurs. Both of 9 these groups of redactions are similar to personnel or medical files in that their disclosure would 10 impair the privacy interests of others facing disciplinary investigations separate from Abhyanker 11 as well as the privacy interests of members of the Committee on Discipline. See, e.g., Dep’t of 12 Justice v. Reporters Comm. for Freedom of the Press, 489 U.S. 749, 765 (1989) (“[D]isclosure of 13 records regarding private citizens, identifiable by name, is not what the framers of FOIA had in 14 mind.”). 15 The privacy interests of these groups are significant, particularly to prevent embarrassment 16 of irrelevant parties and harassment of members of the Committee on Discipline. See Forest Serv. 17 Emps. for Env’t Ethics v. U.S. Forest Serv., 524 F.3d 1021, 1026-27 (9th Cir. 2008) (concluding 18 that forest service employees have a valid privacy concern, including due to harassment or 19 embarrassment or contact by the plaintiff or media). The application of this exemption is 20 appropriate because the Committee on Discipline members are like grand jurors in that they 21 review evidence presented to them and make determination about whether there is probable cause 22 to charge individuals. Trujillo Decl. ¶ 47. Similar to grand jurors, they have a strong privacy 23 interest in keeping their identities hidden so as to avoid harassment or threats to their safety. Id. 24 In response to both redactions, Abhyanker states only “that the public interest in disclosure 25 significantly outweighs the privacy concerns cited, especially given the alleged malfeasance.” 26 Opp. at 13. His stated FOIA interest in disclosure accordingly warrants little weight, particularly 27 where he has obtained the substantive portions of the documents without those relatively minimal 1 Finally, there exists only minimal, if any, public interest in the information withheld under 2 Exemption 7(C), because disclosing the redactions in the Jaicks memo and the names redacted 3 from probable cause determination would not significantly increase “public understanding of the 4 operations and activities of the Government.” See FLRA, 510 U.S. at 495. 5 The Court finds that USPTO properly invoked Exemptions 6 and 7(C) and the minimal 6 redactions of names in the Jaicks memo and the probable cause determination were validly 7 withheld. 8 6. “Reasonably Segregable” Non-Exempt Information 9 Title 5 U.S.C. § 552(b) provides that “[a]ny reasonably segregable portion of a record shall 10 be provided to any person requesting such record after deletion of the portions which are exempt 11 under this subsection.” A district court is required to make findings about segregability when an 12 entire document is withheld. Wiener v. F.B.I., 943 F.2d 972, 988 (9th Cir. 1991). 13 The USPTO conducted a line-by-line review of all responsive material to identify and 14 release information that was either non-exempt or that qualified for discretionary waiver. Trujillo 15 Dec. ¶ 58. On June 29, 2023, USPTO released all attachments and exhibits to both the Jaicks 16 memo and the Committee memo. Id. On December 1, 2023, USPTO provided another 17 supplemental release to Abhyanker, this time providing the majority of the Jaicks memo to him, 18 only redacting portions of memorandum pages USPTO000001, 000002, 000006, and 00007. Id. 19 On February 5, 2024, the USPTO provided its last supplemental production to Abhyanker, 20 releasing the entire probable cause determination except for the identity of the members of the 21 Committee on Discipline. Id. USPTO has provided thorough explanations for redacting or 22 withholding the materials not fully released to Abhyanker, including asserting several privileges. 23 See, e.g., Trujillo Decl. ¶¶ 53-56. The Court finds that USPTO satisfies the standard for 24 withholding the Committee memo in full, particularly because Abhyanker presents no 25 countervailing evidence that USPTO failed to present reasonably segregable portions of the 26 applicable record. USPTO is entitled to summary judgment on this issue as well. 27 // 1 Wl. CONCLUSION 2 In sum, USPTO demonstrates the adequacy of its search for the materials requested by 3 || Abhyanker, relevant FOIA exemptions apply to the materials withheld, and USPTO met its burden 4 || to show that it produced all reasonably segregable portions of the applicable record. Abhyanker 5 fails to proffer any countervailing evidence. For the foregoing reasons, the Court GRANTS 6 || USPTO’s motion for summary judgment. 7 IT IS SO ORDERED. 8 Dated: August 19, 2024 9 □ □ 10 ARACELI MARTINEZ-OLGUIN I United States District Judge 12

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