Smartflash, LLC v. U.S. Patent and Trademark Office

CourtDistrict Court, District of Columbia
DecidedAugust 17, 2023
DocketCivil Action No. 2022-1123
StatusPublished

This text of Smartflash, LLC v. U.S. Patent and Trademark Office (Smartflash, LLC v. U.S. Patent and Trademark Office) is published on Counsel Stack Legal Research, covering District Court, District of Columbia primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Smartflash, LLC v. U.S. Patent and Trademark Office, (D.D.C. 2023).

Opinion

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA

SMARTFLASH, LLC,

Plaintiff, Civil Action No. 22-1123 (BAH)

v. Judge Beryl A. Howell

U.S. PATENT AND TRADEMARK OFFICE,

Defendant.

MEMORANDUM OPINION

Plaintiff Smartflash, LLC initiated this lawsuit to challenge the United States Patent and

Trademark Office’s (“USPTO”) withholding, pursuant to Exemptions 5 and 6 of the Freedom of

Information Act (“FOIA”), 5 U.S.C. §§ 552(b)(5), (6), of records relating to the expansion of

judicial panels of the Patent Trial and Appeal Board (“PTAB”) for certain USPTO proceedings.

USPTO has moved to dismiss for lack of subject matter jurisdiction based on plaintiff’s lack of

standing because the FOIA requests at issue were submitted by plaintiff’s attorney rather than

plaintiff, or, alternatively, for summary judgment, see generally Def.’s Mot. Dismiss Alt. Summ.

J., ECF No. 27 (“Def.’s Mot.”); Def.’s Mem. Supp. Mot., ECF No. 27-2 (“Def.’s Mem.”), and

plaintiff has cross-moved for summary judgment and opposed USPTO’s motion to dismiss, see

Pl.’s Combined Opp’n, Cross-Mot. Summ. J., & Mot. Strike (“Pl.’s Cross-Mot.”), ECF No. 28;

Pl.’s Mem. Supp. Cross-Mot., ECF No. 28-1 (“Pl.’s Cross-Mem.”). For the reasons set forth

below, USPTO’s motion to dismiss is granted, and plaintiff’s cross-motion is denied.

I. BACKGROUND

1 Summarized below is the background relevant to resolving the pending motions and the

procedural history to this lawsuit.

A. Plaintiff’s FOIA Request

Michael R. Casey is a longtime attorney for plaintiff, Pl.’s Statement of Material Facts

(“Pl.’s SMF”) ¶¶ 4-5, ECF No. 28-4, which is the patent owner of a family of patents that were

challenged in a series of proceedings at the USPTO before the PTAB, administratively titled Apple

v. Smartflash, Case Nos. CBM2014-00102 to CBM2014-00113, id. ¶¶ 1-2 (the “Smartflash

Proceedings”). In the Smartflash Proceedings, the PTAB used “expanded” panels, with more than

three judges assigned, without explaining to plaintiff why such expanded panels were used. Id.

¶¶ 2-3.

On December 31, 2020, Casey submitted the four FOIA requests at issue here (the

“Requests”) to PTO seeking records relating to PTAB’s use of expanded judicial panels for certain

proceedings as well as a March 13, 2018 presentation entitled Chat with the Chief: New PTAB

Studies in [America Invents Act] Proceedings: Expanded Panels and Trial Outcome for Orange

Book-Listed Patents (the “Presentation”). Def.’s Statement of Material Facts (“Def.’s SMF”) ¶ 1,

ECF No. 27-1 (alteration in original); accord Decl. of Caitlin Trujillo, Associate Counsel,

USPTO’s Office of General Counsel (“Trujillo Decl.”) ¶ 4, ECF No. 27-3; see also Pl.’s SMF ¶¶ 9,

16 (outlining the FOIA requests); Pl.’s Compl., Ex. 3 (Dec. 31, 2020 Email from Michael R. Casey

to “FOIARequests@uspto.gov” (“Casey Email”)), ECF No. 1-4. As relevant here, the

Presentation, states: (1) at p. 7, that a “Suggestion [for Panel Expansion] must be in writing with

reasons and basis for expansion”; (2) at p. 8, that “Early AIA practice expanded panels in families

for case resource management” and that this practice is “now discontinued”; and (3) at p. 10, that

“‘Apple Inc. v. Smartflash LLC—14 individual cases all administered by a 4-or 5-judge panel (see

2 Case CBM2014-00102, et al.)’ is an example of a family of cases ‘in which the panel was expanded

for case resource management.” Def.’s SMF ¶¶ 2, 4; Trujillo Decl. ¶ 4. 1 Notably, when submitting

his Requests to USPTO, Casey did not indicate the requests were made or submitted on behalf of

plaintiff, only using plaintiff’s name when referencing the Smartflash Proceedings. See generally

Casey Email.

Casey’s first Request sought records showing certain information concerning the

Presentation’s suggestion for panel expansion in the Smartflash Proceedings, as that term was used

in the Presentation, at pp. 7 and 10, including the identities of the individuals who suggested the

need for panel expansion in PTAB proceedings, what criteria was used to decide whether to expand

certain panels, what documents were considered, and any objections to panel expansion. Trujillo

Decl. ¶ 4; Def.’s SMF ¶ 3. The second Request sought records identifying other expanded panels

“for case resource management,” as listed in the Presentation, at p. 8, in addition to records

showing when and why the practice of expanding panels for case resource management had been

discontinued. Def.’s SMF ¶¶ 4-5; Trujillo Decl. ¶ 4. The third Request sought “(1) a copy of any

documents showing what documents were considered when determining that any ‘panel was

expanded for case resource management’ in the [Smartflash Proceedings] described on page 10 of

[the Presentation] and (2) to the extent that the considered documents are not part of . . . the

[Smartflash Proceedings] described on page 10 of [the Presentation], copies of the considered

documents.” Def.’s SMF ¶ 6; accord Trujillo Decl. ¶ 4. The fourth Request sought records

showing certain information concerning panel expansion for certain PTAB proceedings in which

1 An “AIA” proceeding is one in which “[a] third party who is not the patent owner . . . challenge[s] the validity of the claims in an issued patent[.]” What Are AIA Proceedings?, UNITED STATES PATENT AND TRADEMARK OFFICE (2023), available at https://perma.cc/ZUE2-H6R9; see also Cannon v. Dist. of Columbia, 717 F.3d 200, 205 n.2 (D.C. Cir. 2013) (“Judicial notice is appropriately taken of information posted on government agencies’ official public websites.”).

3 plaintiff “was a party that is not part of the ‘14 individual cases’ (as that term is used on page 10

[of the Presentation]).” Trujillo Decl. ¶ 4; accord Def.’s SMF ¶ 7.

USPTO acknowledged to Casey receipt of the Requests on February 23, 2021, and issued

an initial determination, on May 10, 2021, disclosing twelve pages of responsive documents, which

were partially redacted, pursuant to FOIA Exemption 5. Def.’s SMF ¶ 8; Trujillo Decl. ¶ 6.

According to Trujillo, USPTO searched through all possible locations of records responsive to the

Requests, including records of PTAB judges, who authored the Presentation, case dockets for all

proceedings in which plaintiff was a party, records of PTAB management personnel, and records

of relevant PTAB personnel with responsibility for paneling decisions. See Trujillo Decl. ¶¶ 18-

31.

Unsatisfied with USPTO’s response, Casey then filed two administrative appeals with

some apparent success. Specifically, in response to Casey’s first administrative appeal, filed on

August 9, 2022, USPTO, on September 7, 2021, denied Casey’s objections to the withheld

information, under Exemption 5, but noted that additional responsive documents were uncovered

and directed that those records be reviewed for possible disclosure subject to any exemptions.

Def.’s SMF ¶¶ 9-10; Trujillo Decl. ¶¶ 9-10. Indeed, a month later, on October 5, 2021, USPTO

provided Casey with 55 pages of documents, with some responsive records withheld pursuant to

FOIA Exemptions 5 and 6. Def.’s SMF ¶ 11; Trujillo Decl. ¶ 11. Casey again appealed, on

December 30, 2021, which appeal the USPTO largely denied, lifting redactions on just one page

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