UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA
US INVENTOR, INC.,
Plaintiff,
v. Civil Action No. 21-cv-2894 (TSC) UNITED STATES PATENT AND TRADEMARK OFFICE,
Defendant.
MEMORANDUM OPINION
Plaintiff U.S. Inventor, Inc. sued the United States Patent and Trademark Office (“PTO”)
under the Freedom of Information Act (“FOIA”), for failure to produce documents responsive to
its FOIA request. The parties cross moved for summary judgment on whether Defendant
conducted searches reasonably expected to uncover all relevant documents. In its cross motion,
Defendant provided a detailed, 15-page declaration, explaining the individuals and offices it
consulted in response to Plaintiff’s FOIA request, the searches it undertook, and why, and what
documents those searches turned up. That declaration is sufficient to show that Defendant
conducted reasonable searches, and when the burden shifts, Plaintiff fails to create substantial
concern to the contrary.
Thus, having considered the record and the parties’ briefing, the court will DENY
Plaintiff’s motion for summary judgment and GRANT Defendant’s cross motion.
I. BACKGROUND
On August 4, 2021, Plaintiff filed a FOIA request with Defendant, seeking records
regarding the PTO Director’s delegations of authority to its Commissioner, Andrew Hirshfeld,
Page 1 of 14 and to various Administrative Patent Judges (“APJs”). Def.’s Statement of Undisputed Material
Facts, ECF No. 19-9 ¶¶ 1–5 (“Statement of Facts”). 1 Plaintiff sought materials delegating
authority to Hirshfeld (Request 1); notifying the Comptroller General of the Director vacancy
(Request 2); delegating authority to the APJs to institute proceedings (Request 3); and delegating
authority to the APJs to adjudicate proceedings on the merits (Request 4). Id. ¶¶ 2–5.
Defendant acknowledged receipt of the request on August 5, 2021, when it stated that it
expected to send its response to this request no later than September 1, 2021. Id. ¶ 7. Defendant
did not send Plaintiff a response, however, until September 22, 2021, when it claimed that its
“twenty-day statutory response period for the Agency’s initial determination is September 22,
2021,” and “extended” that period by “ten additional working days to October 6, 2021.” Id. ¶ 9.
The following day Plaintiff responded, notifying Defendant of a discrepancy regarding the
calculation of business days in its letter. Id. ¶ 10. Defendant acknowledged the error,
apologized, and indicated it would release responsive records as quickly as possible. Id. ¶ 11.
Plaintiff received no response, and filed this action on November 2, 2021, seeking a
declaration that Defendant violated FOIA, and an injunction requiring Defendant to immediately
process and disclose the requested records. Compl., ECF No. 1 ¶ 23. Plaintiff claims Defendant
violated FOIA by failing to comply with the time limits in 5 U.S.C. § 552(a)(6)(A)(i) for making
an initial determination or producing responsive documents. Id. ¶¶ 21–22.
On November 19, 2021, Defendant produced 42 pages of records responsive to Requests
1, 3, and 4, noting there were no responsive documents to Request 2. Statement of Facts ¶¶ 13–
14. Two pages of records responsive to Request 2 were produced in August 2022. Id. ¶ 16.
1 Plaintiff responded to Defendant’s statement of facts, agreeing with some and disagreeing with others. See Pl.’s Resp. to Def.’s Statement of Undisputed Facts, ECF No. 22-1. The court relies only on facts upon which Plaintiff and Defendant agree.
Page 2 of 14 Following an impasse between the parties regarding whether Defendant had produced all
responsive records, both sides moved for summary judgment.
II. LEGAL STANDARD
Under Federal Rule of Civil Procedure 56(a), courts “shall grant summary judgment if
the movant shows that there is no genuine dispute as to material fact and the movant is entitled to
judgment as a matter of law.” “FOIA cases typically and appropriately are decided on motions
for summary judgment.” Georgacarakos v. FBI, 908 F. Supp. 2d 176, 180 (D.D.C. 2012)
(citation omitted).
In reviewing a motion for summary judgment in a FOIA case, the court must view the
facts in the light most favorable to the requester. Weisberg v. U.S. Dep’t of Just., 745 F.2d 1476,
1485 (D.C. Cir. 1984) (“Weisberg II”). Unlike non–FOIA cases, the defendant, rather than the
plaintiff, bears the initial burden. 5 U.S.C. § 552(a)(4)(B). Once the defendant meets that
burden, “the plaintiff must come forward with ‘specific facts’ demonstrating that there is a
genuine issue with respect to whether the agency has improperly withheld . . . records.” Span v.
U.S. Dep’t of Just., 696 F. Supp. 2d 113, 119 (D.D.C. 2010) (quoting U.S. Dep’t of Just. v. Tax
Analysts, 492 U.S. 136, 142 (1989)).
III. ANALYSIS
A. Reasonably calculated searches under FOIA
“The fundamental principle animating FOIA is public access to government documents.”
Valencia-Lucena v. U.S. Coast Guard, 180 F.3d 321, 325 (D.C. Cir. 1999) (citation omitted).
“The law in this circuit on agency obligations under FOIA” “embraces” this purpose even though
“the number of requests may pose burdens on agencies.” Id. (citations omitted). To prevail on
summary judgment, an agency must show “that it has conducted a search reasonably calculated
to uncover all relevant documents.” Weisberg v. U.S. Dep’t of Just., 705 F.2d 1344, 1351 (D.C. Page 3 of 14 Cir. 1983) (“Weisberg I”). To do so, the “agency must show that it made a good faith effort,”
“using methods which can be reasonably expected to produce the information requested.”
Oglesby v. U.S. Dep’t of the Army, 920 F.2d 57, 68 (D.C. Cir. 1990) (“Oglesby I”). This
reasonableness standard requires an adequate search, not a perfect one—the agency is not
obliged to “search every record system,” id., or “speculate about potential leads,” Kowalczyk v.
U.S. Dep’t of Just., 73 F.3d 386, 389 (D.C. Cir. 1996). Moreover, the plaintiff may not prevail
by showing only that “further documents might conceivably exist.” Weisberg I, 705 F.2d at
1351 (quoting Perry v. Block, 684 F.2d 121, 128 (D.C. Cir. 1982) (per curiam)); see Iturralde v.
Comptroller of Currency, 315 F.3d 311, 315 (D.C. Cir. 2003) (“[F]ailure of an agency to turn up
one specific document in its search does not alone render a search inadequate.”).
An agency “may rely upon affidavits to show it has conducted a reasonable search, as
long as they are ‘relatively detailed and nonconclusory and submitted in good faith.’”
Weisberg I, 705 F.2d at 1351 (quoting Goland v. CIA, 607 F.2d 339, 352 (D.C. Cir. 1979))
(formatting modified). For example, the D.C. Circuit in Oglesby v. U.S. Dep’t of Army, 79 F.3d
1172, 1185–86 (D.C. Cir. 1996) (“Oglesby II”), concluded that the FBI’s search for records was
adequate despite the plaintiff’s concern that a “section tickler” noted in a document meant that
more responsive records existed. The court pointed out that the agency did not locate any
additional documents and had informed the plaintiff that the “section tickler” reference “did not
indicate that any other responsive documents existed.” Id. The court refused to “second-guess
FBI’s affidavit” regarding the meaning of this “section tickler” reference. Id. at 1186; accord id.
(refusing to second-guess State Department’s affiant regarding how a given repository could be
searched).
Page 4 of 14 By contrast, the D.C. Circuit found the affidavit in Oglesby I inadequate because it
merely stated: “Based upon the information contained in Mr. Oglesby’s letter, and consistent
with customary practice and established procedure, a search was initiated of the Department
record system most likely to contain the information which had been requested.” 920 F.2d at 68.
Among other flaws, that conclusory affidavit did not “identify the terms searched or explain how
the search was conducted.” Id.; accord Steinberg v. U.S. Dep’t of Just., 23 F.3d 548, 551–52
(D.C. Cir. 1994) (agency affidavits that do not “describe in any detail what records were
searched, by whom, and through what process” are inadequate at summary judgment).
A court should deny summary judgment “if a review of the record raises substantial
doubt” regarding the reasonableness of the search, “particularly in view of ‘well defined requests
and positive indications of overlooked materials.’” Valencia-Lucena, 180 F.3d at 326 (quoting
Founding Church of Scientology v. NSA, 610 F.2d 824, 837 (D.C. Cir. 1979)). Accordingly, in
Valencia-Lucena, the D.C. Circuit concluded that summary judgment for the agency was
inappropriate where the defendant had told the plaintiff that the records requested “may be
located at the federal records center in Georgia,” but then declined to search that office. Id. at
327. The court held that “[i]t is well-settled that if an agency has reason to know that certain
places may contain responsive documents, it is obligated under FOIA to search” those locations
“barring an undue burden.” Id. (citations omitted). This principle, however, requires proof in
the record; “mere speculation that as yet uncovered documents may exist does not undermine the
finding that the agency conducted a reasonable search for them.” Iturralde, 315 F.3d at 316
(quoting SafeCard Servs. v. SEC, 926 F.2d 1197, 1201 (D.C. Cir. 1991)); accord Steinberg, 23
F.3d at 552 (“[M]ere reference to other files does not establish the existence of documents that
are relevant to [the plaintiff’s] FOIA request.”).
Page 5 of 14 “Once an agency has made a prima facie showing” of an adequate search, “the burden
shifts to the plaintiff to provide countervailing evidence sufficient to raise substantial doubt
concerning the adequacy of the agency’s search.” Rodriguez v. Dep’t of Defense, 236
F. Supp. 3d 26, 35 (D.D.C. 2017). Thus, under this burden-shifting framework, once the agency
shows the search was adequate, the court will grant it summary judgment unless the plaintiff can
provide evidence to the contrary. See id.
As explained below, Defendant’s declaration demonstrates that its search in response to
Plaintiff’s FOIA request was reasonable. Plaintiff has not raised substantial doubt regarding the
adequacy of the search, and therefore summary judgment in favor of Defendant is warranted.
B. Request 1
In Request 1, Plaintiff sought “all communications, documents, orders, or letters
delegating to Mr. Andrew Hirshfeld the performance of the functions of the duties of the
Director effective after January 20, 2021, including the identification of the PTO officer who
made the delegation, and any documents evidencing [his] acceptance of that delegated
authority.” Statement of Facts ¶ 2. In response to this request, Defendant released two
documents: Agency Organization Order 45-1, and former Director Iancu’s succession
memorandum. Decl. of Kathryn Siehndel, ECF No. 19-8 ¶¶ 21–22 (“Decl.”).
In its search, Defendant enlisted the assistance of the Correspondence Specialist for the
Office of the Under Secretary (“OUS”) who “searched the document management database in
OUS called ‘IQ,’ which is used to manage official correspondence, memoranda, reports, and
supplemental information.” Id. ¶ 19. Defendant’s declaration explained that, “[i]f OUS had any
official delegation or acceptance of delegation of Mr. Hirshfeld’s role as Director, it would have
been contained in the IQ,” but OUS found no responsive records. Id. Defendant also sent a
Page 6 of 14 search request to the Senior Counsel for Legislative and Regulatory Affairs in the Office of
General Counsel, who confirmed that the delegation to Hirshfeld was set forth in Agency
Organization Order 45-1 and that former Director Iancu had prepared a memorandum prior to his
departure setting forth a succession plan, which identified Hirshfeld to serve as Director. Id.
¶ 21. Both documents were provided to Defendant and then released to Plaintiff. Id. ¶¶ 21–22.
This detailed declaration shows that Defendant “made a good faith effort” to uncover all
relevant documents and used methods it “reasonably expected to produce the information
requested.” Oglesby I, 920 F.2d at 68; see Weisberg I, 705 F.2d at 1351. The declaration
explained in detail who conducted the searches, why those parties were enlisted to search, and
what kinds of records were stored and searched by those parties. See Steinberg, 23 F.3d at 551–
52. It also explained why the agency was unable to find some of the requested records:
Defendant “had no specified records evidencing Mr. Hirshfeld’s acceptance of the delegated
authority to perform the duties and functions of the Director of the USPTO, because he did not
sign any such documents.” Decl. ¶ 22. Finally, Defendant averred that “using key word
searches,” such as “delegation and/or acceptance,” “was not the path to finding useful records for
Plaintiff,” as such a search would not have even resulted in finding the two responsive records.
Id. ¶ 26.
Accordingly, the burden shifts to Plaintiff to raise substantial doubt concerning the
adequacy of Defendant’s search. Plaintiff claims that Defendant’s search was inadequate
because it released no records “evidencing Mr. Hirshfeld’s acceptance of [the] delegated
authority” and did not ask Hirshfeld if he had any such records. Mem. in Supp. of Mot. for
Summ. J., ECF No. 13-1 at 8–9 (“Motion”); Pl.’s Combined Reply in Supp. of Mot. for Summ.
J. and Opp’n to Def.’s Cross Mot. for Summ. J., ECF No. 22 at 8–10 (“Pl.’s Reply”). But the
Page 7 of 14 declaration indicates that Defendant did, in fact, ask Hirshfeld “whether any records of a written
delegation or acceptance existed,” and he “confirmed that the answer was no.” Decl. ¶ 23.
Plaintiff also claims that “[i]t is inconceivable that [Defendant] has no records of Commissioner
Hirshfeld’s acceptance of those functions and duties.” Motion at 9. But Plaintiff’s “mere
speculation” that such “documents may exist does not undermine a finding that the agency
conducted a reasonable search for them.” Iturralde, 315 F.3d at 316 (quoting SafeCard Servs.,
926 F.2d at 1201).
Plaintiff also claims Defendant left “the Court in the dark as to the actual extent of the
search,” leaving open the possibility that Defendant “searched the proverbial backyard
swimming pool.” Pl.’s Reply at 9–11. But, to the extent Defendant intends this as a serious
argument, this amounts to “mere speculation” and leaves the court “in the dark” regarding what
additional details Plaintiff believes were required in the declaration. See Iturralde, 315 F.3d at
1316 (quoting SafeCard Servs., 926 F.2d at 1201).
In sum, the record indicates that Defendant’s search in response to Request 1 was
reasonably calculated to uncover all relevant documents.
C. Request 2
In Request 2, Plaintiff sought “notifications that the PTO provided under 5 U.S.C.
§ 3349(a)(1) to the Comptroller General of the United States and to each House of Congress of
the vacancy that occurred in January 2021, in the office(s) whose functions and duties were
delegated to” Hirshfeld. Statement of Facts ¶ 3. Defendant initially produced no records in
response to this request, Decl. ¶ 20, but eventually obtained two pages of records from a parent
agency and released them to Plaintiff, id. ¶ 25.
Page 8 of 14 In its search, Defendant had the Office of Governmental Affairs look for responsive
records, which would maintain “[a]ny reporting to the Comptroller General or other branch of
Congress,” but it found no responsive records. Id. ¶ 20. Moreover, Defendant learned that it
“did not file vacancy reports with either the Comptroller General or Congress” under the Federal
Vacancies Reform Act, which it confirmed with individuals who “would have been involved in
any such filing.” Id. ¶ 24. Nevertheless, after learning that the Department of Commerce had
reported Defendant’s Director vacancy, Defendant obtained a copy of the transmittal email and
submission and released them to Plaintiff. Id. ¶ 25. That disclosure went above and beyond
Defendant’s obligations under FOIA, since agencies “need not produce records maintained by
another federal government agency.” Callaway v. U.S. Dep’t of Treasury, 893 F. Supp. 2d 269,
275 (D.D.C. 2012). And, again, Defendant explained that key word searches would not have
been helpful in the search. Decl. ¶ 26.
Plaintiff contends Defendant’s search in response to Request 2 was unreasonable because
its late production of the Department of Commerce documents show that Defendant did not take
its request seriously and failed to conduct “anything beyond a perfunctory search.” Motion at 9–
10; accord Pl.’s Reply at 11. Defendant’s declaration squarely rebuts that assertion by
explaining the various inquiries it made, both to verify that it did not file anything related to the
Director vacancy and to seek out any reporting to the Comptroller General or Congress. Decl.
¶¶ 20, 24–26. Indeed, Defendant went beyond FOIA’s search requirements by finding and
producing the Department of Commerce documents. Callaway, 893 F. Supp. 2d at 275
(Agencies “need not produce records maintained by another federal government agency or obtain
records from any other sources.”).
Page 9 of 14 Plaintiff also argues that Defendant’s search was inadequate because it did not explain
how it decided which subject matter experts were relevant to Plaintiff’s request and consulting
subject matter experts “is not a search of communications on a specific issue to specific
recipients.” Pl.’s Reply at 12. Defendant explained that it had the Office of Governmental
Affairs search for records, because that office would have been responsible for any reporting to
the Comptroller General or other branch of Congress, Decl. ¶ 20, and that it asked the individuals
who “would have been involved in” any filing under the Federal Vacancies Reform Act to verify
whether such documents existed, id. ¶ 24. Thus, Defendant first had the relevant office search
for the records Plaintiff requested, and then, when that search did not turn up responsive records,
verified with individual experts to ensure it had not missed the records. To be sure, Defendant’s
declaration does not explain how the declarant knew that the individual would have been
involved in any such filing, but Plaintiff has given the court no reason to second guess the
declarant. Moreover, the fact that Defendant’s parent agency, the Department of Commerce, did
report the vacancy further supports Defendant’s conclusion that it did not do so itself. Plaintiff
therefore fails to raise substantial doubt concerning the adequacy of Defendant’s search in
response to Request 2.
D. Requests 3 and 4
In Request 3, Plaintiff sought “all communications, documents, orders, or letters
delegating to the [APJs] the Director’s authority under 35 U.S.C. §§ 314, 324 to institute the
respective trial proceedings identified . . . and any documents evidencing [their] acceptance of
that delegated authority,” including, but not limited to, “records of delegation and sub-delegation
of other persons in the chain of delegation from the Director to the APJs, including any
documents evidencing each of these persons’ acceptances of such delegated authority.”
Page 10 of 14 Statement of Facts ¶ 4. Relatedly, in Request 4, Plaintiff sought “all communications,
documents, orders, or letters designating under 35 U.S.C. [§] 6(c) the [APJs] to perform the duty
of adjudication on the merits in the respective proceedings identified . . . and any documents
evidencing each of these APJ’s acceptance of that duty,” including, but not limited to, “records
of delegation and sub-delegation of other persons in the chain of designation to the APJs,
including any documents evidencing each of these persons’ acceptances of such delegated
authority.” Id. ¶ 5. Defendant released two Standard Operating Procedure documents and
referred Plaintiff to a public regulation authorizing the Patent Trial and Appeal Board (“PTAB”)
to institute trials on behalf of the Director. Decl. ¶¶ 32–33.
In its search, Defendant’s FOIA coordinator and the APJ assigned to the search shared
the requests with the Chief Judge, Deputy Chief Judge, and Vice Chief Judge of the Patent
Board, who consulted the Executive Team. Id. ¶ 29. Collectively, the PTAB concluded they did
not have any directly responsive records because that authority is delegated through regulation
and policy, not on a case-by-case basis. Id. ¶ 30. Accordingly, the PTAB collected copies of the
regulatory and policy documents outlining the delegations of authority to APJs, but Defendant
determined most of these documents were not appropriate for release in response to a FOIA
request because they are publicly available on Defendant’s website and were not directly
responsive to Plaintiff’s request. Id. ¶¶ 30–31. Defendant did, however, release the two most
recent versions of the PTAB Standard Operating Procedure 1 “Assignment of Judges to Panels”
to Plaintiff, which contained an overview of the delegation of the Director’s authority to the
Chief Judge, and the Chief Judge’s ability to further delegate that authority. Id. ¶ 32.
Consulting PTAB leadership—the Chief Judge, Deputy Chief Judge, Vice Chief Judge,
and Executive Team—was reasonable. As Defendant explained, any request for a designation of
Page 11 of 14 authority to an APJ would have come from somewhere in the leadership chain, and any
acceptance of such designation would have gone back to leadership. Id. ¶ 34. By confirming
with leadership that authority was delegated only on an aggregate basis and not on an individual
basis, and releasing the documents outlining that delegation process, Defendant “made a good
faith effort” and used methods it “reasonably expected to produce the information requested.”
Oglesby I, 920 F.2d at 68.
Plaintiff fails to raise substantial doubt concerning the adequacy of Defendant’s search.
First, it contends that there “must be written records of such delegation of authority to each APJ
to adjudicate each of these cases.” Motion at 10. To support its assertion, Plaintiff provides
examples of types of documents that it believes exist, such as “an appointment letter or other
document specifying the duties and authority to be assumed by the APJ,” “written panel
designation to each specific case,” and the APJ’s “acknowledgement” “that they will serve on
the specific panel,” along with examples of possible searches Defendant should have done. Id. at
11–12. But, again, “mere speculation that as yet uncovered documents may exist does not
undermine the finding that the agency conducted a reasonable search for them.” Iturralde, 315
F.3d at 316 (quoting SafeCard Servs., 926 F.2d at 1201). And “mere speculation” is all Plaintiff
has. For instance, a written panel designation to a specific case is not necessarily a delegation of
authority. An administrative office could assign APJs to panels, just as a Clerk of Court’s office
assigns cases to Article III judges. See Def.’s Combined Mem. in Opp’n to Pl.’s Mot. for Summ.
J. & Cross-Mot. for Summ. J., ECF No. 19 at 18–19 (“[T]he Board communicates its panel
assignments electronically via a docketing system.”). But judicial power is not delegated to
Article III judges through individual case assignments from the Clerk of Court. Plaintiff does
not give any reason to assume that APJs receive their authority from panel assignments.
Page 12 of 14 Second, Plaintiff insists that the Standard Operating Procedures Defendant produced
were not responsive because they did not enumerate specific APJs. Pl.’s Reply at 13. Defendant
explained that it did “not have specific written designations of authority to institute or adjudicate
individual [trials], and accordingly, no acceptance of such designations.” Decl. ¶ 31. It did,
however, have the Standard Operating Procedures documents, which contained “an overview of
the delegation of the Director’s authority to the Chief Judge, and the Chief Judge’s ability to
further delegate that authority.” Id. ¶ 32. Plaintiff faults Defendant simply because the
documents it sought did not exist. That, however, does not render Defendant’s search
unreasonable.
Third, Plaintiff argues that Defendant’s search was unreasonable because Defendant did
not search the records of the APJs enumerated in Plaintiff’s FOIA request. Pl.’s Reply at 15–16.
Defendant, however, avers that it did not send its search request to each of the APJs listed in
Plaintiff’s request “because that effort would not have resulted in the production of responsive
records.” Decl. ¶ 34. According to Defendant, any records regarding the designation of
authority to the APJs would have come from somewhere in the PTAB leadership chain, which
Defendant consulted, and any records regarding APJ’s acceptances of authority would have then
been received by leadership. Id. Plaintiff gives no reason why this might not be the case.
Instead, Plaintiff invites the court to “micro manage the executive branch” by second guessing
the agency’s “administrative judgment and expertise.” Johnson v. Exec. Off. for U.S. Atty’s, 310
F.3d 771, 776 (D.C. Cir. 2002). The court declines the invitation.
Finally, Defendant contends that Defendant improperly “narrowly interpreted” these
requests, Pl.’s Reply at 12, by reading Plaintiff’s request “as looking for formal statements
granting or delegating authority to individual judges to institute and adjudicate cases, and the
Page 13 of 14 subsequent acceptance of such authority by those judges,” Decl. ¶ 29. But even a “narrow”
interpretation of FOIA request is permissible “as long as the narrowed scope is a reasonable
interpretation of what the request seeks.” Wilson v. U.S. Dep’t of Transp., 730 F. Supp. 2d 140,
154 (D.D.C. 2010). And Plaintiff does not explain why interpreting “all communications,
documents, orders, or letters” to mean “formal statements” is so unreasonable. Consequently,
Plaintiff fails to meet its burden to create substantial concern regarding the adequacy of
Defendant’s search.
IV. CONCLUSION
For the foregoing reasons, the court will DENY Plaintiff’s Motion for Summary
Judgment, ECF No. 13, and GRANT Defendant’s Cross Motion for Summary Judgment, ECF
No. 19. Two separate Orders will accompany this Memorandum Opinion.
Date: February 16, 2024
Tanya S. Chutkan TANYA S. CHUTKAN United States District Judge
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