U.S. Inventor, Inc. v. United States Patent and Trademark Office

CourtDistrict Court, District of Columbia
DecidedJanuary 14, 2026
DocketCivil Action No. 2023-3639
StatusPublished

This text of U.S. Inventor, Inc. v. United States Patent and Trademark Office (U.S. Inventor, Inc. v. United States 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
U.S. Inventor, Inc. v. United States Patent and Trademark Office, (D.D.C. 2026).

Opinion

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA ____________________________________ ) U.S. INVENTOR, INC., ) ) Plaintiff, ) ) v. ) Civil Action No. 23-3639 (ABJ) ) UNITED STATES PATENT ) AND TRADEMARK OFFICE, ) ) Defendant. ) ____________________________________)

MEMORANDUM OPINION

Plaintiff U.S. Inventor, Inc. brought this action against the United States Patent and

Trademark Office (“PTO”) under the Freedom of Information Act (“FOIA”), 5 U.S.C. § 552,

seeking records related to the individual “bonus award payments” made to Administrative Patent

Judges (“APJs”). Compl. [Dkt. # 1] ¶ 1. The agency compiled a spreadsheet listing 3,690 bonus

payments, including year-end performance bonuses, “gainsharing” awards, “special act” awards,

and “time off” awards, and it released the spreadsheet to plaintiff with the rows reflecting the

performance bonuses and gainsharing awards completely withheld under FOIA Exemption 6. Ex.

2 to Decl. of Kathryn Siehndel [Dkt. # 12-2] (“Award Spreadsheet”); Vaughn Index, Ex. 3 to Decl.

of Kathryn Siehndel [Dkt. # 12-3].

Pending before the Court are the parties’ motions for summary judgment over whether the

agency properly applied Exemption 6. Def.’s Mot. for Summ. J [Dkt. # 12] (“Def.’s Mot.”); Pl.’s

Mem. in Opp. to Def.’s Mot. & Cross-Mot. for Summ. J. [Dkt. # 14-1] (“Pl.’s Cross-Mot.”). The

motions are fully briefed. Def.’s Reply in Supp. of Def.’s Mot. & Opp. to Pl.’s Cross-Mot. [Dkt.

# 17] (“Def.’s Reply”); Pl.’s Reply in Supp. of Pl.’s Cross-Mot. [Dkt. # 19] (“Pl.’s Reply”); Def.’s Statement of Undisputed Material Facts [Dkt. # 12-4] (“DSUMF”); Pl.’s Statement of Undisputed

Material Facts [Dkt. # 14-4] (“PSUMF”).

For the reasons stated below, defendant’s motion for summary judgment will be

GRANTED IN PART AND DENIED IN PART and plaintiff’s cross-motion for summary

judgment will be GRANTED IN PART AND DENIED IN PART. The Court rules in favor of

the defendant with respect to the applicability of Exemption 6 and the withholding of information

identifying which Administrative Patent Judges received performance bonus and gainsharing

awards, but it finds in favor of the plaintiff with respect to segregability, and it will order the release

of additional, non-private information.

BACKGROUND

The United States Patent and Trademark Office is responsible for granting and issuing

patents. Decl. of Kathryn Siehndel [Dkt. # 12-1] (“Siehndel Decl.”) ¶ 3. When a party applies to

the PTO for a patent, the decision of patentability is initially made by a Patent Examiner. Id. ¶ 4.

If the Patent Examiner rejects the application, the party can appeal to the Patent Trial and Appeal

Board (“PTAB”). Id. PTAB can also decide questions of patentability raised by third parties in

proceedings colloquially known as “AIA proceedings,” referring to the Leahy-Smith America

Invents Act, Pub. L. No. 112-29, 125 Stat. 329-331 (2011). Id. Administrative Patent Judges are

the individuals authorized to decide the appeals and AIA proceedings that go before PTAB. Id.;

PSUMF ¶ 1.

On June 27, 2023, plaintiff sent a FOIA request to the Patent and Trademark Office seeking

“copies of pay records documenting all individual bonus award payments made to each APJ from

October 1, 2011 to present.” DSUMF ¶¶ 1–2; PSUMF ¶¶ 2–3; Ex. 1 to Pl.’s Cross-Mot. [Dkt.

# 14-3] (“Request Letter”) at 1. The request specified that the records “may include multiple

2 payment records for the same APJ in a single fiscal year,” and that plaintiff wanted “records for

each separate bonus award payment to the APJ, reflecting the amount, the date it was [paid],

and . . . the PTO transaction number of the payment.” Request Letter at 1 (emphasis in original).

The request further sought “the full name of the APJ and the base salary of the APJ at the time the

bonus award payment was made.” Id.

The agency acknowledged receipt of the request on June 28, and it prepared a report that

included all awards made to the APJs from October 1, 2011 to August 24, 2023, the date the report

was run. DSUMF ¶¶ 3–4, citing Siehndel Decl. ¶¶ 8, 13. The report consisted of a 93-page

spreadsheet with 3,690 rows listing each individual award. Id. ¶ 13. For each award, the

spreadsheet included columns for: the fiscal year, the APJ’s name, the APJ’s base salary, the award

date, the award amount, the award code, and the award description used in the Agency’s personnel

system. Id.

Four types of awards were included in the report. Id. ¶ 14. First, there were “[y]ear-end

performance bonuses.” Id. ¶ 14(a). The bonuses were based “based directly on the APJ’s annual

performance ratings,” so, for example, if an APJ received an “Outstanding” rating, they would

receive a certain amount of money, while a lower performance rating would result in a lower

amount. Id. Second, there were “gainsharing awards” based on the APJ’s “individual production

level” and “rating-based eligibility requirements” Id. ¶ 14(b). Third, there were “[o]ther monetary

awards,” including individual or group “special act awards” that recognize “distinguished

achievements or significant contributions.” Id. ¶ 14(c). And finally, there were “[t]ime off

awards” granted “for exceptional contributions that benefit the government.” Id. ¶ 14(d).

The agency responded to plaintiff’s request on September 8, 2023, stating that it had

identified responsive records, but that it would withhold the records in their entirety under

3 Exemption 6. DSUMF ¶ 6; PSUMF ¶ 5; Ex. 2 to Pl.’s Cross-Mot. [Dkt. # 14-3] at 1. It explained

that the information was “directly tied to performance ratings” of the individual APJs, and that it

did “little to shed light or contribute significantly to public understanding of the operations or

activities of the USPTO.” Ex. 2 at 1–2.

Plaintiff appealed the response to the agency’s Office of General Counsel. DSUMF ¶¶ 8–

9; PSUMF ¶ 6; Ex. 3 to Pl.’s Mot. [Dkt. # 14-3] at 1–5. On October 20, the Office of General

Counsel granted plaintiff’s administrative appeal in part. DSUMF ¶¶ 10–12; PSUMF ¶ 7; Ex. 6

to Compl. [Dkt. # 1-1] (“Appeal Letter”) at 6. The decision on appeal explained that only the year-

end performance bonuses and gainsharing awards would reveal information regarding the APJs’

performance ratings, and therefore, it ordered that the “individual or group special act awards and

time-off awards be released, subject to any other applicable FOIA exemptions.” Id. at 4–8.1 The

agency also notified plaintiff that it expected to send the records by November 20, 2023. Ex. 7 to

Compl. [Dkt. # 1-1] at 1.

After a period in which it did not received the agency’s revised spreadsheet, plaintiff

brought the instant suit on December 7, 2023. Compl. ¶ 1. On December 22, the agency released

the revised version of the spreadsheet with the special act and time-off awards unredacted, but it

continued to withhold the remaining entries – the rows reflecting performance bonus and

gainsharing awards – under Exemption 6. DSUMF ¶¶ 13–14; PSUMF ¶ 11; Pl.’s Resp. to DSUMF

¶ 13.

1 The Office of General Counsel affirmed the agency’s prior decision to deny plaintiff’s request for a fee waiver, but that denial is not at issue in this suit. DSUMF ¶ 11; Pl.’s Resp. to DSUMF ¶ 11. 4 STANDARD OF REVIEW

Summary judgment is appropriate “if the movant shows that there is no genuine dispute as

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