Renewal Services v. United States Patent and Trade Office

Filing 8

ORDER: The Motion to Dismiss (Dkt # 5 ) is granted. The Complaint is dismissed without prejudice. Signed by Judge William Q. Hayes on 6/29/2016. (All non-registered users served via U.S. Mail Service.) (mdc)

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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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RENEWAL SERVICES,

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vs.

CASE NO. 15cv1779 WQH
(DHB)

Plaintiff,

ORDER

UNITED STATES PATENT AND
TRADEMARK OFFICE,
Defendant.

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16 HAYES, Judge:
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The matter before the Court is motion to dismiss, or in the alternative, for
18 summary judgment (ECF No. 5) filed by the Defendant.
19 I.
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Procedural Background
On August 13, 2015, Plaintiff Renewal Services (“Renewal”) filed the Complaint

21 against Defendant United States Patent and Trademark Office (“USPTO”) pursuant to
22 the Freedom of Information Act (“FOIA”), 5 U.S.C. § 552. (ECF No. 1). On February
23 11, 2016, Defendant filed a motion to dismiss pursuant to Federal Rule of Civil
24 Procedure 12(b)(1) and 12(b)(6) or in the alternative, for summary judgment pursuant
25 to Federal Rule of Civil Procedure 56(c). (ECF No. 5). On March 7, 2016, Plaintiff
26 filed an opposition. (ECF No. 6). On March 14, 2016, Defendant filed a reply. (ECF
27 No. 7).
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15cv1779 WQH (DHB)

1 II.

Allegations of the Complaint

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Plaintiff filed this action “seeking the disclosure and release of agency records

3 . . . improperly withheld . . . by the United States Patent Office.” (ECF No. 1 at 1). In
4 a letter to the USPTO dated October 24, 2014, Plaintiff requested “documents
5 containing correspondence addresses, issuance date, and patent number for all patents
6 issued in on or after January 1, 2002” pursuant to the FOIA.1 (ECF No. 5-3 at 2).
7 Plaintiff stated in the letter,
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[P]ublic access to the requested information is technically possible via
your Patent Application Information Retrieval (PAIR) system. However,
the procedure has proven prohibitively cumbersome to enterprises such
as my client’s. In fact the current means required to pull this public
information from your system requires searchers to possess certain input
codes such as a patent number, control number, or a publication number.
...
Our client has engineered a valuable service already proven to efficiently
facilitate the periodic renewal of inventor’s patent licenses. This,
however, requires ready and efficient access to inventor’s correspondence
addresses. While the PAIR system is, unfortunately, useless to our client’s
business needs it does illustrate that the risk to inventors’ correspondence
address information will not be further impinged by our client’s practices.

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On November 13, 2014, in response to the October 24, 2014 letter, the USPTO

18 stated that it was not obligated to provide the requested information pursuant to the
19 FOIA. Id. at 7. The USPTO stated, “The United States Patent and Trademark Office
20 (USPTO) maintains that the records you seek are available in public patent application
21 files and not subject to a FOIA request. Because these files are indexed and open to
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The Court
notice of the letters between Plaintiff and
23 whose content are takes judicial Complaint and whose authenticity no party Defendant
alleged in the
questions.
The letters are attached to Defendant’s Motion to Dismiss or for Summary Judgment
24 (ECF No. 5). Under the doctrine of incorporation by reference, “[a] district court ruling
dismiss may consider documents whose
25 on a motion towhose authenticity no party questions, but contents are alleged in a
complaint and
which are not physically
attached to the plaintiff’s pleadings.” Parrino v. FHP, Inc., 146 F.3d 699, 705 (9th Cir.
26 1998) (internal quotation marks omitted). The “incorporation by reference” doctrine
27 has been extended “to situations in which the plaintiff’s claim depends on the contents
of a document, the defendant attaches the document to its motion to dismiss, and the
dispute the authenticity of the document,
the plaintiff does
28 parties do notallege the contents of that document in the even though Knievel v. ESPN,
not explicitly
complaint.”
393 F.3d 1068, 1076 (9th Cir. 2005).
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15cv1779 WQH (DHB)

1 public inspection pursuant to 5 U.S.C. § 552(a)(2), they are not available in response
2 to a FOIA request made under 5 U.S.C. § 552(a)(3).” Id.
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On March 9, 2015, in a letter to the USPTO, Plaintiff made another request for

4 the correspondence addresses of patent holders. Plaintiff stated,
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Our client’s present need arose subsequent to your office having
discontinued and eliminated, in October of 2010, the inclusion of an
inventor’s mailing address on patents and application publications. While
this was done in the interest of inventors’ privacy concerns, the public
interest in allowing our client access to this information outweighs any
risks to the privacy interests of patent holders. . . .
Public access to the names and addresses of individuals who have had
patents awarded is technically available via the US Patent Office
(“USPTO”)’s Patent Application and Information Retrieval (“PAIR”)
system. By pulling up individual files, any public user can see the initial
address used at the time the patent application was filed. Davis v. United
States Dep’t of Justice, 968 F.2d 1276, 1279 (D.C. Cir. 1992) (FOIA
exemptions cannot be used to shield information already in the “public
domain”). Moreover, the USPTO does provide bulk data that includes the
name, patent number, and city and state of the patent holder - the vast
majority of the information necessary to ascertain and contact patent
holders. The only information omitted from the bulk disclosure at this time
is the home address line and zip code.
Id. at 9-10.

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On April 7, 2015, the USPTO responded and denied Plaintiff’s request stating,

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The U.S. Patent and Trademark Office (USPTO) indexes and makes
available for public inspection and copying all files concerning issued
patents and published applications, as well as re-examination files. . . .
The USPTO’s indices include: (1) an index of patents by application
number, patent number, or control number; (2) an inventor’s index; and
(3) an index of assignor/assignees of patents. The documents you seek
would be found in these files. Inventor’s names and addresses are listed
in the Inventor’s Oath/Declaration of each issued patent and can be viewed
in public PAIR.

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22 (ECF No. 5-3 at 15).
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On May 6, 2015, Plaintiff filed an administrative appeal explaining that, the

24 USPTO’s “response does not address the . . . excessively onerous method for extracting
25 information, nor does it address the fact that addresses and zip codes are excluded from
26 the bulk data currently offered by the USPTO.” Id. at 18. Plaintiff stated, “Right now,
27 by pulling up individual files, any public user can see the initial address used at the time
28 the patent application was filed. Bulk data available through the USPTO, however
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15cv1779 WQH (DHB)

1 excludes the address and zip code related to patents.” Id. at 18.
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On June 5, 2015, Defendant denied the administrative appeal stating,

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The Freedom of Information Act, at 5 U.S.C. § 552(a)(3), requires Federal
agencies to make ‘records’ available to requestors. However, Section
552(a)(3)(A) exempts from that requirement ‘the records made available
under paragraphs (1) and (2) of this subsection,’ referring to Section
552(a)(1)and (2). As explained in the initial determination, the USPTO
‘indexes and makes available for public inspection and copying all files
concerning patents and published applications.’ You were specifically
advised: ‘Inventors’ names and addresses are listed in the Inventor’s
Oath/Declaration of each issued patent and can be viewed in public PAIR.’

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The information you have requested is contained in documents made
available to the public in public PAIR. Because the Agency publishes and
indexes documents pertaining to patents in public PAIR, those documents
fall within 5 U.S.C. § 552(a)(2). . . . Consequently, those public PAIR
records, which include within them the information that you have
requested, are not subject to further release under Section 552(a)(3).

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Id. at 22.
The Complaint asserts that Plaintiff has the right to the “prompt access to the
requested records under 5 U.S.C. § 552(a)(3)(A)” and that “[t]he USPTO has
wrongfully withheld the sought-after records from Plaintiff.” (ECF No. 1 at 4).
Plaintiff requests that this Court “order Defendant to disclose requested records in their
entireties and make electronic copies available to Plaintiff.” Id at 4.
III.

Legal Standards
Federal Rule of Civil Procedure 12(b)(6) permits dismissal for “failure to state

a claim upon which relief can be granted.” Fed. R. Civ. P. 12(b)(6). Federal Rule of
Civil Procedure 8(a) provides that “[a] pleading that states a claim for relief must
contain ... a short and plain statement of the claim showing that the pleader is entitled
to relief.” Fed. R. Civ. P. 8(a)(2). “A district court’s dismissal for failure to state a
claim under Federal Rule of Civil Procedure 12(b)(6) is proper if there is a ‘lack of a
cognizable legal theory or the absence of sufficient facts alleged under a cognizable
legal theory.’” Conservation Force v. Salazar, 646 F.3d 1240, 1242 (9th Cir. 2011)
(quoting Balistreri v. Pacifica Police Dep’t, 901 F.2d 696, 699 (9th Cir. 1990)).
“To survive a motion to dismiss, a complaint must contain sufficient factual
matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’”
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15cv1779 WQH (DHB)

1 Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Twombly, 550 U.S. at 570). “A
2 claim has facial plausibility when the plaintiff pleads factual content that allows the
3 court to draw the reasonable inference that the defendant is liable for the misconduct
4 alleged.” Id. (citation omitted). “[T]he tenet that a court must accept as true all of the
5 allegations contained in a complaint is inapplicable to legal conclusions. Threadbare
6 recitals of the elements of a cause of action, supported by mere conclusory statements,
7 do not suffice.”

Id. (citation omitted).

“When there are well-pleaded factual

8 allegations, a court should assume their veracity and then determine whether they
9 plausibly give rise to an entitlement to relief.” Id. at 679. “In sum, for a complaint to
10 survive a motion to dismiss, the non-conclusory factual content, and reasonable
11 inferences from that content, must be plausibly suggestive of a claim entitling the
12 plaintiff to relief.” Moss v. U.S. Secret Serv., 572 F.3d 962, 969 (9th Cir. 2009)
13 (quotations and citation omitted).
14 IV. Contentions of the Parties
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Defendant moves to dismiss the Complaint for lack of subject matter jurisdiction

16 and failure to state a claim, or, in the alternative, for summary judgment. Defendant
17 contends that the information requested in the Complaint is publicly available and
18 indexed, in full compliance with § 552(a)(2) through the PAIR system. Defendant
19 contends that it has no obligation under the FOIA to make additional accommodations
20 pursuant to § 552(a)(3) so that Plaintiff’s access to the publicly available information
21 is less cumbersome. Defendant further asserts that the addresses for all patent holders
22 are publically available and indexed in compliance with the FOIA and that the agency
23 has no obligation to provide the same information in bulk data.
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Plaintiff contends that it has properly stated a FOIA claim by pleading that the

25 PAIR system has an excessively onerous method for extracting information and that the
26 USPTO’s withholding of correspondence addresses in bulk data is improper. Plaintiff
27 contends that the privacy concerns of inventors are not sufficient for the Defendant to
28 withhold the addresses from the bulk data. Plaintiff contends that Defendant is required
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15cv1779 WQH (DHB)

1 to release records in a less cumbersome manner pursuant to 5 U.S.C. § 552(a)(3).
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In reply, Defendant contends that the agency has fully disclosed the requested

3 information under § 552 (a)(2) and that § 552 (a)(3) which requires agencies to provide
4 records in “any form or format requested” is inapplicable. 5 U.S.C. § 552(a)(3)(B).
5 Defendant asserts that it is not withholding the correspondence addresses based upon
6 privacy concerns because the addresses are publically available through public access
7 to the PAIR.
8 V. Applicable Law
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The FOIA is a federal statute that sets forth the procedures and standards for

10 public release of executive agency records. 5 U.S.C. § 552. FOIA serves the purpose
11 of promoting transparency between the public and the actions taken by government
12 agencies. See United States Dep’t of Justice v. Reporters Comm. For Freedom of Press,
13 489 U.S. 749, 772 (1989) (explaining that the purpose of the FOIA is to “open agency
14 action to the light of public scrutiny” (internal quotation omitted)).
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FOIA requires agencies to make certain records available for public inspection,

16 without a request pursuant to 5 U.S.C. § 552(a)(2). FOIA further includes provisions
17 for the public to request specific records pursuant to § 552(a)(3) when the information
18 is not already public pursuant to§ 552(a)(2). 5 U.S.C. § 552(a)(3) states in relevant
19 part, “Except with respect to the records made available under paragraph (1) and (2) of
20 this subsection, ... each agency, upon any request for records . . . shall make the records
21 promptly available to any person.” 5 U.S.C. § 552(a)(3)(A).
22 VI. Ruling of the Court
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“[F]ederal jurisdiction [pursuant to § 552(a)(4)(B)] is dependent upon a showing

24 that an agency has (1) ‘improperly’; (2) ‘withheld’; (3) ‘agency records.’” Kissinger v.
25 Reporters Committee for Freedom of the Press, 445 U.S. 136, 150 (1980). In this case,
26 the Complaint alleges that access to the requested information is “possible via the
27 USPTO’s Patent Application Information Retrieval (“PAIR”) system.” (ECF No. 1 at
28 2). The Complaint contains factual allegations that PAIR contains correspondence
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15cv1779 WQH (DHB)

1 addresses, issuance dates and patent numbers for patents issued. The Complaint
2 contains factual allegations that the information in the PAIR system is indexed using
3 patent numbers, application numbers, and control numbers. (ECF No. 5-3 at 15). The
4 facts alleged in the Complaint show that the requested information is available for
5 public inspection, without a request, as required by § 552(a)(2).
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5 U.S.C. § 552(a)(3) specifically provides that the agency need not respond to a

7 § 552(a)(3) request for information when the same information is indexed and made
8 public pursuant to the guidelines of § 552(a)(2). See United States Dep’t of Justice v.
9 Tax Analysts, 492 U.S. 136, 152 (1989) ( “Under subsection (a)(3), the general
10 provision covering the disclosure of agency records, an agency need not make available
11 those materials that have already been disclosed under subsections (a)(1) and (a)(2).”)
12 and Leeds v. Commissioner of Patents and Trademarks, 955 F.2d 757, 763 (D.C. Cir.
13 1992) (“Because Rule 109 statements are already available under § 552(a)(2), they are
14 specifically exempted from the category of documents that must be produced upon
15 request under § 552(a)(3).”). Since the allegations of the Complaint in this case
16 establish that Defendant has made the requested records publicly available and indexed,
17 through electronic means, there are no facts alleged which would support the claim that
18 the requested information is “improperly withheld” pursuant to 5 U.S.C. § 552(a)(3).
19 Plaintiff has failed to allege facts or law which would support a claim that Defendant
20 has improperly withheld bulk data information under the FOIA. The Complaint alleges
21 facts which establish that the correspondence addresses are publicly available under §
22 552(a)(2), and the Complaint fails to allege facts which support a claim that the
23 correspondence addresses in the bulk data information is “improperly withheld”
24 pursuant to 5 U.S.C. § 552. Plaintiff’s contention that privacy exemptions cannot
25 justify the withholding of the addresses and zip codes from the bulk data is not
26 applicable under the facts alleged in this Complaint. Exemptions only apply when there
27 is a withholding of information. In this case, the facts alleged do not support a claim
28 that the information is improperly withheld. See Tax Analysts 492 U.S. at 150
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1 (“Congress used the word ‘withheld’ only ‘in its usual sense.’”). When the requested
2 materials are made publicly available by the agency itself, the information is not
3 withheld.
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The Court concludes that the Complaint fails to allege facts to plausibly support

5 a claim that Defendant has improperly withheld information under the FOIA, 5 U.S.C.
6 § 552 .
7 V.

Conclusion

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IT IS HEREBY ORDERED that the Motion to Dismiss (ECF No. 5) is

9 GRANTED. The Complaint is DISMISSED without prejudice.
10 DATED: June 29, 2016
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WILLIAM Q. HAYES
United States District Judge

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