HUNTINGTON v. U.S. DEPARTMENT OF COMMERCE

Filing 20

MEMORANDUM OPINION re 19 Order on 11 , 14 Cross-Motions for Summary Judgment. Signed by Judge James E. Boasberg on 1/18/2017. (lcjeb3)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA

R. DANNY HUNTINGTON,
Plaintiff,
v.

Civil Action No. 15-2249 (JEB)

U.S. DEPARTMENT OF COMMERCE,
Defendant.

MEMORANDUM OPINION
Plaintiff R. Danny Huntington, an intellectual-property attorney, wants to know more
about a recently scrapped confidential program of the U.S. Patent and Trademark Office
(USPTO) to flag certain patent applications as involving particularly sensitive subject matter. He
believes that applications pulled into the secret program’s ambit were kept pending far longer
than those permitted to proceed normally. See ECF No. 11-2 (Declaration of R. Danny
Huntington), ¶ 17. In pursuit of his suspicions, Huntington submitted several Freedom of
Information Act requests to the USPTO, a component of Defendant U.S. Department of
Commerce. After the USPTO searched for responsive records, produced some, and withheld
others, Plaintiff administratively appealed and eventually filed suit here. Both sides now move
for summary judgment. The Court concludes that an issue of material fact exists as to whether
Defendant conducted adequate searches, but it finds that the USPTO did appropriately withhold
responsive documents under FOIA Exemption 5. The Court will, therefore, largely deny each
party’s Motion.

1

I.

Background
In the typical process, a patent application submitted to the USPTO is assigned to a patent

examiner in one of nine Technology Centers, each of which deals with a particular area of
technology. See ECF No. 14-4 (Declaration of John Ricou Heaton), ¶ 19. The patent examiner
assesses the application and reviews it for compliance with legal requirements. Id. If they are
met, the USPTO will grant the patent by issuing a Notice of Allowance. Id., ¶¶ 19-20.
In 1994, the Office introduced a new program called the Sensitive Application Warning
System (SAWS), which “allow[ed] patent examiners to alert leadership when a patent might
issue on a sensitive matter.” Id., ¶ 21. The SAWS program “was integrated” into the regular
patent-application review process: upon receiving an application for review, a patent examiner
considered whether it should be included in the program based on “subject matter criteria” that
varied by Technology Center. Id. Such criteria included, for example, whether the application
“would potentially generate unwanted media coverage”; had “pioneering scope”; was “[s]illy or
extremely basic”; posed a danger to individuals, the environment, or national security;
“appear[ed] to violate the laws of chemistry or physics”; involved “[c]ontroversial, [i]llegal,
objectionable, or derogatory subject matter”; or specifically invoked race. See ECF No. 11-4,
Exh. 2-3 at B-89.
Inclusion in the SAWS program did not itself determine whether a patent application
would ultimately be granted or denied. See ECF No. 18 (Supplemental Declaration of John
Ricou Heaton), ¶ 9. It could, however, trigger “an internal quality assurance check,” which
would be conducted using “the same substantive standards of patentability as all other
applications.” Heaton Decl., ¶ 22. If an application referred to the SAWS program was
ultimately granted by a patent examiner, before a Notice of Allowance would be mailed to the

2

applicant, the USPTO would prepare a SAWS report that described the invention and explained
why the application was considered sensitive. Id. The report would be forwarded to a
Technology Center Director, who would decide whether the Commissioner for Patents Office
should be notified. Id., ¶¶ 19, 22. That an application had been flagged for SAWS review was
never disclosed to the applicant or the public, as the agency believed that doing so risked
coloring the public’s view of the application and giving rise to “unjustified inferences as to the
issued patent’s strength and weakness.” Id., ¶ 22 (citation omitted).
The USPTO retired the SAWS program in March 2015. Id. Approximately 0.04% of the
total number of patent applications filed were referred to the SAWS program during its
operation. Id., ¶ 21.
During the first half of 2015, Huntington submitted several FOIA requests to the USPTO
seeking records related to the SAWS program. He submitted the first such request — assigned
Request No. F-15-00107 and referred to by the parties as R1 — in February 2015. See ECF No.
11-4, Exh. 2-1. That request sought: (1) the biannual SAWS update, including documents
relating to any SAWS procedures and statutory bases for the program; (2) documents “directing,
instructing, or specifying the action(s) to be taken upon receiving a notification that ‘an
allowance of a SAWS application is mistakenly mailed prior to the SAWS report’”; (3)
information pertaining to complete SAWS reports; and (4) information pertaining to forwarded,
non-forwarded, and removed SAWS reports. Id. In response, the USPTO released to Plaintiff
118 pages of responsive documents, some portions of which were redacted pursuant to
Exemption 5. Id., Exh. 2-2 at B002. Huntington then filed an administrative appeal, which the
USPTO denied. Id., Exhs. 2-3, 2-4.

3

In April 2015, Huntington submitted three additional FOIA requests. See ECF No. 11-5,
Exhs. 3-1, 3-2, 3-3. The USPTO consolidated them into one request, assigned Request No. F15-00190. See Heaton Decl., ¶ 9-10. The first portion (R3) sought certain information on patent
applications designated, flagged, or grouped under the SAWS program, including their filing
dates. See ECF No. 11-5, Exh. 3-1. (The identifier R2 never appears in the record.) The second
portion (R4) sought “manuals, instructions, training material, screen-shots, or records” relating to
“the ‘flagging’ and ‘unflagging’ of SAWS Applications” and “the exportation of data or
generation of reports pertaining to SAWS Applications”; “records, reports, or emails providing
summary reports . . . on SAWS applications by Technology Centers”; and, separated by
Technology Center, information on SAWS applications for applicants claiming micro-entity,
small-entity, and large-entity status. Id., Exh. 3-2. Finally, the third portion (R5) sought “all
communication records concerning Kimberly Jordan becoming the Board [of Patent Appeals’]
SAWS Point of Contact”; “all communications, letters, memoranda, or emails concerning the
SAWS program sent to the Board’s personnel including to Administrative Patent Judges . . .
since 1994 which contain any alerts to the SAWS program or explanations or instructions for
how APJs should use or consider SAWS flag information or the SAWS memoranda”; and “all
post-decisional communications, letters, memoranda, or emails concerning the retirement of the
SAWS program or instructions . . . of tasks and procedures for terminating or winding down the
SAWS program.” Id., Exh. 3-3.
Upon receiving Request No. F-15-00190, the USPTO informed Huntington that the
processing fees would be approximately $5,307.55. Id., Exh. 3-4 at 1. Plaintiff pledged to pay
$250 to cover the cost of R3 and asked for a breakdown of the fees for R4 and R5. Id., Exh. 3-6.
In July 2015, the USPTO issued a final response letter to Huntington for R3, explaining that it

4

had located responsive records but was withholding them in full pursuant to Exemption 5. Id.,
Exh. 3-8. Plaintiff filed an administrative appeal, which was denied. Id., Exhs. 3-9, 3-10. He
then sent another letter to the USPTO’s FOIA Office, explaining that he remained interested in
his R4 and R5 requests. Id., Exh. 3-11. The USPTO subsequently designated those requests
No. F-16-00037. See ECF No. 1 (Complaint), ¶ 32.
After several months of back-and-forth correspondence between the parties, Plaintiff
filed the present action in December 2015, alleging Defendant had failed both to conduct an
adequate search and to produce responsive records. See Complaint, ¶¶ 34-43. The USPTO then
undertook “a more thorough subsequent search,” Heaton Decl., ¶ 23, and, via six different
response letters, released 4,114 pages and five spreadsheets of material, of which one document
was redacted in full and 132 pages of 59 documents were redacted in part pursuant to
Exemptions 3, 5, and 6. Id., ¶¶ 44-50.
Contending that Defendant’s search remains inadequate and that certain records were still
improperly withheld, Huntington moved for summary judgment. See ECF No. 11 (Pl. Mot.).
Defendant, conversely, believes it has satisfied its FOIA obligations and thus cross-moved for
summary judgment. See ECF No. 14 (Def. Mot.). Those Motions are now ripe.
II.

Legal Standard
Summary judgment may be granted if “the movant shows that there is no genuine dispute

as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
56(a). A fact is “material” if it is capable of affecting the substantive outcome of the litigation.
See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute is “genuine” if the
evidence is such that a reasonable jury could return a verdict for the nonmoving party. See Scott
v. Harris, 550 U.S. 372, 380 (2007); Liberty Lobby, 477 U.S. at 248. “A party asserting that a

5

fact cannot be or is genuinely disputed must support the assertion” by “citing to particular parts
of materials in the record” or “showing that the materials cited do not establish the absence or
presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to
support the fact.” Fed. R. Civ. P. 56(c)(1). The moving party bears the burden of demonstrating
the absence of a genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323
(1986). In the event of conflicting evidence on a material issue, the Court is to construe the
conflicting evidence in the light most favorable to the non-moving party. See Sample v. Bureau
of Prisons, 466 F.3d 1086, 1087 (D.C. Cir. 2006).
FOIA cases typically and appropriately are decided on motions for summary judgment.
See Brayton v. Office of U.S. Trade Rep., 641 F.3d 521, 527 (D.C. Cir. 2011). In a FOIA case, a
court may grant summary judgment based solely on information provided in an agency’s
affidavits or declarations when they “describe the justifications for nondisclosure with
reasonably specific detail, demonstrate that the information withheld logically falls within the
claimed exemption, and are not controverted by either contrary evidence in the record nor by
evidence of agency bad faith.” Larson v. Dep’t of State, 565 F.3d 857, 862 (D.C. Cir. 2009)
(citation omitted). “Unlike the review of other agency action that must be upheld if supported by
substantial evidence and not arbitrary or capricious, the FOIA expressly places the burden ‘on
the agency to sustain its action’ and directs the district courts to ‘determine the matter de novo.’”
Dep’t of Justice v. Reporters Comm. for Freedom of the Press, 489 U.S. 749, 755 (1989)
(quoting 5 U.S.C. § 552(a)(4)(B)).
III.

Analysis
Congress enacted FOIA in order “to pierce the veil of administrative secrecy and to open

agency action to the light of public scrutiny.” Dep’t of the Air Force v. Rose, 425 U.S. 352, 361

6

(1976) (quotation marks and citation omitted). “The basic purpose of FOIA is to ensure an
informed citizenry, vital to the functioning of a democratic society, needed to check against
corruption and to hold the governors accountable to the governed.” John Doe Agency v. John
Doe Corp., 493 U.S. 146, 152 (1989) (citation omitted). The statute provides that “each agency,
upon any request for records which (i) reasonably describes such records and (ii) is made in
accordance with published rules . . . shall make the records promptly available to any person.” 5
U.S.C. § 552(a)(3)(A). Consistent with this statutory mandate, federal courts have jurisdiction to
order the production of records that an agency improperly withholds. See id. § 552(a)(4)(B);
Reporters Comm., 489 U.S. at 754-55. “At all times courts must bear in mind that FOIA
mandates a ‘strong presumption in favor of disclosure.’” Nat’l Ass’n of Home Builders v.
Norton, 309 F.3d 26, 32 (D.C. Cir. 2002) (quoting Dep’t of State v. Ray, 502 U.S. 164, 173
(1991)).
In the course of their briefing, the parties have helpfully narrowed the issues in this
dispute to two: (1) the adequacy of the USPTO’s search for responsive records, and (2) the
propriety of its withholding certain records in whole or in part pursuant to Exemption 5. In other
words, Plaintiff no longer challenges the applicability of Exemptions 3 or 6 to any of the records
at issue. Compare Pl. Mot. at 1 n.1, with ECF No. 15 (Pl. Opposition) at 1 n.1. In addition, the
Court considers only the specific challenges Plaintiff raises to Defendant’s search.
Although the Department of Commerce also contends that it is not the proper Defendant
in this action, and that Huntington should instead have sued the USPTO, it only raised that
argument in a brief footnote and failed to discuss it in its Reply. See Def. Mot. at 1 n.1. The
Court thus considers the issue forfeited. Gold Reserve Inc. v. Bolivarian Republic of Venezuela,
146 F. Supp. 3d 112, 126-27 (D.D.C. 2015) (holding “obliquely” raising issue in footnote

7

insufficient to surmount waiver threshold); see also Hutchins v. Dist. of Columbia, 188 F.3d 531,
539 n.3 (D.C. Cir. 1999) (en banc) (explaining courts “need not consider cursory arguments
made only in a footnote”); Johnson v. Panetta, 953 F. Supp. 2d 244, 250 (D.D.C. 2013)
(“[P]erfunctory and underdeveloped arguments, and arguments that are unsupported by pertinent
authority, are deemed waived.”). The Court now addresses in turn the two issues before it.
A. Adequacy of Search
“An agency fulfills its obligations under FOIA if it can demonstrate beyond material
doubt that its search was ‘reasonably calculated to uncover all relevant documents.’” ValenciaLucena v. Coast Guard, 180 F.3d 321, 325 (D.C. Cir. 1999) (quoting Truitt v. Dep’t of State, 897
F.2d 540, 542 (D.C. Cir. 1990)); see also Steinberg v. Dep’t of Justice, 23 F.3d 548, 551 (D.C.
Cir. 1994). The adequacy of an agency’s search for documents under FOIA “is judged by a
standard of reasonableness and depends, not surprisingly, upon the facts of each case.”
Weisberg v. Dep’t of Justice, 745 F.2d 1476, 1485 (D.C. Cir. 1984). Adequacy “is generally
determined not by the fruits of the search, but by the appropriateness of the methods used to
carry out the search.” Iturralde v. Comptroller of Currency, 315 F.3d 311, 315 (D.C. Cir. 2003)
(emphasis added) (citation omitted).
To meet its burden, the agency may submit affidavits or declarations that explain the
scope and method of its search “in reasonable detail.” Perry v. Block, 684 F.2d 121, 127 (D.C.
Cir. 1982). The affidavits or declarations should “set[] forth the search terms and the type of
search performed, and aver[] that all files likely to contain responsive materials (if such records
exist) were searched.” Oglesby v. Dep’t of Army, 920 F.2d 57, 68 (D.C. Cir. 1990). Without
contrary evidence, such affidavits or declarations are sufficient to show that an agency complied
with FOIA. See id. On the other hand, if the record “leaves substantial doubt as to the

8

sufficiency of the search, summary judgment for the agency is not proper.” Truitt, 897 F.2d at
542.
To establish the sufficiency of its search here, Defendant submitted two declarations from
John Ricou Heaton, who serves as an Associate Counsel for the Office of General Law and a
FOIA officer at the USPTO. See Heaton Decl., ¶ 1. Heaton explains the steps the USPTO took
to search for responsive records. First, in response to F-15-00107 (R1) and F-15-00190/F-160037 (R4, R5), the agency identified the Office of the Commissioner for Patents, eleven of its
subordinate offices, and the Office of the Deputy Commissioner for Patent Examination Policy
“as being reasonably likely to have records responsive to both of these requests.” Id., ¶ 23.
Heaton describes the responsibilities of those offices as they related to the SAWS program and
states that personnel searched a SharePoint site created as “a repository of SAWS-related
documentation for all of the [Technology Centers],” “dedicated folders for SAWS-related emails
. . . or documents” on work laptops, a “Shared network drive,” and paper files. Id., ¶¶ 23-33. All
of the electronic files were searched using certain keywords. Id.
In response to Huntington’s Request F-15-00190 seeking a list of filing dates for SAWS
applications (R3) and the numbers of SAWS applications that had been issued, abandoned, or
were pending by entity status (R4), Defendant “contact[ed] staff at the Patent Planning and Data
Analysis office” to obtain records from the Patent Application Locating and Monitoring System
(PALM). Id., ¶ 34. In addition to providing background on how the USPTO used PALM to
track flagged applications, Heaton explains that lists of filing dates were pulled for the end of
fiscal year 2010 and March 2, 2015, but were not pulled for the earlier years Huntington
requested because PALM did not retain such data prior to April 2010. Id., ¶¶ 35-37.

9

As to Huntington’s request for records relating to the flagging and unflagging of SAWS
applications (R4), the exportation of data or generation of reports pertaining to SAWS
applications (R4), Kimberly Jordan’s becoming the SAWS point of contact at the Patent Trial
and Appeal Board (R5), and communications to Patent Trial and Appeal Board (PTAB)
personnel about how administrative patent judges should use or consider SAWS flag information
(R5), Defendant searched within the Office of Patent Information Management (OPIM) and the
PTAB because they “were identified as offices reasonably likely to have responsive records.”
Id., ¶ 39. OPIM “staff identified two internal websites, one a repository of information used by
OPIM staff and the other a PALM Management Report website, along with an OPM staff
member’s emails, as locations where SAWS records would be stored electronically,” and
searched them using certain terms. Id., ¶ 40. They “did not identify any paper files as locations
where SAWS-related records would be stored.” Id. PTAB staff used the same terms to search
work laptops and emails, and similarly identified no paper files. Id., ¶ 41.
Finally, in an additional search for records related to R1, Defendant contacted the Cyber
Security Investigations (CSI) Office to see if it maintained any electronic records for specific
employees who had been involved with SAWS before leaving the USPTO because CSI
“maintains emails and/or documents for some departing employees.” Id., ¶ 43. CSI had some
memos, emails, and imaged copies of documents from work laptops and network drives, which
were searched with key terms. Id.
In assessing whether Defendant has “demonstrate[ed] beyond material doubt that its
search was ‘reasonably calculated to uncover all relevant documents,’” and thus has “fulfill[ed]
its obligations under FOIA,” Valencia-Lucena, 180 F.3d at 325 (quoting Truitt, 897 F.2d at 542),
the Court considers the three issues Huntington raises: (1) whether the agency’s account of its

10

search is facially flawed; (2) whether the search suffers from specific deficiencies; and (3)
whether countervailing evidence demonstrates that the scope of the search was too narrow.
1. Facial Deficiency
Although Heaton’s declarations span forty pages, not including exhibits, and include a
commendable amount of detail, the Court is constrained to conclude that the agency’s account of
its search is nonetheless facially flawed. To satisfy the dictates of FOIA, the Department must,
at a minimum, “aver that it has searched all files likely to contain relevant documents.” Am.
Immigration Council v. Dep’t of Homeland Sec., 21 F. Supp. 3d 60, 71 (D.D.C. 2014) (quoting
Am. Immigration Council v. Dep’t of Homeland Sec., 950 F. Supp. 2d 221, 230 (D.D.C. 2013))
(emphasis added). As the D.C. Circuit explained in Oglesby, while an agency need not search
every one of its record systems, a “reasonably detailed affidavit . . . averring that all files likely
to contain responsive materials . . . were searched[] is necessary to afford a FOIA requester an
opportunity to challenge the adequacy of the search and to allow the district court to determine if
the search was adequate in order to grant summary judgment.” 920 F.2d at 68.
“Where the government has not made such an attestation, courts have typically found that
an issue of material fact exists as to the adequacy of the search.” Am. Immigration Council, 21
F. Supp. 3d at 71 (internal quotation marks and citation omitted). In Jefferson v. Bureau of
Prisons, No. 05-848, 2006 WL 3208666 (D.D.C. Nov. 7, 2006), for example, the court found the
FBI’s search inadequate because its declaration did not “aver that the FBI searched all files likely
to contain responsive records.” Id. at *6; see also Bonaparte v. Dep’t of Justice, 531 F. Supp. 2d
118, 122 (D.D.C. 2008) (same); Maydak v. Dep’t of Justice, 362 F. Supp. 2d 316, 326 (D.D.C.
2005) (same).

11

Here, similarly, Defendant has failed to invoke “the ‘magic words’ concerning the
adequacy of the search — namely, the assertion that [the Department] searched all locations
likely to contain responsive documents.” Bartko v. Dep’t of Justice, 167 F. Supp. 3d 55, 64
(D.D.C. 2016). It has stated only that it “identified offices reasonably likely to have responsive
information and those offices conducted a reasonable search for responsive records.” Def. Mot.
at 16; see also Heaton Decl., ¶ 75 (“[T]he USPTO conducted a search of the offices reasonably
likely to have the records sought by all of these request indices . . . .”). Such attestations may
come close, but they ultimately do not pass muster. See Oglesby, 920 F.2d at 68 (finding search
deficient notwithstanding agency’s assertion that “a search was initiated of the Department
record system most likely to contain the information which had been requested”); Am.
Immigration Council, 21 F. Supp. 3d at 71 (deeming declaration inadequate despite agency’s
claim that it searched the offices “most likely to possess records responsive to [Plaintiff’s]
request”).
In the absence of an affidavit containing the specific assertion that the USPTO searched
all locations likely to contain responsive documents, the Court must conclude that a genuine
issue of material fact remains as to whether the agency’s efforts were sufficient.
2. Specific Objections
Huntington also raises multiple specific objections to Defendant’s search. Although the
Court is denying summary judgment on the ground just explained, it believes that a discussion of
these objections may provide guidance to the parties for their next round.
Plaintiff first contends that, although Defendant states that emails in various offices were
searched, see Heaton Decl., ¶¶ 28-31, 33, 40-41, 43, it does not explain whether such searches
were done on individual computers or an agency email system, or how the agency email system

12

is structured, including whether emails can be archived and subsequently searched or destroyed.
See Pl. Opp. at 3. Heaton, however, rectifies this omission in his supplemental declaration. See
Suppl. Heaton Decl., ¶ 6 (explaining how USPTO stores and accesses email files, and clarifying
“no separate archived version of emails” exists). Heaton likewise responds to Huntington’s note
that the agency did not disclose “the time periods covered by the records searched.” Pl. Opp. at
3; Suppl. Heaton Decl., ¶ 3 (offices used dates set forth in Plaintiff’s requests to conduct
searches).
Huntington next asserts that Defendant offers “no discussion of how any other records
are archived by the PTO.” Pl. Opp. at 3. He speculates that because the SAWS program was
established in the mid-1990s, “[t]he computers, servers and other electronic systems used by the
PTO today are not likely to retain all responsive documents,” and he faults the agency for failing
to “discuss what happened to these older records, how they were archived and if they were
ultimately destroyed,” and “what happened to hard drives from computers no longer being used
that would have maintained responsive records.” Id. But the “‘presumption of good faith’”
accorded to an agency’s affidavits and declarations describing its search “cannot be rebutted by
‘purely speculative claims about the existence and discoverability of other documents.’”
SafeCard Servs., Inc. v. SEC, 926 F.2d 1197, 1200 (D.C. Cir. 1991) (quoting Ground Saucer
Watch, Inc. v. CIA, 692 F.2d 770, 771 (D.C. Cir. 1981)). Huntington may hypothesize, for
example, that the USPTO lacked electronic systems in the mid-1990s and has not digitized its
paper records from that time, or that it had electronic records systems but the records stored
therein were not transferred to more current systems. Yet he offers no evidence to support those
or other suppositions. Without any evidence that the USPTO’s current electronic systems do not
contain older records, the Court will not require the agency to describe documents, systems, or

13

equipment that may or may not have once existed and their status now, nor will it infer
inadequacy from the absence of such information in Defendant’s declarations.
Additionally, Plaintiff points out that the declarations omit the names, positions, and
subject-matter expertise of the staff members who conducted the search, as well as “signed
search logs or other documentation . . . to corroborate the purported searches made by staff
members.” Pl. Opp. at 3. The Court, however, is unsure why the identities or backgrounds of
the personnel executing the search is of use to Plaintiff, see Leopold v. CIA, 177 F. Supp. 3d
479, 491 (D.D.C. 2016), and he provides no authority — nor is the Court aware of any — to
support the argument that an agency must supply such information or include signed search logs.
Next, and more fruitfully, Huntington identifies several ways in which Defendant’s
description of its search lacks the requisite specificity. He first focuses on Heaton’s description
of the search undertaken in the Office of Patent Training:
[P]ersonnel identified a Shared network drive and work laptops and
emails as locations where SAWS records would be stored
electronically. No paper files were identified as being a location
where SAWS material would be located. The Shared network drive,
work laptops, and emails were searched with the keyword “SAWS”
and a dedicated SAWS folder on the Shared drive was also searched.
Heaton Decl., ¶ 30. The Court agrees that this account does not constitute “[a] reasonably
detailed” description of “the type of search performed.” Oglesby, 920 F.2d at 68. It leaves open
to question how many work laptops and emails were searched, why those locations but not others
were thought to be reasonably likely to contain responsive records, and how the agency
concluded that no paper files had responsive records. Cf. Wright v. Admin. for Children &
Families, 2016 WL 5922293, at *7 (D.D.C. Oct. 11, 2016) (concluding agency “sufficiently
described the manner in which email accounts were searched, noting,” inter alia, number of
mailboxes searched and to whom they belonged). Heaton’s declaration is similarly vague as to
14

email searches undertaken in the nine Technology Centers, the Office of Patent Legal
Administration, the Office of Patent Training, the Office of the Deputy Commissioner for Patent
Examination Policy, and the Patent Trial and Appeal Board. See Heaton Decl., ¶¶ 29-30, 33, 41;
Pl. Opp. at 5-6. Although the declaration states that certain personnel in each office searched
their emails, it does not make clear how many personnel did so, what their positions were, or
why those accounts were searched but others were not. “Without any further information on the
search regarding these [records], the Court cannot conclude that it ‘was reasonably calculated to
uncover all relevant documents.’” Elkins v. Fed. Aviation Admin., 99 F. Supp. 3d 90, 97
(D.D.C. 2015) (quoting Valencia-Lucena, 180 F.3d at 325).
Huntington raises one final issue, which requires some background explanation. In
response to the requests for a list of filing dates for SAWS applications and the numbers of
SAWS applications, Defendant explains that responsive records were obtained from the Patent
Application Locating and Monitoring System (PALM), which the USPTO uses “for the retrieval
and/or online updating of each patent application.” Heaton Decl., ¶ 35. That system works as
follows: Within PALM, a patent application can be given a temporary flag or “placed into a
‘grouping,’ which is a more permanent record.” Id. Once a temporary flag is changed or
removed, PALM does not retain any information about the flag. Id. In contrast, when an
application is placed into a grouping, PALM does keep information about that grouping even if
the application is later removed from the grouping or the grouping is abolished. Id.
In April 2010, the USPTO began tracking SAWS applications in PALM by putting them
into a grouping. Id., ¶ 36. Previously, SAWS applications were tracked only with temporary
flags. Id. PALM thus can be used, Heaton explains, to electronically generate lists of SAWS
applications, including their filing dates, from the end of fiscal year 2010 onward. Id. Defendant

15

thus produced the requested lists for 2010 and 2015, but asserts it cannot do not so for the earlier
years because there was no electronic or centralized list of SAWS applications until the USPTO
began tracking them with a grouping in PALM. Id., ¶¶ 37-38.
Huntington, however, had sought a list of filing dates for SAWS applications pending at
the end of fiscal years 1998, 2002, 2006, 2010, and March 2, 2015. See ECF No. 11-5, Exh. 3-1.
His qualm with the agency’s explanation for its failure to produce lists for 1998, 2002, and 2006
is that the USPTO “does not assert that there are no archived versions of the PALM database that
would still contain snapshot images of the PALM database with the flags active at the time of the
snapshot and therefore provide responsive information.” Pl. Opp. at 6-7. Heaton, however,
asserts exactly that in his supplemental declaration. The PALM database is periodically backed
up with tapes, which are kept for sixty days and then erased for reuse. See Suppl. Heaton Decl.,
¶ 7. “[T]here is no separate ‘archived’ version of PALM as it existed in 2010 or some date prior
to that.” Id. Contrary to Plaintiff’s argument, then, “[t]he failure to search archived versions of
the PALM database” — which do not exist — does not “render[] the search for these records
inadequate.” Pl. Opp. at 7.
In sum, although the majority of Huntington’s specific objections to the agency’s claim to
have conducted an adequate search fall flat, the Court agrees that in some respects Defendant
failed to proffer a reasonably detailed description of the search. This should offer some
assistance to both sides going forward.
3. Countervailing Evidence
Finally, Plaintiff recounts several categories of records he expected to be found in
response to his FOIA requests but in fact were not. See Pl. Mot. at 13-20. In general, identifying
a handful of documents that an agency fails to uncover does not, in itself, demonstrate that a

16

search was inadequate. See Boyd v. Dep’t of Justice, 475 F.3d 381, 391 (D.C. Cir. 2007)
(“[T]he fact that a particular document was not found does not demonstrate the inadequacy of a
search.”); Wilbur v. CIA, 355 F.3d 675, 678 (D.C. Cir. 2004) (“[T]he agency’s failure to turn up
a particular document . . . does not undermine the determination that the agency conducted an
adequate search for the requested records.”). The “adequacy of a FOIA search is generally
determined not by the fruits of the search, but by the appropriateness of the methods used to
carry out the search. After all, particular documents may have been accidentally lost or
destroyed, or a reasonable and thorough search may have missed them.” Iturralde, 315 F.3d at
315 (citations omitted); see Porter v. CIA, 778 F. Supp. 2d 60, 69 (D.D.C. 2011).
Nor is the government required to examine every document that is merely crossreferenced by the records that have been reviewed. In Steinberg, the plaintiff complained that
the government had not examined six files that were mentioned in several disclosed documents.
See 23 F.3d at 552. The D.C. Circuit held that FOIA does not require agencies to track down
every cross-referenced record in the documents it examines: “[M]ere reference to other files does
not establish the existence of documents that are relevant to appellant’s FOIA request.” Id.
Courts admittedly have sometimes found that the government’s failure to hand over
specific documents indicates that a search was inadequate. But these cases tend to involve
instances where the existence of a given document indicates that the agency failed to search a
particular category of files or a particular department’s records. For instance, in Wolf v. CIA,
357 F. Supp. 2d 112 (D.D.C. 2004), rev’d in part on other grounds, 473 F.3d 370 (D.C. Cir.
2007), the plaintiff sought all documentation in the FBI’s possession regarding the activities of a
particular political figure. Id. at 114. The plaintiff independently produced an internal FBI
memorandum indicating that the individual’s case file was being closed and that his subsequent

17

activities would be reported in a file called “Political Situation in Colombia — Foreign Political
Matter.” Id. at 119. The court agreed that the FBI should have searched this “Political
Situation” file and that the agency’s failure to do so rendered summary judgment improper.
Id. Likewise, in Campbell v. Department of Justice, 164 F.3d 20 (D.C. Cir. 1998), the files that
the FBI provided in response to plaintiff’s FOIA request alluded to records contained in two
additional record systems, an electronic-surveillance index and “tickler” files. Id. at 27. The
court thus held that the FBI should have searched those additional record systems. Id. at 28; see
Iturralde, 315 F.3d at 315 (failure to disclose particular document only indicates
inadequate search under certain circumstances — e.g., the government “failed
to search particular offices or files where the document might well have been found”; “failed or
refused to interview government officials for whom there was strong evidence that they might
have been helpful in finding the missing documents”; or “ignored indications in documents
found in its initial search that there were additional responsive documents elsewhere”) (citations
omitted).
Unlike the documents discussed in Wolf and Campbell, most of the records that Plaintiff
refers to here do not constitute countervailing evidence sufficient to show that the search was
inadequate. Huntington first contends that previously released documents demonstrate that
Defendant did not adequately search for records relating to semiannual SAWS guidelines. See
Pl. Mot. at 16. He presents evidence in the form of a table showing that, while Defendant
produced very few memos, reminders, or updates related to the guidelines for most of the
Technology Centers prior to 2008, it produced such records for almost every Technology Center
for each year spanning 2008 to 2014. See ECF No. 11-8, Exh. 6-1. The dearth of pre-2008
records, he contends, is inconsistent with a 2002 memo from the Deputy Commissioner for

18

Patent Operations to patent examiners stating, “Each Technology Center will distribute a SAWS
memo to examiners at least semi-annually,” ECF No. 11-4, Exh. 2-3 at B-72, and emails from
2010 onward indicating that SAWS guidelines should be updated semiannually. See ECF No.
11-8, Exh. 6-2. This evidence, however, does not reveal a particular category of files or a
particular department whose records the agency failed to search. On the contrary, the table
shows that the agency did structure its search to locate semiannual SAWS guidelines across
Technology Centers because it produced some pre-2008 records from more than one Technology
Center. The table also shows that more records dated after 2002 were produced — though not as
many as were dated from 2008 on — which is not inconsistent with the memo to which
Huntington refers. That fewer records from certain Technology Centers in certain years were
produced than Plaintiff anticipated could reasonably be because those records were lost, missed
in an otherwise adequate search, or never created in the first place.
Huntington next complains that the USPTO located “[l]ittle responsive material” to his
request for “specific items about the preparation of SAWS report.” Pl. Mot. at 16. He observes
that while “‘templates’ from certain years were ultimately produced, no written guidelines for
‘impact’ criteria for examiners to make the ‘Impact Statement’ were produced,” and he
hypothesizes that “written guidelines would be necessary to make the impact statement.” Id. at
17. He likewise laments that “[v]irtually little or no material at all was produced” regarding his
requests for “TC Directors’ decision factors regarding disposition of SAWS applications” or for
procedures or information on the factors, considerations, and decisions made at the USPTO. Id.
He points to two emails from 2010 and 2015 that refer to moving along old SAWS cases and
removing certain categories from the list of criteria triggering SAWS designation, see ECF No.
11-10, Exh. 8, and a 2008 memo and 2015 email referring to the flagging of SAWS applications

19

in PALM, see ECF No. 11-9, Exh. 7, to suggest that more documents exist and should have been
produced. Again, such sporadic evidence and speculation about what might exist does not
constitute countervailing evidence sufficient to demonstrate an inadequate search.
Plaintiff does, though, successfully present countervailing evidence regarding one aspect
of Defendant’s efforts. As to the search of work laptops and emails at the Patent Trial and
Appeal Board, see Heaton Decl., ¶ 41, Huntington protests that Heaton’s declaration fails to state
“whether the Chief Judge’s records and computers were searched at all,” Pl. Opp. at 6, and notes
that documents relating to the Board’s handling of SAWS information exist but were not
produced. See Pl. Mot. at 18.
Heaton clarifies in his supplemental declaration that because PTAB Chief Judges “were
not reasonably likely to have records responsive to Plaintiff’s FOIA requests,” their records and
computers were not searched. See Suppl. Heaton Decl., ¶ 4. He supports that conclusion with an
email from December 2014 between PTAB judges stating, “We are not aware of the SAWS flag
when we receive the appeal, nor during processing, deliberations, or decision writing.” Heaton
Decl., Exh. W.
That email, however, is at odds with earlier emails submitted by Huntington that suggest
that SAWS reports were in fact sent to the Board of Patent Appeals and Interferences (the
precursor to the PTAB, see 37 C.F.R. §§ 42.1-42.80; 26 Paul M. Coltoff et al., Federal
Procedure, Lawyer’s Edition § 60:474 (2016)), and that the Board was to be alerted when an
appeal involved a SAWS application. See ECF No. 11-12, Exh. 10 at 1 (“We’ve gotten some
questions as to whether all reexams and all cases going to the BPAI need a report. The intent is
only those meeting the listed SAW criteria need a report prepared and forwarded.”); see id. at 2

20

(“Update on what the Board needs in regard to SAWS applications: . . . email that it is
considered a SAWS application . . . .”).
Given this apparent conflict, the Court cannot accept Heaton’s effort to defeat Plaintiff’s
objection. Instead, it must conclude that Defendant should have searched the PTAB Chief
Judge’s records and computers. This should be accomplished before further briefing takes place.
B. Exemption 5
Given the long discussion of adequacy, the reader may be forgiven for having forgotten
that there is yet another issue to tackle: whether Defendant properly withheld some recovered
records pursuant to FOIA Exemption 5.
This exemption applies to “inter-agency or intra-agency memorandums or letters that
would not be available by law to a party other than an agency in litigation with the agency.” 5
U.S.C. § 552(b)(5). In other words, under Exemption 5, an agency may withhold from a FOIA
requestor any “documents[] normally privileged in the civil discovery context.” NLRB v. Sears,
Roebuck & Co., 421 U.S. 132, 149 (1975); see also United States v. Weber Aircraft Corp., 465
U.S. 792, 799 (1984). This exemption thus encompasses three distinct categories of information:
deliberative-process privilege, attorney-work-product privilege, and attorney-client privilege.
See Am. Immigration Council v. Dep’t of Homeland Sec., 905 F. Supp. 2d 206, 216 (D.D.C.
2012). In the present case, Defendant asserts that portions of the contested documents should be
withheld under this exemption because they are covered by the deliberative-process privilege.
That particular privilege is intended “to enhance the quality of agency decisions by
protecting open and frank discussion among those who make them within the Government.”
Dep’t of Interior v. Klamath Water Users Protective Ass’n, 532 U.S. 1, 9 (2001) (internal
quotation marks and citation omitted). The privilege “rests on the obvious realization that

21

officials will not communicate candidly among themselves if each remark is a potential item of
discovery and front page news.” Id. at 8-9; see also Dow Jones & Co. v. Dep’t of Justice, 917
F.2d 571, 573-74 (D.C. Cir. 1990). The deliberative-process privilege thus permits the
“withholding of all papers which reflect the agency’s group thinking in the process of working
out its policy and determining what its law shall be.” Sears, 421 U.S. at 153 (internal quotations
omitted).
To justify a withholding under this privilege, the government must prove two basic
elements. First, it must demonstrate that a document qualifies as “pre-decisional” in the sense
that it was “[a]ntecedent to the adoption of an agency policy.” Jordan v. Dep’t of Justice, 591
F.2d 753, 774 (D.C. Cir. 1978) (en banc), partially overruled on other grounds by Crooker v.
Bureau of Alcohol, Tobacco & Firearms, 670 F.2d 1051, 1053 (D.C. Cir. 1981) (en banc).
Second, the government must show that the document forms “a direct part of the deliberative
process in that it makes recommendations or expresses opinions on legal or policy matters.”
Vaughn v. Rosen, 523 F.2d 1136, 1144 (D.C. Cir. 1975); see also Pub. Citizen, Inc. v. Office of
Mgmt. & Budget, 598 F.3d 865, 876 (D.C. Cir. 2009) (explaining that “[a] document that does
nothing more than explain an existing policy cannot be considered deliberative”).
The USPTO asserted Exemption 5 with respect to 49 documents. See Def. Mot. at 21;
Heaton Decl., ¶ 55. It has since released three of those documents in full, mooting any challenge
to those few. See ECF No. 18 (Def. Reply) at 9; Suppl. Heaton Decl., ¶ 13. Of the remaining
46, fifteen are internal emails and memos that were redacted in part to conceal “pre-decisional
discussions about proposed agency actions with respect to the SAWS or other agency programs.”
Heaton Decl., ¶ 60. Those emails and memos discussed, for example, potential changes to
SAWS subject-matter guidelines and program guidance, the impact of a recent court decision on

22

the SAWS program, and the implications of FOIA for SAWS. See Suppl. Heaton Decl.,
¶ 11. The other 31 documents consist of training presentations about the SAWS program, notes
for a training presentation, lists of patent-application filing dates organized by Technology
Center, and emails and attachments sent among patent examiners, SAWS program managers,
Technology Center employees, and senior USPTO officials. See Heaton Decl., ¶¶ 55, 57-58 &
Exh. T (Vaughn Index). This latter group of documents was redacted in whole or in part to
conceal the application numbers of applications flagged for SAWS and information about
specific patent applications that were or should have been flagged for SAWS. Id.
Huntington challenges the application of the deliberative-process privilege to all of these
documents. See Pl. Opp. at 9-21. His primary argument is that a decision to flag an application
for the SAWS program and an application’s status as flagged or unflagged are not predecisional
or deliberative because whether an application is flagged does not itself determine whether the
patent will be allowed. See id. at 9-13.
That view of the privilege is too narrow. Although flagging an application for the SAWS
program is not dispositive as to whether the patent will be allowed, it can trigger an additional
internal quality-assurance check, the result of which “could have an impact on the ultimate
decision by the patent examiner.” Suppl. Heaton Decl., ¶ 9; see also id., ¶ 8; Heaton Decl.,
¶¶ 22, 54. The challenged documents precede the final patentability decision and are part of the
process by which that decision is made; they therefore are predecisional and deliberative. See
Abtew v. Dep’t of Homeland Sec., 808 F.3d 895, 898 (D.C. Cir. 2015) (“A document is
‘predecisional’ if it precedes, in temporal sequence, the ‘decision’ to which it relates.”) (quoting
Senate of the Commonwealth of Puerto Rico v. Dep’t of Justice, 823 F.2d 574, 585 (D.C. Cir.
1987)); id. at 899 (“[A] document is deliberative if it is ‘a part of the agency give-and-take — of

23

the deliberative process — by which the decision itself is made.”) (quoting Vaughn, 523 F.2d at
1144); Nat’l Sec. Archive v. CIA, 752 F.3d 460, 463 (D.C. Cir. 2014) (“The term ‘deliberative’
in this context means, in essence, that the communication is intended to facilitate or assist
development of the agency’s final position on the relevant issue.”).
Taking a slightly different tack, Huntington also argues that the USPTO “failed to
demonstrate an interest protectable under the FOIA.” Pl. Opp. at 14. But the agency’s desire to
avoid generating public bias toward patents that had been selected for the SAWS program is
directly in line with one of the purposes of the deliberative-process privilege. See, e.g.,
Defenders of Wildlife v. Dep’t of Agriculture, 311 F. Supp. 2d 44, 57 (D.D.C. 2004) (“[S]pecific
policy objective[] underlying this privilege [is] . . . to protect against public confusion that might
result from disclosure of reasons and rationale that were not in fact ultimately the grounds for an
agency’s action.”).
Last, Plaintiff contends that Defendant’s basis for withholding in full a document listing
the filing dates of applications included in the SAWS program — that their release would enable
identification of applications filed on low-volume days, see Suppl. Heaton Decl., ¶ 12 — is too
speculative. See Pl. Opp. at 19-20. Not so. As Heaton explains in his supplemental declaration,
between fiscal year 2010 and the present, there have been 402 days on which individual
Technology Centers received only one patent application, 592 days on which they received only
two, and 1,395 days on which they received only three or four. See Suppl. Heaton Decl., ¶ 12.
As the filing dates and Technology Center for published patent applications are publicly
available, including online, id., it is far from speculative that the withheld document could be
used to identify patents flagged for the SAWS program prior to allowance.

24

Having concluded that Plaintiff’s aforementioned challenges to the records withheld
pursuant to Exemption 5 fail, the Court need not address Defendant’s related argument that this
exemption also applies here because discussions and decisions about the scope of the SAWS
program and the statuses of particular applications are undertaken in patent examiners’ quasijudicial capacity. See Def. Mot. at 18.
IV.

Conclusion
For the foregoing reasons, the Court will grant Plaintiff’s Motion in part and deny it in

part, and will grant Defendant’s Motion in part and deny it in part. The Court will issue a
contemporaneous Order so stating and requiring consultations between the parties for a further
briefing schedule.
/s/ James E. Boasberg
JAMES E. BOASBERG
United States District Judge
Date: January 18, 2017

25