                            UNITED STATES DISTRICT COURT
                            FOR THE DISTRICT OF COLUMBIA
 



    R. DANNY HUNTINGTON,
         Plaintiff,

         v.                                                 Civil Action No. 15-2249 (JEB)

    UNITED STATES DEPARTMENT OF
    COMMERCE,
         Defendant.



                                  MEMORANDUM OPINION

        An attorney in the field, Plaintiff R. Danny Huntington seeks information about a defunct

confidential program of the U.S. Patent and Trademark Office, which is housed in the

Department of Commerce. This program – the Sensitive Application Warning System (SAWS)

– was used to flag certain patent applications as involving particularly sensitive subject matter.

To gain insight into the SAWS Program, Plaintiff filed multiple Freedom of Information Act

requests with Commerce and subsequently brought this suit. After a previous round of

summary-judgment briefing, in which the Court granted in part and denied in part both sides’

motions, Defendant was ordered to resolve several deficiencies in its search.

        Believing it has now fulfilled those obligations, Commerce renews its Motion for

Summary Judgment. Plaintiff responds with his own Cross-Motion, arguing that Defendant’s

actions are still insufficient. The Court concludes that an issue of material fact exists as to

whether the government conducted an adequate search within one office, but it finds that the

USPTO has otherwise satisfied FOIA’s dictates. The Court will, therefore, once again grant in

part and deny in part each party's Motion.

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I.          Background

            The Court’s prior Opinion lays out the full details of this controversy, see Huntington v.

     U.S. Dep’t of Commerce (Huntington I), No. 15–2249, 2017 WL 211301, at *1-3 (D.D.C. Jan.

     18, 2017), so they will be only briefly recapped here.

            Traditionally, patent applications submitted to the USPTO are reviewed for compliance

     with legal requirements that, if met, result in the grant of the patent. See ECF No. 14-4

     (Declaration of John Ricou Heaton), ¶¶ 19-20. In 1994, the Office introduced its new SAWS

     program. Id., ¶ 21. SAWS “allow[ed] patent examiners to alert leadership when a patent might

     issue on a sensitive matter,” and the program “was integrated” into the regular patent-application

     review process. Id. Inclusion in the SAWS program did not determine whether an application

     would ultimately be granted or denied, see ECF No. 18-1 (Supplemental Declaration of John

     Ricou Heaton), ¶ 9, but could trigger “an internal quality assurance check.” Heaton Decl., ¶ 22.

     If it was granted, a report describing the invention and its sensitive nature would be sent to a

     Technology Center Director, who would decide whether the Commissioner for Patents Office

     should be notified. Id. 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. (citation omitted). The USPTO retired the SAWS program in

     March 2015. Id.

            During the first half of 2015, Huntington submitted several FOIA requests to the USPTO

     seeking records related to SAWS. After Commerce released some documents in part, see ECF

     No. 11-4, Exh. 2-2 at B002, and Huntington filed multiple unsuccessful administrative appeals,

     id., Exhs. 2-3, 2-4, he brought this suit in December 2015, alleging that Defendant had failed to



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both conduct an adequate search and produce responsive records. See ECF No. 1 (Complaint),

¶¶ 34-43. The USPTO then undertook “a more thorough subsequent search,” Heaton Decl., ¶ 23,

and released 4,114 pages and five spreadsheets of material, of which one document was redacted

in full and 132 pages were redacted in part pursuant to FOIA Exemptions 3, 5, and 6. Id., ¶¶ 44-

50.

       Contending that Defendant’s search remained inadequate and that certain records were

improperly withheld, Huntington moved for summary judgment. See ECF No. 11 (Plaintiff’s

First Motion for Summary Judgment). Defendant, conversely, believed it had satisfied its FOIA

obligations and thus cross-moved for summary judgment. See ECF No. 14-2 (Defendant’s First

Motion for Summary Judgment). In that round of briefing, there were two issues in dispute: (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.

       The Court concluded that Defendant’s search was inadequate for three reasons. First, the

agency’s account of its search was “facially flawed” because it did not “assert[] that [it had]

searched all locations likely to contain responsive documents.” Huntington I, 2017 WL 211301,

at *5-6 (quoting Bartko v. DOJ, 167 F. Supp. 3d 55, 64 (D.D.C. 2016)). Second, the

“description of [Defendant’s] search lack[ed] the requisite specificity” because it did “not

constitute ‘[a] reasonably detailed’ description of ‘the type of search performed.’” Id. at *7

(quoting Oglesby v. Dep’t of Army, 920 F.2d 57, 68 (D.C. Cir. 1990)). The descriptions

omitted, inter alia, how many laptops and emails were searched, why the locations searched

were chosen, and why no paper files had responsive records. Id. Finally, the Court determined

that Defendant should have searched the records of the Patent Trial and Appeal Board (PTAB)




                                                 3
 
      Chief Judges given evidence suggesting that these judges would have responsive records. Id. at

      *10.

             As to its withholding, the USPTO initially asserted Exemption 5 with respect to 49

      documents. See Def. Mot. at 21; Heaton Decl., ¶ 55. The Court upheld Defendant’s reliance on

      this exemption. Huntington I, 2017 WL 211301, at *11.

             Partially granting and partially denying these first motions for summary judgment, the

      Court ordered Defendant to: (1) fix the facial deficiency regarding its description of its search,

      (2) describe its search in further detail, and (3) search the PTAB Chief Judges’ records. In

      response, the USPTO has cured the facial deficiency, explained in more detail the search of

      various offices, and searched the PTAB Chief Judges’ records. Contending that it has carried out

      the Court’s Order and thus fully complied with FOIA, Defendant renews its Motion for

      Summary Judgment. See ECF No. 22 (Defendant’s Second Motion for Summary Judgment).

      Believing that Defendant’s search remains inadequate and that a certain record is still improperly

      withheld, Huntington renews his Cross-Motion. See ECF No. 23-1 (Plaintiff’s Second Motion

      for Summary Judgment). Both 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

      fact cannot be or is genuinely disputed must support the assertion” by “citing to particular parts



                                                        4
       
   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.’”

   DOJ 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

          Bearing some similarity to the last round of briefing, the disputes here center on: (1) the

   adequacy of the USPTO’s search for responsive records, and (2) the validity of its withholding of

   one document pursuant to Exemption 5. The Court considers each in turn.



                                                     5
    
       A.      Adequacy of Search

       In assessing whether Defendant has “demonstrate[d] 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 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)), the Court considers

the three outstanding issues discussed in its prior Order: (1) whether the agency has resolved the

threshold error in its account of its search; (2) whether it has reasonably described the search

performed; and (3) whether it searched the PTAB Chief Judges’ records. Huntington I, 2017

WL 211301, at *6, 8, 10.

               1.      Facial Deficiency

       The Court determined in its previous Opinion that Defendant’s description of its search

was facially flawed. Commerce has now cured this deficiency. To satisfy the dictates of FOIA,

an agency 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) (emphasis added) (quoting Am. Immigration Council v. Dep’t of Homeland Sec.,

950 F. Supp. 2d 221, 230 (D.D.C. 2013)). 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



                                                   6
 
F. Supp. at 71 (quotation 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. DOJ, 531 F. Supp. 2d 118, 122 (D.D.C. 2008) (same);

Maydak v. DOJ, 362 F. Supp. 2d 316, 326 (D.D.C. 2005) (same).

       Here, in response to the Court’s Order, Defendant asserts that it “has searched all

locations likely to contain responsive documents,” Def. 2d MSJ at 4 (citing Second Suppl.

Heaton Decl., ¶ 22), thus invoking “the ‘magic words’ concerning the adequacy of the search.”

Bartko, 167 F. Supp. 3d at 64. The pothole is now patched.

               2.      Search Description

       Moving to the next issue, the Court, in its previous decision, agreed with Plaintiff’s

argument that “Defendant’s description of its search lack[ed] the requisite specificity.”

Huntington I, 2017 WL 211301, at *7. Huntington had identified several portions of the first

declaration of John Ricou Heaton, an Associate Counsel for the Office of General Law and a

FOIA officer at the USPTO, which did not constitute “reasonably detailed” descriptions of “the

type of search performed.” Oglesby, 920 F.2d at 68. These included Defendant’s “description

of the search undertaken in the Office of Patent Training, [and] 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.” Huntington I, 2017 WL 211301, at *7. Commerce’s vague

descriptions left the Court uncertain as to how many emails and work laptops were searched,

why those materials but not others were determined to be reasonably likely to contain responsive




                                                 7
 
records, and how Defendant had concluded that no paper files contained responsive records. The

agency was thus tasked with putting some meat on the bones of its search description. Id. at *8.

       In response to the Court’s Order, Defendant provided an additional declaration from

Heaton describing the searches in further detail and specifically addressing which “work laptops

and emails” were searched, “reasons for [certain search] locations and not others, and how the

[USPTO] determined that no paper files had responsive records.” Def. 2d MSJ at 10. He

explains, for example, that multiple locations were searched pursuant to Plaintiff’s several

requests: “the Technology Centers (‘TCs’), the Office of Patent Legal Administration (‘OPLA’),

the Office of Patent Training, the Office of the Deputy Commissioner for Patent Examination

Policy, and the Office of the Commissioner for Patents itself.” ECF No. 22, Exh. 2 (Second

Supplemental Declaration of John Ricou Heaton), ¶ 9. “John LeGuyader, a TC director who had

been the SAWS Program Lead for Patents since 2006,” assisted in identifying these locations as

“reasonably likely to have records responsive to Plaintiff’s FOIA requests” since “he had overall

responsibility for managing the SAWS Program and was familiar with its operation.” Id.

       The Court here sets forth more specifics from Heaton’s description of Defendant’s search

of all offices except the PTAB, which is described in Section III.A.3, infra. Heaton first detailed

the search done in the Technology Centers. All TC directors were tasked with “[identifying]

employees within their organizations who should search for records” as they “operate and

administrate the TCs and would know the employees who participated in the SAWS Program

and would be reasonably likely to have responsive documents.” Id., ¶ 10. Of the 26 employees

identified as likely to have responsive documents, only five were TC Directors “and twenty-one

were SAWS Points of Contacts (SAWS POCS).” Id. These employees searched “their work

laptops, emails, and paper records, if they had any.” Id. The “SAWS POCS . . . helped run the



                                                 8
 
SAWS Program” and “would have performed duties such as updating and distributing SAWS

guidance to TC personnel and tracking . . . applications flagged for” SAWS. Id. Heaton also

explained that “the search for records in the TCs . . . included the search by the CSI Office of the

electronic files of two former USPTO employees,” a former “SAWS Program Lead for Patents,”

and a former “TC Director.” Id., ¶ 11.

       Second, Heaton explained the search in OPLA. Nine individuals, “the Director of OPLA

and eight attorney legal advisors,” who were identified by the Director as having worked on

SAWS-related matters, “searched their work laptops, emails, and any paper records they may

have had.” Id., ¶ 12. Additionally, a former director of OPLA “was identified as a person to

search for records within” the Office of the Deputy Commissioner for Patent Examination Policy

(ODCPEP), of which OPLA is part. Id., ¶ 14. “[A]s a former director of OPLA, he had

managed an office [with] involvement in the SAWS program.” Id. He “searched his work

laptop, emails, and paper records” in 2015 and provided to Plaintiff all responsive records found.

Id. No one else searched ODCPEP as no other employee was identified as reasonably likely to

have responsive records. Id.

       The search in the Office of Patent Training (OPT) was conducted by “the Deputy

Director and a Management Program Analyst.” Id., ¶ 13. The Deputy Director was “previously

. . . a SAWS POC at a TC and was familiar with the training curriculum maintained by OPT,”

which included “training material about SAWS.” Id. The Director “identified [the]

Management Program Analyst who managed training materials . . . [,] which had previously

included training materials about the SAWS program.” Id. Both employees “searched their

work laptops and emails but neither identified any paper records” related to SAWS. Id.




                                                 9
 
       Finally, Heaton indicated that two Advisors to the Deputy Commission for Patent

Operations, who were identified as reasonably likely to have records by the SAWS Program

Lead, searched their records in the Office of the Commissioner for Patents. Id., ¶ 15. No one

else in the office “had been involved in the SAWS program.” Id. “Both . . . individuals searched

their work laptops and emails,” but did not search paper records as they had only handled

SAWS-related material in electronic format. Id.

       Notwithstanding these detailed explanations of the steps taken in each division or office,

Plaintiff contends that “defendant ignored [the Order for a detailed search description] by silence

and distractions.” ECF No. 28 (Pl. 2d Reply) at 4. On the contrary, he is the one who offers no

evidence to show that these supplemental descriptions are not enough. The Court, consequently,

is satisfied that Heaton’s declarations now describe Defendant’s search in sufficient detail. This

issue is now closed.

       Even if the search description is sufficient, Huntington still challenges the adequacy of

the search itself, specifically in relation to the TCs. See Pl. 2d MSJ at 3-4; Pl. 2d Reply at 6-7.

He first takes issue with the number of employees tasked with searching records, arguing that all

employees in every TC should have carried out searches. See Pl. 2d MSJ at 4; Pl. 2d Reply at 6.

As previously mentioned, five out of nine TC Directors searched their records, in addition to 21

SAWS POCs located amongst the nine TCs. See Second Suppl. Heaton Decl., ¶ 10. Plaintiff

argues that the search must be inadequate, asserting without evidence that because “all TC

Directors had identical role[s] under the SAWS program,” they must all be required to search.

See Pl. 2d Reply at 6. He also maintains that Heaton “does not explain why some TC Directors .

. . were not identified as likely to have responsive records” and that Defendant’s “claim of [an]

adequate search is unreasoned and therefore unavailing.” Id. Finally, Plaintiff contends that all



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Supervisory Patent Examiners (SPEs) should search because “it is likely that some of the TC

employees who did not . . . search[] had been in the TCs before 2006.” Id. at 7. This conclusion

relies on the assumption that because produced responsive records from before 2006 are sparse,

more must exist, and thus additional employees should be made to search. Id.

          These protests, however, are belied by Heaton’s aforementioned second supplemental

declaration, in which he convincingly describes why only certain employees were chosen to

carry out searches and why this was sufficient. See Second Suppl. Heaton Decl., ¶ 10. 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)). Plaintiff may

hypothesize, for example, that all TC Directors participated substantively in the SAWS Program

and must have responsive records or that other employees must have records because what has

been produced to date is thinner than desired. As shown, however, Plaintiff offers no evidence

to support those or other suppositions, without which the Court cannot infer an inadequate

search.

          Huntington next makes a general argument that because the USPTO has uncovered few

responsive emails, its searches (not limited to TCs) must be inadequate. He requests “a sworn

declaration by a PTO records management official on the availability and preservation of records

responsive to the FOIA requests” “[i]n view of Heaton’s unreliable testimony.” Pl. 2d MSJ at 8.

The basis for this position rests on Heaton’s supposedly insufficient description of the USPTO’s

email-archival system. Id., at 8-9. Relying on an internal manual and Heaton’s declarations,

Huntington asserts that “it is clear that a system for preserving some emails must exist, either in



                                                 11
 
‘an electronic record keeping system,’ or ‘printed to paper and retained in a paper filing system.’

Neither comports with Heaton’s account that ‘there is no archived version of agency emails as

they existed on some past particular date, whether in 2010, 2006, 2002, 1998 or other year.’” Pl.

2d MSJ at 7 (citations omitted). Citing Heaton’s description in his first supplemental declaration

of Defendant’s email-archival system, Huntington contends that either Defendant has violated

the Federal Records Act or Heaton is lying about the extent to which Defendant’s emails are

archived. Id. at 6-7.

       In his supplemental declarations, Heaton clarifies the USPTO’s practices regarding the

archiving of emails, noting that the declaration excerpts cited by Plaintiff were merely explaining

that “other than the weekly and daily backup tapes, there [is] no separate archived version of

emails” on backup tapes. See Suppl. Heaton Decl., ¶ 6-7; ECF No. 27, Exh. 2 (Third

Supplemental Declaration of John Ricou Heaton), ¶ 11. Defendant then explains that emails are

preserved using only “the Microsoft Office 365 cloud or PST files on network drives or laptops,”

and that “[e]mails can remain in the . . . cloud or . . . on network drives or laptops for many

years,” evidenced by the email records provided to Plaintiff. See Third Suppl. Heaton Decl., ¶

12. The USPTO’s search of emails is thus adequate.

       In sum, Defendant has sufficiently addressed the deficiencies in its original description of

its searches. Heaton’s second and third supplemental declarations, which explain the scope and

method of those searches “in reasonable detail,” Perry v. Block, 684 F.2d 121, 127 (D.C. Cir.

1982), contain the “requisite specificity” this Court determined was initially lacking. Huntington

I, 2017 WL 211301, at *7. In both the descriptions and the searches themselves, the USPTO has

now complied with FOIA.




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                3.    Search of the PTAB

       In addition to resolving the facial deficiency of its explanation and providing a

supplemental description of the extent of its search, Defendant was tasked to search the records

of the PTAB Chief Judges. Huntington I, 2017 WL 211301, at *10. In his first declaration,

Heaton vaguely described the search of records belonging to the PTAB and its administrative

patent judges (APJs), see Heaton Decl., ¶ 41, and also asserted that the PTAB Chief Judges

“were not reasonably likely to have records responsive to Plaintiff’s FOIA requests.” Suppl.

Heaton Decl., ¶ 4. Because the records of the Chief Judges had apparently not been searched at

all and the search of APJ records had been poorly described, the Court ordered that Defendant

rectify its omissions. Huntington I, 2017 WL 211301, at *7, 10. As to the Chief Judges, the

Court believes Defendant has now complied with FOIA.

       Heaton’s two supplemental declarations explain the steps the USPTO took to search for

responsive records in the PTAB. See Second Suppl. Heaton Decl., ¶¶ 4-6, 15-16; Third Suppl.

Heaton Decl., ¶ 3. First, in response to the Court’s Order to search “the PTAB Chief Judge’s

records and computers,” Huntington I, 2017 WL 211301, at *10, Heaton identified the Cyber

Security Office (CSI Office) as being “the office that would maintain such records for [those of

the judges who had] departed.” Second Suppl. Heaton Decl., ¶ 4. There have been five different

Chief Judges of the PTAB since 1994, and only one is still serving at the PTAB (as an APJ). Id.,

¶ 3. Personnel searched for but did not find any emails or imaged copies of work laptops for four

of the former Chief Judges. Id., ¶ 4. The CSI office “did have emails and an imaged copy of the

work laptop for [one of the] former Chief Judge[s],” and these files were searched using certain

keywords. Id.




                                                13
 
       The agency also searched for paper records of the former Chief Judges, but none was

found. Id., ¶ 5. To locate this material, the USPTO contacted the Deputy Chief Judge of the

PTAB, the former Confidential Assistant for Chief Judge Smith (the most recent former Chief

Judge), and the Administrative Management Specialist for the PTAB. Id. These individuals

were consulted as those “who might . . . be knowledgeable about the current existence or

location of paper records.” Id. The Solicitor and Deputy General Counsel for Intellectual

Property Law at the USPTO was also contacted as he had served as acting Chief Judge of the

PTAB for a brief period, and “he confirmed that he had not received any paper or electronic

records from Chief Judge Smith.” Id. The most recent PTAB Chief Judge is still with the

USPTO serving as an APJ. Id., ¶ 6. He “searched his emails and work laptop” using certain

keywords and also “searched his paper records,” resulting in the locating of sixteen pages of

documents. Id.

       Finally, in addition to the search of former Chief Judges’ records, a former SAWS POC

at the PTAB, as well as two previous PTAB judges, searched their work laptops and emails, and

all records they found were turned over. Id., ¶ 16. The two former judges also searched their

paper records and found nothing, while the former POC had no paper records to search. Id.

       Given this agency diligence, Plaintiff no longer argues that the search of the PTAB Chief

Judges’ records was insufficient, but he instead contends that this Court’s previous decision was

not limited to the Chiefs. See Pl. 2d Reply at 4. He interprets this Court’s Order as requiring

Defendant to search the records of “every other [administrative patent] judge of the PTAB.” Pl.

2d MSJ at 5 (emphasis added).

       The Court agrees with Huntington’s interpretation and acknowledges that it should have

been more explicit in its prior Opinion with regard to Defendant’s obligations. Heaton’s first



                                                14
 
declaration indicated that “administrative patent judges[] identified work laptops and emails as

locations where SAWS records would be stored,” Heaton Decl., ¶ 41, but it did “not make clear

how many personnel did so, what their positions were, or why those accounts were searched but

others were not.” Huntington I, 2017 WL 211301, at *7. It was thus insufficient. Following the

Court’s Opinion, Commerce submitted Heaton’s second declaration, which, as just mentioned,

briefly describes the searches made by two former APJs. See Second Suppl. Heaton Decl., ¶ 16.

Heaton indicates that “[t]he Deputy Chief Judge identified the personnel who should search for

records based on his knowledge of PTAB,” but never mentions the search of the APJs. Id.

Additionally, Heaton states that the “USPTO has no basis for believing that APJs, independent of

the Chief Judge and the other PTAB personnel who have already searched for records, are

reasonably likely to have responsive records,” but provides no explanation of why this is so. See

Third Suppl. Heaton Decl., ¶ 4. This description remains problematic.

       According to Heaton’s supplemental declarations, it appears that the only APJ who

looked for records was a former Vice Chief Judge; in other words, no APJs who were not Chief

Judges in some capacity were included. The countervailing evidence submitted by Plaintiff,

however, see ECF 11-12, Exh. 10 at 1, Pl. 2d Reply at 5, and cited by the Court in its previous

Opinion, suggests that people other than the Chief Judges saw SAWS reports. Huntington I,

2017 WL 211301, at *10. The Court pointed out that “earlier emails submitted by Huntington . .

. suggest[ed] that SAWS reports were in fact sent to the Board of Patent Appeals and

Interferences (the precursor to the PTAB) and that the Board was to be alerted when an appeal

involved a SAWS application.” Id. (citations omitted).

       Moving forward, Defendant may either submit an additional declaration describing in

detail the search made by certain APJs and a sufficient explanation of why more APJs did not



                                                15
 
search, or the USPTO must search all APJs SAWS-related records and provide a description

thereof.

       B.      Exemption 5

       In addition to his concerns regarding Defendant’s search, Plaintiff asks the Court to

reconsider its decision, pursuant to FOIA Exemption 5, affirming Defendant’s withholding in

full of a document listing the filing dates of applications included in the SAWS program.

Federal Rule of Civil Procedure 54(b) provides that “any order or other decision . . . that

adjudicates fewer than all the claims . . . may be revised at any time before the entry of a

judgment adjudicating all the claims.” To give Huntington the benefit of the doubt, the Court

considers the claim on its merits.

       In its previous decision, this Court determined that the relevant document was properly

withheld under Exemption 5’s deliberative-process privilege. Huntington I, 2017 WL 211301, at

*12. Plaintiff now asks the Court to at least require Defendant to release all segregable, non-

exempt material listed on this document. See Pl. 2d MSJ at 11; Pl. 2d Reply at 10.

       The document at issue lists the filing dates, sorted by Technology Center, for applications

included in the SAWS program. See Suppl. Heaton Decl., ¶ 12. It was withheld because the

USPTO believes that disclosure of the dates alone could lead someone to figure out which

applications were flagged for SAWS. See Heaton Decl., ¶¶ 55, 57-58 & Exh. T (Vaughn Index).

More specifically, a number of SAWS applications were submitted on low-volume days – i.e.,

days on which four or fewer applications were received. See Suppl. Heaton Decl., ¶ 12.

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. Id.; Third Suppl. Heaton Decl., ¶



                                                 16
 
16. The release of the date information, according to Defendant, would enable the public to

identify applications that were filed on low-volume days; since Technology Center and filing-

date information is publicly available, anyone could compare it with information in the withheld

document to determine at least some patent applications flagged for SAWS. See Suppl. Heaton

Decl., ¶ 12; Third Suppl. Heaton Decl., ¶ 16.

       In response to the USPTO’s initial withholding, Huntington claimed that its rationale was

too speculative. See Pl. 1st Reply at 19-20. The Court disagreed. Huntington I, 2017 WL

211301, at *12. Plaintiff now contends that the Court “has patently misunderstood [the

defendant],” Pl. 2d Reply at 10 (quoting Fed. R. Civ. P. 54(b)), arguing that “defendant’s

reasoning [for withholding the document] was inaccurate and misleading.” Id. He seeks release

of the document with the following edits: 1) the filing-date information of the applications filed

on low-volume days may be redacted, and 2) the low-volume-day filing-date information may be

replaced with the week in which the application was filed. See Pl. 2d MSJ at 10.

       Defendant rejoins that the document at issue “could not be meaningfully redacted in the

manner proposed by Plaintiff.” Def. 2d Reply at 9. Redacting the low-volume-day application

information would create gaps in the chronologically organized table. Id. These gaps could be

used to determine which patent applications were flagged for SAWS, thereby revealing the

redacted information. Id.

       Plaintiff next slightly modified his request, asking Defendant to create two separate

documents. See Pl. 2d Reply at 9-10. One would include only the low-volume-day application

information with the filing-date replaced by the week in which the applications were filed. Id.

The other would contain all information except the redacted low-volume-day application




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information. Id. Huntington argues that this will resolve the problem raised by Defendant. Id.

at 10.

         FOIA “does not obligate agencies to create or retain documents; it only obligates them to

provide access to those which it in fact has created and retained.” Kissinger v. Reporters Comm.

for Freedom of the Press, 445 U.S. 136, 152 (1980). As such, Defendant is not obligated to

construct the separate documents requested by Plaintiff. Even if this proposal did not entail the

creation of a separate document, Defendant’s rationale for not consenting remains sound, as

neither solution raised by Plaintiff resolves the original problem of revealing information about

which applications were flagged for SAWS. The agency here submits a declaration explaining

its rationale for withholding the document at issue:

                [T]he release of . . . filing dates by [Technology Center] for patent
                applications in the SAWS program . . . could be used to identify
                particular patent applications on days when there was a low volume
                of patent applications filed. Further, the document cannot be
                meaningfully redacted without revealing information that should be
                protected from release. If the document was released with
                redactions, any redacted filing date would be bracketed by
                unredacted filing dates such that the time period containing the
                redacted filing date would thus be revealed. A comparison then
                could be done of that time period against public data reflecting the
                filing dates for published patent applications in order to identify the
                patent applications that fell within the redacted time period. From
                that information, the public could determine which patent
                applications had been filed in the [Technology Center] on low
                volume days during the time period in question to speculate about
                and identify the application that had been in the SAWS program.

Third Suppl. Heaton Decl., ¶ 16 (citations omitted).

         This declaration provides a sufficient explanation. Despite his ingenuity, it is hard to see

how either of Plaintiff’s solutions resolves the problem raised by Defendant. A gap will be

created by the deletion of all the low-volume-day application information just as if only the filing

date were redacted. Defendant correctly points out that this gap could “risk revealing the very

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      information being redacted,” which could “undermine [its] [legitimate] concern about

      stigmatizing any particular application by indicating whether or not it has been included in the

      SAWS program.” Def. 2d Reply at 9-10; see Third Suppl. Heaton Decl., ¶ 16. The same issue

      of using this information to identify “patents flagged for the SAWS program prior to allowance”

      continues to exist, Huntington I, 2017 WL 211301, at *12, illustrating how the non-exempt and

      exempt information is “inextricably intertwined.” Mead Data Cent., Inc. v. U.S. Dep’t of Air

      Force, 566 F.2d 242, 260 (D.C. Cir. 1977). Defendant provided a detailed justification of

      withholding the information Plaintiff seeks, and the Court will not alter its decision as to this

      document.

IV.          Conclusion

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

      part; a contemporaneous Order will so state and will require consultations between the parties for

      a further briefing schedule on the APJ issue. 

                                                                    /s/ James E. Boasberg
                                                                    JAMES E. BOASBERG
                                                                    United States District Judge


      Date: July 21, 2017
       




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