The opinion
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6 UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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10 LEGALFORCE RAPC WORLDWIDE
P.C.,
11 No. C 19-05935 WHA
Plaintiff,
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v.
13 ORDER GRANTING SUMMARY
UNITED STATES PATENT & JUDGMENT
14 TRADEMARK OFFICE,
15 Defendant.
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17 INTRODUCTION
18 In this Freedom of Information Act case, defendant agency moves for summary judgment.
19 The Vaughn index does not adequately justify certain applications of Exemption 5, but plaintiff
20 does not challenge the adequacy of the agency’s search or its application of Exemptions 6 and
21 7. No genuine dispute of the agency’s withholding remaining, summary judgment is GRANTED.
22 STATEMENT
23 In May 2019, plaintiff LegalForce RAPC Worldwide P.C. filed FOIA request F-19-00197
24 with defendant United States Patent and Trademark Office (“PTO”) seeking records from an
25 investigation into one of plaintiff’s attorneys, Heather Sapp. In 2018, the PTO’s Office of
26 Enrollment and Discipline (OED) (which oversees practitioner (mis)conduct) investigated Ms.
27 Sapp, also a former PTO attorney, for possible violations of the PTO’s document signing and
1 reprimand, approved in the final order of In the Matter of Heather A. Sapp, Proceeding No.
2 D2019-31 (Choe Decl., Dkt. No. 23-1, at ¶¶ 5, 15–17).
3 Following the settlement, plaintiff requested four categories of documents, which the PTO
4 interpreted as follows:
5 Plaintiff’s Actual Request PTO Interpretation
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1. Any and all Request[s] for Information 1. [A]ll RFI’s that OED transmitted to
(RFI’s) sent by the USPTO Office of Heather A. Sapp in connection with her
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Enrollment and Discipline to Heather A. disciplinary proceeding.
Sapp or her counsel . . . .
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2. Any and all responses submitted by 2. [A]ny response submitted by Heather A.
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Heather A. Sapp either directly or through Sapp or her counsel on any subject related to
counsel . . . . the investigation . . . .
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3. Any and all notes from interviews 3. [A]ny documents related to the Agency’s
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conducted in person with Heather A. Sapp preparation for the interview and any notes
and/or her attorney that are not governed or memoranda generated post-interview.
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under any settlement privilege . . . .
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4. Any and all declarations, affidavits, or 4. [D]raft and final versions of the Proposed
statements of facts received or taken by OED Settlement Agreement and Final Order, and
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from Heather A. Sapp . . . leading to the any substantive communications discussing
Final Order . . . . the contents of those documents.
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16 In response, the PTO’s FOIA Office turned to the OED, who identified six employees likely to
17 have relevant documents. In June 2019, the PTO released 31 pages of documents to plaintiff
18 (Choe Decl. at ¶¶ 5, 8, 18–19, 21–24).
19 Dissatisfied, plaintiff filed this suit and suggested that “there were disagreements in the
20 USPTO about whether to release records.” So, in January 2020, the PTO searched again in
21 three places. In the Office of the Solicitor, which advises OED, the PTO identified as relevant
22 and searched the files of former Associate Solicitor Elizabeth Mendel, employing relevant
23 search terms, including “Heather,” “Sapp,” “G3493,” and “D2019-31.” It then searched the
24 Office of General Law, which approved Ms. Sapp’s settlement, for documents regarding that
25 settlement, using relevant search terms such as her name and proceeding number. Finally, it
26 searched the files of the OED’s director, William Covey, again for Ms. Sapp’s name and file
27 numbers. The PTO also searched Mr. Covey’s files for plaintiff’s counsel’s name, Mr.
1 The PTO’s initial search recovered 3,109 pages of which 31 were released in full and
2 3,078 were withheld in full. The supplemental search revealed 170 new pages, of which 83
3 pages were released in full, 12 in part, and 75 withheld in full. Additionally, the PTO
4 reconsidered some of the initially withheld 3,078 pages, releasing 143 pages in full and 575
5 pages in part. Simply, the original search yielded 3,109 relevant pages of the 3,279 relevant
6 pages eventually found (id. at ¶ 29; Choe Suppl. Decl., Dkt. No. 25-1, at ¶¶ 3–4; Choe Sec.
7 Suppl. Decl., Dkt. No. 29, at ¶¶ 3–6). The table below summarizes the productions:
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June 2019 January 2020 Final Vaughn Index
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Released in any form 31 813 844
10 Released in Full 31 226 257
Released in Part 0 587 587
11 Withheld in Full 3,078 2,435 2,435
Withheld in any form 2935 3022 3,022
12 Totals 3,109 3,248 3,279
13 In sum, the PTO withheld in some part 3,022 pages of documents under FOIA
14 Exemptions 5, 6, and 7. Its Vaughn index, filed on February 27 along with a motion for
15 summary judgment, asserts the exemptions over 469 documents. The index notes authors and
16 addressees of each document, the title and subject, the specific statutory exemption, and one or
17 several of six categories for withholding under the specified exemptions. The index also
18 includes a key for the categories of withholding and a list of relevant staff and attorneys in
19 OED, the Office of General Law, and the Office of the Solicitor (Dkt. No. 23-2 at 115–200;
20 Dkt. No. 25 fn. 1). Due to the COVID-19 pandemic, this order follows full briefing and a
21 telephonic hearing. It also follows in camera review of four specifically challenged documents.
22 ANALYSIS
23 FOIA lets us see what our government is up to by “provid[ing] public access to official
24 information ‘shielded unnecessarily’ from public view and establish[ing] a ‘judicially
25 enforceable public right to secure such information from possibly unwilling official
26 hands.’” Lahr v. Nat’l Transp. Safety Bd., 569 F.3d 964, 973 (9th Cir. 2009) (quoting Dep’t of
27 Air Force v. Rose, 425 U.S. 352, 361 (1976)). It “mandates a policy of broad disclosure of
1 738, 741 (9th Cir. 1979), overruled on other grounds by Animal Legal Def. Fund v. U.S. Food
2 & Drug Admin., 836 F.3d 987 (9th Cir. 2016). Here, plaintiff complains only that: (1) the PTO
3 provided an insufficient Vaughn index; (2) it improperly withheld several documents under
4 Exemption 5; and (3) two non-attorneys referenced in the index undermine the claimed
5 Exemptions. Notably, plaintiff does not challenge the adequacy of the PTO’s search, nor does
6 it challenge the PTO’s application of Exemptions 6 and 7.
7 1. ADEQUACY OF THE VAUGHN INDEX.
8 Plaintiff rates the PTO’s Vaughn index as inadequate for two reasons. The first
9 misunderstands the record and the second fails to convince.
10 First, plaintiff contends the Vaughn index does not include, and thus cannot justify, the
11 withholding of documents from the PTO’s initial production (Dkt. No. 24 at 3–5). This is
12 factually incorrect, though plaintiff’s misunderstanding may be excused due to the PTO’s
13 piecemeal explanation. The PTO’s initial search returned 3,109 relevant pages, 31 which were
14 produced in full and 3,078 which were withheld in full. The supplemental search revealed 170
15 new pages of material. Ultimately, the two PTO searches revealed 3,279 relevant pages, 257
16 which were released in full, 587 in part, and 2,435 withheld in full. Thus, the complete Vaughn
17 index reports the bases for withholding 3,022 pages (Choe Decl. at ¶ 29; Choe Supp. Decl. at ¶¶
18 3–4; Choe Sec. Suppl. Decl. at ¶¶ 3–6).
19 Second, plaintiff appears to challenge as insufficient the index’s categories of bases for
20 exemption (Dkt. No. 24 at 5–6). A Vaughn index must “identify[] each document withheld, the
21 statutory exemption claimed, and [provide a] particularized explanation of how disclosure of the
22 particular document would damage the interest protected by the claimed exemption.” The
23 index should “afford the FOIA requester a meaningful opportunity to contest, and the district
24 court an adequate foundation to review, the soundness of the withholding.” Simply, the index
25 should level the FOIA playing field for the requester and “permit more effective judicial review
26 of the agency’s decision.” Wiener v. F.B.I., 943 F.2d 972, 977–78 (9th Cir. 1991).
27 This order finds the Vaughn index generally sufficient for the review sought. As seen
1 one exception. But the exception aside, plaintiff does not explain how the index’s employment
2 of various categories of withholding undermines review. Each individual document entry in the
3 Vaughn index describes the document type, source or author, addressee or destination, title,
4 subject, date, and whether withheld in full or redacted in part. Plaintiff’s “generic categories”
5 of withholding are conclusions, applicable to groups of documents, based upon individual
6 descriptions. The people drafting and reading, and the contents and purpose of, the document
7 constitutes the key information this order uses to evaluate whether the document was
8 appropriately withheld.
9 Plaintiff’s only specific challenge is that documents should not be jointly classified under
10 withholding categories A and B (Dkt. No. 24 at 6). But the categories are not mutually
11 exclusive. Category A applies to predecisional and deliberative drafts and documents, where
12 category B applies to predecisional and deliberative documents — not drafts. Both address
13 predecisional and deliberative documents, but category B is narrower because it does not
14 include communications, such as final memoranda and emails, which are not drafts. Plaintiff
15 may be excused for misunderstanding, as the PTO itself injected the ambiguity by defining the
16 term “document” to include “emails [and] letters” in both categories before clarifying the
17 distinction upon reply (Dkt. No. 23-2 at 197; Choe Supp. Decl. at ¶ 20). But a Vaughn index
18 need not be elegant, it need only aid effective review. Plaintiff does not explain how these two
19 categories undermine effective review of the PTO’s application of the exemptions. Thus, this
20 order proceeds to evaluate plaintiff’s specific challenges to the PTO’s withholding.
21 2. WORK-PRODUCT CHALLENGES.
22 Plaintiff challenges the PTO’s bases for withholding four documents as protected attorney
23 work-product under Exemption 5. “When a request is made, an agency may withhold a
24 document, or portions thereof, only if the material at issue falls within one of the nine statutory
25 exemptions found in § 552(b).” “These exemptions are explicitly exclusive and must be
26 narrowly construed in light of FOIA’s dominant objective of disclosure, not
27 secrecy.” Maricopa Audubon Soc. v. U.S. Forest Serv., 108 F.3d 1082, 1085 (9th Cir. 1997)
1 the burden on the government to show that an exemption properly applies to the records it seeks
2 to withhold.” Hamdan v. U.S. Dep’t of Justice, 797 F.3d 759, 772 (9th Cir. 2015).
3 Exemption 5 protects from disclosure “interagency or intra-agency memorandums or
4 letters which would not be available by law to a party other than an agency in litigation with the
5 agency.” Information may be withheld if (1) its source is a government agency, and (2) it
6 “fall[s] within the ambit of a privilege against discovery under judicial standards that would
7 govern litigation against the agency that holds it.” Dep’t of Interior v. Klamath Water Users
8 Protective Ass’n, 532 U.S. 1, 8 (2001). “This exemption has been interpreted as coextensive
9 with all civil discovery privileges.” Sierra Club v. United States Fish & Wildlife Serv., 925 F.3d
10 1000, 1011 (9th Cir. 2019). “These include records that would be protected in litigation by the
11 attorney work-product, attorney-client, and deliberative process privileges.” ACLU Nor. Cal. v.
12 United States Dep’t of Just., 880 F.3d 473, 483 (9th Cir. 2018). But to be clear, “Exemption 5
13 shields those documents, and only those documents, normally privileged in the civil discovery
14 context.” Lahr, 569 F.3d at 979 (quotation omitted).
15 “The attorney work-product privilege protects from discovery in litigation mental
16 impressions, conclusions, opinions, or legal theories of a party’s attorney that were prepared in
17 anticipation of litigation or for trial.” Simply, it permits “attorneys to prepare their thoughts and
18 impressions about a case freely and without reservation.” To qualify for protection, “documents
19 must: (1) be prepared in anticipation of litigation or for trial and (2) be prepared by or for
20 another party or by or for that other party’s representative.” ACLU Nor. Cal., 880 F.3d at 483–
21 84 (quotations omitted). As above, plaintiff challenges four work-product designations.
22 First, plaintiff objects to the designation of documents 415, 420, and 461, described as
23 draft interview outlines and notes attached to emails, but without specified authors (Dkt. No. 24
24 at 6). Plaintiff’s objection to document 415 appears a typographical error, as document 415 is
25 an email chain between Ms. Franz, other OED attorneys Howard Reitz, Ronald Jaicks,
26 Elizabeth Dorsey, and OED paralegal Hannah Robinson discussing Ms. Sapp’s interview.
27 Plaintiff’s parallel reference to Bates numbers 2611–2620 confirm the actual target of the
1 objection is document 418 which, like documents 420 and 461, is an email attachment without
2 an author specified (Dkt. No. 23-2 at 186–87).
3 This objection, though, is unfounded. Email attachments in the index correspond to the
4 email immediately preceding (Choe Supp. Decl. at ¶¶ 10–11, 13). So, the supposedly
5 unauthored documents 418, 420, and 461, each described as “[d]raft outline and notes used for
6 interview with Heather Sapp” are attachments to email documents 417, 419, and 460. OED
7 attorney Jaicks authored and sent documents 417 and 419 to OED attorneys Franz and Reitz.
8 And attorney Jaicks also authored and sent document 460 to Office of the Solicitor attorneys
9 Elizabeth Mendel and Melinda DeAtley. Thus, OED attorneys authored the interview outlines
10 to further their investigation of Ms. Sapp and circulated them for internal OED attorney review,
11 or for advice and review by the Office of the Solicitor (id. at 186–87, 195, 200; Dkt. No. 23-1 at
12 ¶ 36). Plaintiff’s objection does not undermine the conclusion that the PTO correctly identified
13 these documents as, at least, attorney work-product.
14 Nonetheless, the undersigned took the documents for in camera review, confirming the
15 above. Documents 418, 420, and 461 are iterations of an outline for the OED’s interview of
16 Ms. Sapp, part of the agency’s disciplinary investigation. They lay out the interview format,
17 subject matter, and even the specific language of questions to ask. They are, undoubtedly,
18 attorney work-product. And because the documents are agency (the PTO’s) work-product, they
19 fall within Exemption 5. See Klamath, 532 U.S. at 8.
20 Second, plaintiff challenges the designation of document 397, contending its thirty pages
21 of emails, memos, and communication were withheld “without any indication of who the
22 authors [were]” (Dkt. No. 24 at 6). But, as above, the description “Attachment: Exhibits”
23 means document 397 is the batch of exhibits attached to document 396, “Memorandum with
24 attachment” (Choe Supp. Decl. at ¶ 7). OED staff attorney Sarah Franz authored the
25 memorandum (document 396) to memorialize the PTO’s interview of Ms. Sapp for the file —
26 paradigm work-product. And, the PTO concludes, because the exhibits to the memo reflect Ms.
27 Franz’s impressions and evaluation of the interview, their attachment constitutes work-product
1 But a document, otherwise discoverable, does not become undiscoverable merely because
2 an attorney has reviewed it. See Our Children’s Earth Found. v. Nat’l Mar. Fish. Serv., 85 F.
3 Supp. 3d 1074, 1088 (N.D. Cal. 2015) (citing O’Connor v. Boeing N. Am., 185 F.R.D. 272, 280
4 (C.D. Cal. 1999)). Here, the Vaughn index’s failure to describe the underlying exhibits
5 themselves prevents effective review of the PTO’s withholding. From the index alone, it
6 remains unclear whether the underlying exhibits are complete documents or whether they are
7 annotated or excerpted, thus representing attorney impressions. Nor does the index adequately
8 describe the document subjects. And, because Exemption 5 applies, generally, only to intra-
9 agency or interagency documents, failure to specify document authors and addressees may
10 undermine the withholding.
11 Unsurprisingly, in camera review reveals Exemption 5 does not protect document 397.
12 Recall, the exemption covers agency generated documents — it doesn’t cover non-agency
13 authored documents. See Klamath, 532 U.S. at 8. Document 397 contains no agency generated
14 material. Instead, it contains email threads between Ms. Sapp and Mr. Abhyanker — plaintiff’s
15 own email records — and a memorandum from outside ethics counsel.
16 It is true that an attorney’s curation of exhibits, i.e., annotations and excerpts of
17 documents, might be work-product. See ACLU Nor. Cal., 880 F.3d at 483–84. For example,
18 the memorandum from outside ethics counsel does just that — it includes snippets of Ms.
19 Sapp’s instant message communications nested within counsel’s analysis. It does not appear
20 that the PTO’s attorneys similarly curated the pages of document 397, which instead seems to
21 include entire emails or email chains and the entire ethics memorandum. There may be work
22 product in document 397, but it’s not the PTO’s, so Exemption 5 doesn’t apply.
23 But the PTO also asserts Ms. Sapp holds a legitimate privacy interest in the circumstances
24 of the OED’s investigation into her conduct. Thus, it rates disclosure of document 397 both as a
25 clearly unwarranted invasion of Ms. Sapp’s personal privacy generally and an unwarranted
26 invasion of her personal privacy interest in law enforcement documents involving her (Dkt. No.
27 23 at 20–25). Despite the fair opportunity to challenge these grounds in its opposition brief,
1 interest, document 397 was appropriately withheld under Exemptions 6 and 7(C). See Lahr,
2 569 F.3d at 973–74.
3 3. NON-ATTORNEYS REFERENCED IN VAUGHN INDEX.
4 Plaintiff finally objects to two individuals referenced in the Vaughn index who it contends
5 are not attorneys. Both represent misunderstandings that do not undermine the PTO’s
6 application of exemptions.
7 First, plaintiff contends that Robert Walker, “Administrative Management Special,” is
8 identified in the index’s list of attorneys and staff, but he is nowhere identified along with a
9 withheld document. Thus, “without clarifying what documents he authored it is impossible to
10 determine” whether the claimed exemptions apply (Dkt. No. 24 at 6). Plaintiff does not,
11 however, identify any documents in the Vaughn index to which this concern might apply.
12 Regardless, the PTO explains there are none. Mr. Walker is referenced as Office of General
13 Law staff, but all documents containing his name were in-fact released in full to plaintiff (Choe
14 Suppl. Decl. at ¶ 21). So, this misunderstanding does not undermine any withholdings.
15 Second, plaintiff notes that documents 165, 172, 203, and 347 reference “Timothy
16 Rooney,” an individual unidentified in the original Vaughn index list of staff and attorneys. The
17 PTO withheld each document under Exemption 5 (Dkt. No. 24 at 6–7). But as plaintiff rightly
18 notes, Exemption 5 generally protects only “interagency or intra-agency” documents — the
19 presence of an outsider could undermine application of the exemption. See 5 U.S.C.
20 § 552(b)(5). The PTO clarified in reply, however, that Mr. Rooney is an OED attorney
21 “inadvertently omitted from the List of USPTO Attorneys and Staff” in the Vaughn index (Choe
22 Suppl. Decl. at ¶ 22). So, his involvement in four iterations of drafting Ms. Sapp’s settlement
23 agreement does not undermine the PTO’s withholding under Exemption 5.
24 CONCLUSION
25 No genuine disputes remain. The PTO’s search was adequate. Most documents were
26 properly withheld under Exemption 5. One document was not, but plaintiff does not challenge
27 the withholding under Exemptions 6 and 7. Because plaintiff’s remaining objections to the
1 PTO’s withholding are soundly addressed, summary judgment is appropriate. Thus, the PTO’s
2 motion is GRANTED.
3 It bears stating, however, that though the several misunderstandings noted above did not
4 undermine the PTO’s application of exemptions, they illustrate the necessity of comprehensive
5 and accurate Vaughn indices. Government agencies enjoy an unusually powerful position in
6 FOIA cases, where the facts, the documents, and the reasons for withholding begin (and often
7 stay) completely within the agency’s control. “This lack of knowledge by the party seeking
8 disclosure seriously distorts the traditional adversary nature of our legal system[].” See Wiener,
9 943 F.2d at 977 (citing Vaughn v. Rosen, 484 F.2d 820, 824 (D.C. Cir. 1973)). Recall, among
10 other things, FOIA affords private citizens the ability to hold the government to its own rules.
11 See Oregon Nat’! Desert Ass’n v. Locke, 572 F.3d 610, 614 (9th Cir. 2009). Errors, inadvertent
12 to the government, are often more serious for a plaintiff. Next time, the PTO and counsel
5 13 would do well to review submissions once more.
IT IS SO ORDERED.
a 16 Dated: April 16, 2020.
18 [A= Phe
ILLIAM ALSUP
19 UNITED STATES DISTRICT JUDGE
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