Abhyanker v. United States Patent & Trademark Office

1

2

3

4 UNITED STATES DISTRICT COURT

5 NORTHERN DISTRICT OF CALIFORNIA

6

7 RAJ ABHYANKER, Case No. 23-cv-00746-AMO

8 Plaintiff,

ORDER RE: DEFENDANT’S MOTION

9 v. FOR SUMMARY JUDGMENT

10 UNITED STATES PATENT & Re: Dkt. No. 35

TRADEMARK OFFICE,

11

Defendant.

12

13 This is a Freedom of Information Act (“FOIA”) case. Defendant United States Patent &

14 Trademark Office’s (“USPTO”) motion for summary judgment was heard before this Court on

15 May 9, 2024. Having carefully considered the arguments advanced at the hearing, together with

16 the parties’ papers, as well as the relevant legal authority, the Court hereby GRANTS USPTO’s

17 motion, for the following reasons. The Court additionally considers the several pending

18 administrative motions to seal.

19 I. BACKGROUND

20 Plaintiff Raj Abhyanker is an attorney and principal of the law firm Legalforce RAPC

21 Worldwide, P.C. He initiated a FOIA request and this lawsuit based on a FOIA request to obtain

22 documents related to the USPTO’s ethics investigation into his legal practice. See ECF 1.

23 Defendant USPTO is the federal agency responsible for granting United States patents and

24 registering trademarks. In doing so, the agency fulfills the mandate of Article I, Section 8, Clause

25 8, of the Constitution. Under Title 35 U.S.C. § 2(b)(2)(D), Congress vested USPTO with

26 authority to promulgate regulations that “may govern the recognition and conduct of agents,

27 attorneys, or other persons representing applicants or other parties before the Office.” In

1 the USPTO’s disciplinary jurisdiction, and the USPTO’s Office of Enrollment and Discipline

2 (“OED”) is authorized to investigate possible grounds for discipline. Trujillo Decl. ¶ 39.

3 A. USPTO’s Disciplinary Investigation of Abhyanker

4 The disciplinary proceeding against Abhyanker commenced with a complaint filed on

5 December 23, 2019, pursuant to 37 C.F.R. §§ 11.32 and 11.34. See Ferman Decl. ¶ 2. A

6 designated hearing officer conducted a hearing in Abhyanker’s disciplinary proceeding pursuant to

7 37 C.F.R §§ 11.39 and 11.44. Id. ¶ 3. The hearing concluded on April 20, 2023. Id. The matter

8 has been briefed and submitted, and the parties await an initial decision from the hearing officer,

9 pursuant to 37 C.F.R. § 11.54. Id.1

10 B. Abhyanker’s FOIA Requests

11 Abhyanker made two FOIA requests related to USPTO’s investigation and decision to

12 initiate disciplinary action against him.

13 1. First FOIA Request (No. FP-22-00010)

14 On May 29, 2022, Abhyanker submitted a FOIA request. Trujillo Decl. ¶ 4, Ex. 1. He

15 requested:

16 All records containing, describing, pertaining to, or referring to:

17 A. Memo Authorizing the Investigation against me, Raj Abhyanker,

in G3651 believed to authored by USPTO attorney at the Office of

18 Enrollment and Discipline (OED), Ronald Jaicks on or about March

2019.

19

B. Charging Document against me, Raj Abhyanker, in G3651

20 believed to be authored by USPTO staff attorney at the OED, Paul

Nguyen Ba on or about September 2019-January 2020.

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22

23

24

1 After a hearing officer issues an initial decision, either party, or both, may appeal that initial

decision to the USPTO Director pursuant to 37 C.F.R. § 11.55. If a hearing officer’s initial

25

decision is appealed, the USPTO Director is tasked with reviewing the appeal and issuing a final

decision under 37 C.F.R. § 11.56. Either party, or both, may request reconsideration of the

26

USPTO Director’s final decision. Under 37 C.F.R. § 11.57(a), “[r]eview of the final decision by

the USPTO Director in a disciplinary case may be had by a petition filed in accordance with 35

27

U.S.C. § 32. Any such petition shall be filed within 30 days after the date of the final decision.”

1 Id., Ex. 1. On June 1, 2022, USPTO’s FOIA Office sent an acknowledgment letter to Abhyanker

2 and assigned his request tracking number FOIA Request No. FP-22-00010. Id. ¶ 5, Ex. 2. The

3 FOIA Office responded to Abhyanker’s FOIA request on February 17, 2023, noting that it had

4 identified responsive records, but withheld all records in full pursuant to FOIA Exemptions 5, 6,

5 7(C), and 7(E). Id. ¶ 6, Ex. 3.

6 Abhyanker submitted an administrative appeal of the USPTO’s initial denial of FOIA

7 Request FP-22-00010 on February 23, 2023. Trujillo Decl. ¶ 8, Ex. 4. In this appeal, he narrowed

8 the scope of the request by removing the language “[a]ll records containing, describing, pertaining

9 to, or referring to” from the beginning of the requested records. Id., Ex. 4.

10 On March 23, 2023, USPTO issued a decision on Abhyanker’s FOIA appeal. Id. ¶ 9, Ex.

11 5. The agency reviewed Abhyanker’s administrative appeal (A-23-00007) de novo and upheld the

12 denial on modified grounds – it added more exemptions as bases to deny the release of the

13 requested records, including FOIA (5 U.S.C. § 552) Exemption 7(A) and Privacy Act (5 U.S.C.

14 § 552a) Exemptions (d)(5) and (k)(2). Id. ¶ 10, Ex. 5. Lastly, the USPTO upheld the original

15 bases for denial, FOIA Exemptions 5, 6, 7(C), and 7(E). Id.

16 2. Second FOIA Request (No. FP-23-00013)

17 On March 23, 2023, with this suit pending, Abhyanker submitted another FOIA request,

18 seeking:

19 A. List of exhibits that Paul Nguyen Ba use to “make a package” for

his recommendation.

20

B. Outline of memorialized notes by Nguyen Ba in the USPTO

21 docketing system for this case.

22 C. The Committee on Discipline’s determination of probable cause as

described in 37 CFR § 11.32.

23

24 Trujillo Decl. ¶ 11, Ex. 6. That same day, the FOIA Office sent an acknowledgement to

25 Abhyanker and assigned it FP-23-00013. Id. ¶ 12, Ex. 7.

26 On August 4, 2023, the FOIA Office responded to FP-23-00013. Id. ¶ 13, Ex. 8. The

27 response explained that the FOIA Office had already released the list of exhibits that Abhyanker

1 litigation. Id. (citing Bates USPTO000340-000341). The response further explained that, with

2 regard to Parts B and C of the request, responsive records had been identified, but such records

3 were being withheld in full pursuant to FOIA Exemptions 5, 7(A) and Privacy Act Exemptions

4 (d)(5) and (k)(2). Id.

5 Abhyanker submitted an administrative appeal of the USPTO’s initial denial of FOIA

6 Request FP-23-00013 on August 8, 2023. Id. ¶ 14, Ex. 9. USPTO denied Abyanker’s appeal on

7 September 1, 2023. Id. ¶ 16, Ex. 11. On December 30, 2023, Abhyanker amended his complaint

8 in this case to include FP-23-00013. ECF 27.

9 3. USPTO’s Search for Responsive Documents

10 Based on the nature of Abhyanker’s FOIA requests, the FOIA Office determined that all

11 responsive records would be located within Office of Enrollment and Discipline (“OED”), since

12 his requests sought records related to his disciplinary investigation. Trujillo Decl. ¶ 17. OED is

13 responsible for registering attorneys and agents to practice before the USPTO and for developing

14 and administering the registration examination. See generally, 37 C.F.R. Part 11. OED located

15 the two memoranda that Abhyanker sought in FP-22-00010 and provided them to the FOIA Office

16 for processing. Id. ¶ 20. Additionally, OED located Nguyen Ba’s memorialized notes (which also

17 happened to be contained within the exhibits of the Committee on Discipline memorandum) and

18 the Committee on Discipline probable cause determination, which Abhyanker seeks in FP-23-

19 00013, and provided them to the FOIA Office for processing. Id. ¶ 21.

20 As described above, UPSTO identified the two memoranda that Abhyanker requested in

21 FP-22-00010. The memoranda and their associated exhibits consisted of a total of 1,619 pages of

22 material: “the Ron Jaicks memorandum;” a seven-page memorandum (USPTO000001-000007)

23 and 14 exhibits (USPTO000008-000124) (together, the “Jaicks memo”); and Nguyen Ba’s

24 recommendation memorandum to the Committee on Discipline; a 44-page memorandum

25 (USPTO000125- 000168), Rule Violation Chart (USPTO 000169- 000170), Appendices A-C

26 (USPTO 000171- 000339), Exhibit List (USPTO000340- 000341), and 39 Exhibits

27 (USPTO000342- 001619) (together, the “Committee memo”). See Trujillo Decl. ¶ 22.

1 As described above, the FOIA Office identified a two-page exhibit list requested in FP-23-

2 00013 (USPTO000340-000341), including Nguyen Ba’s memorialized notes and a one-page

3 probable cause determination (USPTO001620). Id. ¶ 23.

4 4. Production of Responsive Documents

5 During the pendency of the lawsuit, the FOIA Office re-reviewed the responsive records

6 and elected to revise its earlier denial decisions. On June 29, 2023, the USPTO provided

7 Abhyanker with 1,566 of the 1,619 pages that were identified as responsive. Trujillo Decl. ¶ 24.

8 All 1,566 pages were released in their entirety and without any redactions. Id. Specifically, the

9 FOIA Office released all of the exhibits that corresponded to the Jaicks memo. Id. The FOIA

10 Office also released all appendices, the rule violations chart, the exhibit list, and exhibits that

11 corresponded to the Committee memo. Id.

12 Subsequently, on December 1, 2023, USPTO released a redacted version of the Jaicks

13 memo, which had previously been withheld in its entirety. Trujillo Decl. ¶ 25, Ex. 12. On

14 February 5, 2024, USPTO released a redacted version of the one-page probable cause

15 determination, which had previously been withheld in its entirety and further explained that

16 Nguyen Ba’s memorialized notes had already been provided in the June 29, 2023 supplemental

17 production. Id. ¶ 26, Exs. 14-15.

18 USPTO continues to withhold the Jaicks memo (7 pages) in part and the Committee memo

19 (44 pages) in full. Trujillo Decl. ¶ 27. USPTO continues to partially withhold the probable cause

20 determination identified in the second FOIA request (1 page). Id. Altogether, USPTO continues

21 to withhold, in full or in part, 52 pages.

22 USPTO withholds portions of the Jaicks memo pursuant to FOIA Exemptions 6, 7(A) and

23 7(C) and Privacy Act Exemptions (d)(5) and (k2). Trujillo Decl. ¶ 28. USPTO withholds the

24 Committee memo pursuant to the attorney work product privilege and deliberative process

25 privilege recognized under FOIA Exemption 5 and FOIA Exemption 7(A) and Privacy Act

26 Exemptions (d)(5) and (k2). Id. USPTO withholds portions of the probable cause determination,

27 specifically, the signature blocks of the committee members, pursuant to Exemptions 6 and 7(C)

1 II. DISCUSSION

2 There are several motions pending. The Court first addresses the administrative motions to

3 seal before turning to the merits of the USPTO’s motion for summary judgment.

4 A. Administrative Motions to Seal

5 Abhyanker moves to file under seal Exhibits 1 through 7 of the First Amended Complaint.

6 ECF 28. There is a strong presumption in favor of public access to judicial records and

7 documents. Kamakana v. City & Cnty. Of Honolulu, 447 F.3d 1172, 1178 (9th Cir. 2006).

8 Accordingly, when considering a sealing request, “a ‘strong presumption in favor of access’ is the

9 starting point.” Id. (quoting Foltz v. State Farm Mut. Auto. Ins. Co., 331 F.3d 1122, 1135 (9th Cir.

10 2003)). Parties seeking to seal judicial records relating to motions that are “more than tangentially

11 related to the underlying cause of action” bear the burden of overcoming the presumption with

12 “compelling reasons” that outweigh the general history of access and the public policies favoring

13 disclosure. Ctr. for Auto Safety v. Chrysler Grp., 809 F.3d 1092, 1099 (9th Cir. 2016); Kamakana,

14 447 F.3d at 1178-79.

15 In addition, in this district, all parties requesting sealing must comply with Civil Local

16 Rule 79-5. That rule requires, among other things, the moving party provide “the reasons for

17 keeping a document under seal, including an explanation of: (i) the legitimate private or public

18 interests that warrant sealing; (ii) the injury that will result if sealing is denied; and (iii) why a less

19 restrictive alternative to sealing is not sufficient.” Civ. L.R. 79-5(c)(1). Further, Civil Local Rule

20 79-5 requires the moving party to provide “evidentiary support from declarations where

21 necessary.” Civ. L.R. 79-5(c)(2). And the proposed order must be “narrowly tailored to seal only

22 the sealable material.” Civ. L.R. 79-5(c)(3).

23 Here, the exhibits attached to his First Amended Complaint are more than tangentially

24 related to Plaintiff’s claims – they constitute the very substance of his FOIA challenge – and

25 Abhyanker must accordingly provide a compelling reason for sealing. To that end, Abhyanker

26 moves to seal the materials “to protect the privacy and security of certain individuals and facts”

27 named in his filings. ECF 28 at 2. In support of his motion, Abhyanker declares that the materials

1 individuals whose privacy rights should be protected, who have not provided consent, and the

2 disclosure of which might materially harm reputations.” See Abhyanker Decl. (ECF 29) ¶ 3.2

3 This thin, vague explanation falls well short of the “compelling reasons” standard necessary to

4 overcome the presumption in favor of public access. Ctr. for Auto Safety, 809 F.3d at 1099. It

5 also falls well short of the explanations and specific tailoring required by Civil Local Rule 79-5.

6 Therefore, the Court DENIES the administrative motion to seal.

7 B. Motion for Summary Judgment

8 USPTO moves for summary judgment on all of Abhyanker’s FOIA claims, arguing that

9 the agency adequately searched for documents responsive to his requests and that the agency

10 properly withheld or redacted certain documents under applicable FOIA exemptions. The Court

11 sets forth the legal standard for summary judgment before turning to the adequacy of USPTO’s

12 search and the application of the several FOIA exemptions.

13 1. Legal Standard

14 A party may move for summary judgment on a “claim or defense” or “part of . . . a claim

15 or defense.” Fed. R. Civ. P. 56(a). Summary judgment is appropriate when there is no genuine

16 dispute as to any material fact and the moving party is entitled to judgment as a matter of law. Id.

17 The party seeking summary judgment bears the initial burden of informing the court of the basis

18 for its motion, and of identifying those portions of the pleadings and discovery responses that

19 demonstrate the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S.

20 317, 323 (1986). Material facts are those that might affect the outcome of the case. Anderson v.

21 Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute as to a material fact is “genuine” if there

22 is sufficient evidence for a reasonable jury to return a verdict for the nonmoving party. Id.

23

24

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2 During the hearing, the Court discussed with the parties the need to maintain under seal the

documents involved in the ongoing USPTO disciplinary matter brought against Abhyanker. That

26

conversation revealed that at least part of Abhyanker’s motivation in seeking to seal these

materials is to prevent potential personal embarrassment arising from public disclosure of the

27

documents. To the extent Abhyanker seeks to prevent public disclosure of the documents

1 When the moving party has carried its burden, the nonmoving party must respond with

2 specific facts, supported by admissible evidence, showing a genuine issue for trial. Fed. R. Civ. P.

3 56(c), (e). The asserted disputed facts must be material – the existence of only “some alleged

4 factual dispute between the parties will not defeat an otherwise properly supported motion for

5 summary judgment.” Anderson, 477 U.S. at 247-48.

6 When deciding a summary judgment motion, a court must view the evidence in the light

7 most favorable to the non-moving party and draw all justifiable inferences in its favor. Id. at 255;

8 Hunt v. City of Los Angeles, 638 F.3d 703, 709 (9th Cir. 2011). However, when a non-moving

9 party fails to produce evidence rebutting defendants’ showing, then an order for summary

10 adjudication is proper. Nissan Fire & Marine Ins. Co. v. Fritz Companies, Inc., 210 F.3d 1099,

11 1103 (9th Cir. 2000) (“If the nonmoving party fails to produce enough evidence to create a

12 genuine issue of material fact, the moving party wins the motion for summary judgment.”). The

13 court’s function on a summary judgment motion is not to make credibility determinations or

14 weigh conflicting evidence with respect to a disputed material fact. See T.W. Elec. Serv., Inc., v.

15 Pac. Elec. Contractors Ass’n, 809 F.2d 626, 630 (9th Cir. 1987).

16 Summary judgment is recognized as a proper avenue for resolving a FOIA claim. See

17 Sakamoto v. U.S. Envt’l Prot. Agency, 443 F. Supp. 2d 1182, 1188 (N.D. Cal. 2006). In fact, it “is

18 the procedural vehicle by which nearly all FOIA cases are resolved.” Nat’l Resources Defense

19 Council v. U.S. Dep’t of Defense, 388 F. Supp. 2d 1086, 1094 (C.D. Cal. 2005). In FOIA cases,

20 the usual summary judgment standards apply and “if there are genuine issues of material fact in a

21 FOIA case, the district court should proceed to a bench trial or adversary hearing” and issue

22 findings of fact and conclusions of law. Animal Legal Def. Fund v. U.S. Food & Drug Admin.,

23 836 F.3d 987, 990 (9th Cir. 2016) (citing Fed. R. Civ. P. 52(a)(1)); see also Cameranesi v. U.S.

24 Dep’t of Defense, 856 F.3d 626, 636 (9th Cir. 2017) (clarifying that courts apply the usual

25 summary judgment standard to FOIA cases). An agency bears the burden of establishing that an

26 exemption applies. Lahr v. Nat’l Transp. Safety Bd., 569 F.3d 964, 973 (9th Cir. 2009).

27 The government may meet its burden by submitting agency affidavits or declarations that

1 demonstrate that the information withheld logically falls within the claimed exemption, and are

2 not controverted by either contrary evidence in the record nor by evidence of agency bad faith.”

3 Military Audit Project v. Casey, 656 F.2d 724, 738 (D.C. Cir. 1981); see also Kamman v. IRS, 56

4 F.3d 46, 48 (9th Cir. 1995) (noting that government affidavits “may not rely upon conclusory and

5 generalized allegations of exemptions”). “If the affidavits contain reasonably detailed descriptions

6 of the documents and allege facts sufficient to establish an exemption, the district court need look

7 no further” and may grant summary judgment to the government based entirely on the basis of

8 information set forth in the affidavit. Lane v. Dep’t of the Interior, 523 F.3d 1128, 1135-36 (9th

9 Cir. 2008); Kamman, 56 F.3d at 48; Military Audit Project, 656 F.3d at 738.

10 2. Adequacy of USPTO’s Search for Responsive Records

11 Abhyanker challenges the adequacy of USPTO’s search for records responsive to his two

12 FOIA requests. “FOIA requires an agency responding to a request to ‘demonstrate that it has

13 conducted a search reasonably calculated to uncover all relevant documents.’” Lahr, 569 F.3d at

14 986 (quoting Zemansky v. EPA, 767 F.2d 569, 571 (9th Cir. 1985)). FOIA requires the agency to

15 show that it “conducted a search reasonably calculated to uncover all relevant documents.” Rojas

16 v. Fed. Aviation Admin., 989 F.3d 666, 677 (9th Cir. 2021) (en banc) (quoting Zemansky, 767 F.2d

17 at 571). In evaluating the adequacy of the search, the issue “is not whether there might exist any

18 other documents possibly responsive to the request, but rather whether the search for those

19 documents was adequate.” Lahr, 569 F.3d at 987; see also SafeCard Servs., 926 F.2d at 1201

20 (“[T]he factual question . . . is whether the search was reasonably calculated to discover the

21 requested documents, not whether it actually uncovered every document extant.”). A requester

22 cannot challenge the adequacy of a search by “purely speculative claims about the existence and

23 discoverability of other documents.” SafeCard Servs., Inc. v. S.E.C., 926 F.2d 1197, 1200 (D.C.

24 Cir. 1991).

25 USPTO maintains that its search efforts were reasonable and adequate under law because,

26 plainly, Plaintiff requested specific records regarding the disciplinary case against him, and the

27 USPTO found the documents Plaintiff requested. See Trujillo Decl. ¶¶ 17-21.

1 Related to Abhyanker’s first FOIA request, No. FP-22-00010, UPSTO identified the two

2 memoranda that Abhyanker sought in FP-22-00010, which consisted of a total of 1,619 pages of

3 material: the Jaicks memo and the Committee memo, along with their associated exhibits. Trujillo

4 Decl. ¶ 22. Further, the FOIA Office identified a two-page exhibit list, Nguyen Ba’s

5 memorialized notes and a one-page probable cause determination. Id. ¶ 23.

6 Abhyanker’s first FOIA requested “[a]ll records containing, describing, pertaining to, or

7 referring to” the two specified documents; however, in his appeal, he narrowed the scope of the

8 request by removing this language. Id. ¶ 8, Ex. 4. Abhyanker acknowledges that he narrowed the

9 scope of his request in this way and that he sought only these memoranda.

10 Abhyanker’s subsequent FOIA request (No. FP-23-00013) sought the following specific

11 documents: (A) List of exhibits that Paul Nguyen Ba use to “make a package” for his

12 recommendation; (B) Outline of memorialized notes by Nguyen Ba in the USPTO docketing

13 system for this case; and (C) The Committee on Discipline’s determination of probable cause as

14 described in 37 C.F.R. § 11.32. See Trujillo Decl. ¶ 11, Ex. 6. In its response to the FOIA

15 request, the FOIA Office explained that the list of exhibits sought in Part A of his request had

16 already been released to Plaintiff. Id. ¶ 13, Ex. 8. Additionally, OED located Nguyen Ba’s

17 memorialized notes (which also happened to be contained within the exhibits of the Committee on

18 Discipline memorandum) and the Committee on Discipline probable cause determination, which

19 Abhyanker seeks in FP-23-00013. Id. ¶ 21.

20 Given that USPTO found all of the documents Abhyanker requested in his two FOIA

21 requests, there can be no question that USPTO used a search method sufficient to produce the

22 information Abhyanker requested. See Lahr, 569 F.3d at 986 (finding an agency’s record search

23 adequate where it used methods which could be reasonably expected to produce the information

24 requested). Though Abhyanker focuses his argument on the absence of well-defined search terms

25 to demonstrate the extent of USPTO’s search, his arguments do not stand up against this fact. The

26 Court therefore finds that USPTO’s searches were reasonable and adequate under the

27 circumstances of this case and controlling law.

1 3. FOIA Exemption 5

2 The Supreme Court has consistently rejected the idea that a party can “obtain through the

3 FOIA material that is normally privileged [because it] would create an anomaly in that the FOIA

4 could be used to supplement civil discovery.” United States v. Weber Aircraft Corp., 465 U.S.

5 792, 801 (1984). To this end, “Exemption 5 encompasses records ‘normally privileged in the civil

6 discovery context.’” Am. Civil Liberties Union of N. Calif. v. U.S. Dep’t of Justice, 880 F.3d 473,

7 483 (9th Cir. 2018) (quoting Nat. Labor Relations Bd. v. Sears, Roebuck & Co., 421 U.S. 132, 149

8 (1975)). FOIA Exemption 5 also withholds from disclosure “inter-agency or intra-agency

9 memorandums or letters” that are not discoverable in litigation. 5 U.S.C. § 552(b)(5).

10 USPTO argues that the Committee memo falls within the bounds of Exemption 5 because

11 it is privileged as (1) attorney work product and (2) product of the agency’s deliberative process.

12 a. Work Product

13 “To qualify for work-product protection, documents must: (1) be ‘prepared in anticipation

14 of litigation or for trial’ and (2) be prepared ‘by or for another party or by or for that other party’s

15 representative.’” United States v. Richey, 632 F.3d 559, 567 (9th Cir. 2011).

16 Here, the Committee memo was prepared by Nguyen-Ba, the OED attorney who was

17 assigned to investigate misconduct allegations against Abhyanker. Trujillo Decl. ¶ 31. OED’s

18 Committee on Discipline considered allegations that Abhyanker, a registered practitioner before

19 USPTO, violated various provisions of the USPTO Code of Professional Responsibility and/or the

20 USPTO Rules of Professional Conduct. Id. The Committee memo is dated September 25, 2019,

21 and consists of Nguyen-Ba’s legal analysis and recommendations regarding Abhyanker’s alleged

22 misconduct. Id. ¶ 32. Nguyen-Ba presented the memo as part of the presentation of evidence for

23 the Committee on Discipline to consider in determining whether probable cause existed to bring

24 charges under 37 C.F.R. § 11.32 against Abhyanker; the Committee’s probable cause findings and

25 recommendations were then forwarded to the OED Director. See also Trujillo Decl. ¶ 32. The

26 OED Director reviewed these findings in deciding whether to file a complaint against the

27 practitioner. Id. Given this context, it is clear that Nguyen-Ba prepared the Committee memo in

1 Abhyanker argues that the attorney work product privilege does not apply here because the

2 materials sought were prepared in the routine work of the agency, not in anticipation for litigation.

3 He fails to present any evidence to this effect. Moreover, his contention is directly contradicted by

4 the record evidence presented by the USPTO, which shows that it was prepared in contemplation

5 of litigation that the agency then initiated.

6 On this same point, the administrative law judge presiding over Abhyanker’s disciplinary

7 proceeding, Administrative Law Judge J. Jeremiah Mahoney, denied Plaintiff’s request to obtain

8 the Committee memo during discovery. Trujillo Decl. ¶ 34. In a May 22, 2022 Order, the judge

9 ruled that the Committee memo is protected by the attorney work product privilege. Id. & Ex. 15.

10 In sum, because the Committee memo is attorney work product, it is properly exempted

11 from disclosure under FOIA Exemption 5.

12 b. Deliberative Process

13 Exemption 5 also protects from disclosure documents created as part of an agencies’

14 deliberative process, which encompasses “inter-agency or intra-agency” documents “reflecting

15 advisory opinions, recommendations and deliberations comprising part of a process by which

16 governmental decisions and policies are formulated.” Carter v. U.S. Dep’t of Commerce, 307

17 F.3d 1084, 1089 (9th Cir. 2002) (quoting Dep’t of Interior v. Klamath Water Users Protective

18 Ass’n, 532 U.S. 1, 8 (2001)). The deliberative process privilege is intended to “enhance the

19 quality of agency decisions, by protecting open and frank discussion among those who make them

20 within the Government” and “rests on the obvious realization that officials will not communicate

21 candidly among themselves if each remark is a potential item of discovery and front page news.”

22 Klamath, 532 U.S. at 8-9 (internal citations omitted). The purpose of the deliberative process

23 privilege “is to prevent injury to the quality of agency decisions.” Maricopa Audubon Soc’y v.

24 U.S. Forest Serv., 108 F.3d 1089, 1092 (9th Cir. 1997).

25 The deliberative process privilege “shields from disclosure documents that are both

26 ‘predecisional’ and part of the agency’s ‘deliberative process.’” Kowack v. U.S. Forest Serv., 766

27 F.3d 1130, 1135 (9th Cir. 2014); see also Maricopa Audubon Soc’y, 108 F.3d at 1093.

1 his decision,’” Assembly of State of Cal. v. U.S. Dep’t of Com., 968 F.2d 916, 921 (9th Cir. 1992)

2 (quoting Renegotiation Board v. Grumman Aircraft Engineering Corp., 421 U.S. 168, 184

3 (1975)), and may include “recommendations [and] draft documents,” Assembly of the State of

4 Cal., 968 F.2d at 920. Predecisional materials are “deliberative” if “disclosure of the materials

5 would expose [the] agency’s decisionmaking process in such a way as to discourage candid

6 discussions within the agency and thereby undermine the agency’s ability to perform its

7 functions.” Kowack, 766 F.3d at 1135.

8 Here, the Committee memo is predecisional because it does not constitute OED’s final

9 decision regarding discipline (i.e., OED Director’s complaint against Plaintiff) and instead

10 represents the investigating attorney’s recommendation to the Committee, which is responsible for

11 reviewing the evidence and providing a probable cause finding to the OED Director. See Trujillo

12 Decl. ¶ 37. To disclose this information would reveal internal deliberations between the OED

13 Director and the Committee, namely, internal analysis, impressions, and recommendations. Id.

14 ¶ 38. Disclosure would jeopardize the candid and comprehensive discussions that are essential for

15 efficient and effective agency decision-making regarding the discipline of practitioners. See

16 Kowack, 766 F.3d at 1135. The interests of OED attorneys in presenting their analysis and

17 recommendations to the Committee without fearing that these sensitive internal communications

18 will be released publicly remains a compelling interest supporting withholding of such internal

19 communications. Id.

20 Therefore, the Court finds that USPTO properly withheld the Committee memo under

21 Exemption 5 because it is both attorney work product and protected by the deliberative process

22 privilege.

23 4. FOIA Exemption 7(A)

24 USPTO asserts Exemption 7(A) covers the redacted portions of the Jaicks memo and the

25 Committee memo. FOIA Exemption 7(A) exempts from disclosure “records or information

26 compiled for law enforcement purposes, but only to the extent that the production of such law

27 enforcement records or information [ ] could reasonably be expected to interfere with enforcement

1 documents were compiled for law enforcement purposes, which requires an examination of

2 whether the agency serves a “law enforcement function.” Church of Scientology Int’l v. IRS, 995

3 F.2d 916, 919 (9th Cir. 1993). The distinction between civil and criminal law enforcement

4 proceedings does not alter this analysis. See Tax Analysts v. IRS, 294 F.3d 71 (D.C. Cir. 2002)

5 (“‘law enforcement purposes’ under Exemption 7 includes both civil and criminal matters within

6 its scope . . . FOIA makes no distinction between agencies whose principal function is criminal

7 law enforcement and agencies with both law enforcement and administrative functions.”) (citing

8 Pratt v. Webster, 673 F.2d 408, 416 (D.C. Cir. 1982)).

9 The documents in question here were compiled and/or created in furtherance of the

10 USPTO’s mission: to enforce the disciplinary rules pursuant to its authorities under 35 U.S.C.

11 § 2(b)(2)(D), which authorizes the USPTO to “govern the recognition and conduct of agents,

12 attorneys, or other persons representing applicants or other parties before the Office.” See Trujillo

13 Decl. ¶ 41. Abhyanker’s FOIA requests seek records regarding OED’s investigation into his

14 alleged misconduct. Id. While the investigative phase of the attorney discipline enforcement

15 proceeding has ended, the proceeding is still active because the parties are awaiting the decision

16 from the administrative law judge, and once that decision is issued, the parties have various

17 administrative appeal options and federal court options. Id.

18 The Jaicks memo concerns OED’s initial findings, impressions, and opinions regarding

19 whether OED should proceed in opening a disciplinary case against Abhyanker. Trujillo Decl.

20 ¶ 42. Disclosure of portions of the Jaicks memo withheld under Exemption 7(A) would impede

21 the ongoing disciplinary proceedings. See 5 U.S.C. § 552(b)(7)(A).

22 USPTO similarly contends that Exemption 7(A) applies to the Committee memo. Mot. at

23 15 (citing Trujillo Decl. ¶ 43). The memo was drafted at the conclusion of the investigation into

24 Abhyanker by an attorney and reflects the strengths and weaknesses of whether charges should be

25 brought and which charges should be brought against him. Id. To provide this memo to

26 Abhyanker by way of a FOIA request would prejudice the Government’s ongoing case. The

27 Court accordingly agrees that the redacted memo and the withheld memo fall within the law

5. FOIA Exemption 6 and 7(C) Redactions

1

USPTO advances that Exemption 6, in conjunction with Exemption 7(C), applies to a

2

small portion of the first page of the Jaicks memo that contains information about OED’s

3

disciplinary investigations of individuals other than Abhyanker. Exemption 6 protects information

4

about individuals in “personnel and medical files and similar files” when the disclosure of such

5

information “would constitute a clearly unwarranted invasion of personal privacy.” 5 U.S.C.

6

§ 552(b)(6). Under Exemption 6, the concept of privacy not only encompasses that which is

7

inherently private, but also includes an “individual’s control of information concerning his or her

8

person.” DOJ v. Reporters Comm. for Freedom of the Press, 489 U.S. 749, 763 (1989). In order

9

to determine whether Exemption 6 protects against disclosure, courts require that agencies engage

10

in a multi-part process. First, a court must determine whether the information at issue is contained

11

within a personnel, medical, or “similar” file. 5 U.S.C. § 552(b)(6). Second, a court must

12

determine whether there is a significant privacy interest in the requested information. See Multi

13

Ag Media LLC. v. USDA, 515 F.3d 1224, 1229 (D.C. Cir. 2008) (superseded on other grounds by

14

7 U.S.C. § 8791(b)(2)). Third, the court must evaluate the requester’s asserted FOIA public

15

interest in disclosure. See Nat’l Archives & Records Admin. v. Favish, 541 U.S. 157, 160 (2004).

16

Finally, if there is a significant privacy interest in nondisclosure and a FOIA public interest in

17

disclosure, the court must balance those competing interests to determine whether disclosure

18

“would constitute a clearly unwarranted invasion of personal privacy.” 5 U.S.C. § 552(b)(6). In

19

particular, Exemption 6 states that FOIA does not apply to “personnel and medical files and

20

similar files the disclosure of which would constitute a clearly unwarranted invasion of personal

21

privacy.” 5 U.S.C. § 552(b)(6). Because Exemption 6 speaks of an “unwarranted” invasion of

22

personal privacy, “a court must balance the public interest in disclosure against the interest

23

Congress intended the [e]xemption to protect.” U.S. Dep’t of Def. v. Fed. Labor Relations Auth.

24

(FLRA), 510 U.S. 487, 495 (1994).

25

By slight contrast, Exemption 7(C) exempts disclosure of information based on privacy

26

concerns by permitting an agency to withhold from disclosure information that is “compiled for

27

law enforcement purposes, but only to the extent that the production of such law enforcement

1 records or information . . . could reasonably be expected to constitute an unwarranted invasion of

2 personal privacy.” 5 U.S.C. § 552(b)(7)(C).

3 Here, USPTO avers that a combination of the privacy interests delineated in Exemption 6

4 and Exemption 7(C) applies to a small portion of the first page of the Jaicks memo

5 (USPTO000002) which contained information about OED’s disciplinary investigations of

6 individuals other than Abhyanker. Trujillo Decl. ¶ 46. Using the same privacy-based

7 combination, USPTO avers that Exemption 6 and Exemption 7(C) apply to the names and

8 signatures of the members of the Committee on Discipline. Id. ¶ 47. The Court concurs. Both of

9 these groups of redactions are similar to personnel or medical files in that their disclosure would

10 impair the privacy interests of others facing disciplinary investigations separate from Abhyanker

11 as well as the privacy interests of members of the Committee on Discipline. See, e.g., Dep’t of

12 Justice v. Reporters Comm. for Freedom of the Press, 489 U.S. 749, 765 (1989) (“[D]isclosure of

13 records regarding private citizens, identifiable by name, is not what the framers of FOIA had in

14 mind.”).

15 The privacy interests of these groups are significant, particularly to prevent embarrassment

16 of irrelevant parties and harassment of members of the Committee on Discipline. See Forest Serv.

17 Emps. for Env’t Ethics v. U.S. Forest Serv., 524 F.3d 1021, 1026-27 (9th Cir. 2008) (concluding

18 that forest service employees have a valid privacy concern, including due to harassment or

19 embarrassment or contact by the plaintiff or media). The application of this exemption is

20 appropriate because the Committee on Discipline members are like grand jurors in that they

21 review evidence presented to them and make determination about whether there is probable cause

22 to charge individuals. Trujillo Decl. ¶ 47. Similar to grand jurors, they have a strong privacy

23 interest in keeping their identities hidden so as to avoid harassment or threats to their safety. Id.

24 In response to both redactions, Abhyanker states only “that the public interest in disclosure

25 significantly outweighs the privacy concerns cited, especially given the alleged malfeasance.”

26 Opp. at 13. His stated FOIA interest in disclosure accordingly warrants little weight, particularly

27 where he has obtained the substantive portions of the documents without those relatively minimal

1 Finally, there exists only minimal, if any, public interest in the information withheld under

2 Exemption 7(C), because disclosing the redactions in the Jaicks memo and the names redacted

3 from probable cause determination would not significantly increase “public understanding of the

4 operations and activities of the Government.” See FLRA, 510 U.S. at 495.

5 The Court finds that USPTO properly invoked Exemptions 6 and 7(C) and the minimal

6 redactions of names in the Jaicks memo and the probable cause determination were validly

7 withheld.

8 6. “Reasonably Segregable” Non-Exempt Information

9 Title 5 U.S.C. § 552(b) provides that “[a]ny reasonably segregable portion of a record shall

10 be provided to any person requesting such record after deletion of the portions which are exempt

11 under this subsection.” A district court is required to make findings about segregability when an

12 entire document is withheld. Wiener v. F.B.I., 943 F.2d 972, 988 (9th Cir. 1991).

13 The USPTO conducted a line-by-line review of all responsive material to identify and

14 release information that was either non-exempt or that qualified for discretionary waiver. Trujillo

15 Dec. ¶ 58. On June 29, 2023, USPTO released all attachments and exhibits to both the Jaicks

16 memo and the Committee memo. Id. On December 1, 2023, USPTO provided another

17 supplemental release to Abhyanker, this time providing the majority of the Jaicks memo to him,

18 only redacting portions of memorandum pages USPTO000001, 000002, 000006, and 00007. Id.

19 On February 5, 2024, the USPTO provided its last supplemental production to Abhyanker,

20 releasing the entire probable cause determination except for the identity of the members of the

21 Committee on Discipline. Id. USPTO has provided thorough explanations for redacting or

22 withholding the materials not fully released to Abhyanker, including asserting several privileges.

23 See, e.g., Trujillo Decl. ¶¶ 53-56. The Court finds that USPTO satisfies the standard for

24 withholding the Committee memo in full, particularly because Abhyanker presents no

25 countervailing evidence that USPTO failed to present reasonably segregable portions of the

26 applicable record. USPTO is entitled to summary judgment on this issue as well.

27 //

1 Wl. CONCLUSION

2 In sum, USPTO demonstrates the adequacy of its search for the materials requested by

3 || Abhyanker, relevant FOIA exemptions apply to the materials withheld, and USPTO met its burden

4 || to show that it produced all reasonably segregable portions of the applicable record. Abhyanker

5 fails to proffer any countervailing evidence. For the foregoing reasons, the Court GRANTS

6 || USPTO’s motion for summary judgment.

7 IT IS SO ORDERED.

8 Dated: August 19, 2024

9 □ □

10

ARACELI MARTINEZ-OLGUIN

I United States District Judge

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