Hyatt v. United States Patent and Trademark Office

UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF COLUMBIA

GILBERT P. HYATT,

Plaintiff, Civil Action No. 18-234 (RCL)

V.

U.S. PATENT AND

TRADEMARK OFFICE,

Defendant.

`~/VV\./V\./V\/V\./\./V

MEMORANDUM OPINION

Before the Court is an action under the Freedom of Information Act (“FOIA”), 5 U.S.C.

§552, challenging the withholding of a single email message by the United States Patent and

Trademark Office (“PTO”). The email at-issue was sent by one PTO patent examiner to another

using PTO’s email system, in reply to the receiving examiner’s initial email concerning a patent

applicant, plaintiff Gilbert P. Hyatt, Whose patent applications the two examiners Were (and

perhaps still are) responsible for examining The PTO nevertheless denied Mr. Hyatt’s request

for production of this email message on the ground that it is not an agency record, or,

altematively, that it is exempt from disclosure under FOIA’s Exemption 6.

Mr. Hyatt is a proliflc inventor Who has received more than seventy issued patents and

has pending at various stages of prosecution and appeal nearly 400 patent applications before the

PT_O, the federal agency responsible for examining patent applications and for granting U.S.

patents. 35 U.S.C. § l, et seq. Beginning no later than 2005, Mr. Hyatt has been litigating

several of his patent applications before this Court pursuant to 35 U.S.C. §145. See, e.g., 05-cv-

2310; 09-cv-1864_; 09-cv-1869; 09-cv-1872.1 Certain limited discovery related to a portion of

that litigation gave rise to his becoming aware of the document that is now the subject of his

FOIA request.

Having considered Mr. Hyatt’s Motion for Summary Judgment, ECF n0. 3, the PTO’s

opposition thereto and Cross-Motion for Summary Judgment, ECF nos. 15 and 16, the related

reply briefs, the disputed document itself, see ECF no. 22,2 and the entire record in this case, the

Court GRANTS Mr. Hyatt’s Motion for Summary Judgment, ECF no. 3, and DENIES the

PTO’s Cross-Motion for Summary Judgment, ECF no. 15.

Background

After the conclusion of summary judgment proceedings in the above-cited §145 actions,

which resulted in the necessity of holding trials on the merits in three of those cases,3 the PTO

asserted the affirmative defense of prosecution laches, arguing that unreasonable and

unexplained delay by Mr. Hyatt cut off his entitlement to issuance of any patents still under

consideration In response, Mr. Hyatt sought and obtained discovery regarding the PTO’s

handling of his applications, relating to documents that might tend to show that the PTO handled

his applications in bad faith so as to amount to “unclean hands” that would preclude the PTO

from asserting prosecution laches. ln response to Mr. Hyatt’s discovery requests, the PTO

produced, inter alia, a March 10, 2016 email by Walter Briney (the “Briney email”), a patent

examiner assigned to work on Mr. Hyatt’s applications. The Briney email was addressed to all

members of the PTO’s Art Unit 2615, a part of the PTO sometimes referred to as the “Hyatt

1 Mr. Hyatt filed the instant case as related to those matters. The government has not challenged the relatedness of

this action to those, and the Court finds that they are, indeed, related

2 On August 2, 2018, the government complied with the Court’s Order at ECF no. 22, but failed to

contemporaneously notice its compliance on the public docket.

3 See __ F.Supp.3d _, 2018 WL 3656071 (D.D.C. 2018).

2

Unit’f because it was established in large part for the very purpose of examining Mr. Hyatt’s

unique and uniquely situated patent applications In the email, Mr. Briney shared with his

colleagues a link to a 1993 newspaper article concerning legal proceedings relating to Mr.

Hyatt’s years-earlier divorce. In the body of the email, Mr. Briney opined that the article

“provides a unique glimpse into Hyatt’s mind . . .” In a sworn deposition on September 28,

2017, Mr. Briney stated one of recipients of his email, examiner Hien Dieu Thi (Cindy) Khuu,

responded to his message.

Despite producing the Briney email in response to Mr. Hyatt’s document requests in the

patent litigation before this Court, the PTO did not produce Ms. Khuu’s reply (the “Khuu

email”). Nor did the PTO identify the Khuu email as potentially responsive to Mr. Hyatt’s

discovery requests; the first Mr. Hyatt learned of its existence was during Mr. Briney’s

deposition. The PTO subsequently declined to produce the Khuu email to Mr. Hyatt, and on

October 4, 2017, Mr. Hyatt moved in the four §145 actions to compel its production. ECF no.

182 (05-2310); ECF no. 178 (09-1864); ECF no. 182 (09-1869); ECF no. 180 (09-1872). The

PTO opposed Mr. Hyatt’s motion on the ground that the Khuu email was outside of the scope of

discovery authorized by this Court. In its opposition, the PTO characterized the Khuu Email as,

“An e-mail between two USPTO examiners reflecting their mental impressions in the context of

Mr. Hyatt’s divorce litigation.” ECF no. 185 (05-2310); ECF no. 181 (09-1864); ECF no. 185

(09-1869); ECF no. 183 (09-1872). Mr. Hyatt’s Motion to Compel in the §145 cases was

subsequently mooted on October 16, 2017 by this Court’s granting Mr. Hyatt’s Federal Rule of

Civil Procedure 52(c) motion at the close of the PTO’s case-in-chief in the trial concerning

PTO’s prosecution laches defense.4

On November 6, 2017, Mr. Hyatt filed a FOIA request for the Khuu Email; the PTO

acknowledged receipt of that request on November 9, 2017. On December 7, 2017, the PTO

denied the FOIA request, stating that it had “reviewed the requested record,” but the Khuu Email

“is not an agency record and so there is no agency record responsive to your request.” It

contained no additional reasoning or explanation for denying the FOIA request.

Mr. Hyatt appealed the denial on December 13, 2017. On December 26, 2017, the PTO

wrote to acknowledge its receipt of Mr. Hyatt’s appeal, and subsequently denied that appeal on

January 19, 2018. The PTO’s appeal denial took note that the Khuu Email “was created by an

Ag`ency employee and is located within the Agency’s email system” and that its 'sender “may not

have had an expectation of privacy” in emails sent through the PTO’s email system. But the

PTO nevertheless concluded anew that the Khuu Email was not an agency record subject to

FOIA because "‘it Was not used . . . in conducting official Agency business.” The Appeal denial

states that it is the PTO’s final decision and is subject to judicial review.

Mr. Hyatt brought his request to this Court on February 1, 2018, and on the same day

moved for summary judgement as to PTO’s obligation to produce the requested email. ECF no.

3. At the same time, Mr. Hyatt also filed a Motion to Compel the Khuu email for ex parte, in

camera review, arguing, “in camera review promises to substantially advance judicial and

party economy.” ECF no. 4. PTO opposed Hyatt’s motion and filed its own cross-motion for

summary judgment, as well as its opposition to the Motion to Compel, on April 9, 2018. ECF

4 The Court’s Findings and Conclusions with respect to that ruling Were issued on July 31, 2018. _ F.Supp.3d

_, 2018 WL 3654777 (D.D.C. 2018). See ECF no. 233 (05-2310); ECF no. 230 (09-1864); ECF no. 205 (09-

1869); ECF no. 223 (09-1872).

lnos. 15, 16, 17. Each respective motion ripened after the appropriate subsequent opposition and

reply briefs were filed.

On July 23, 2018, this Court granted Mr. Hyatt’s Motion to Compel, ECF no. 22, finding

that not to do so would result in a waste of judicial and party resources. Id. at 3. Later that day,

Mr. Hyatt filed a document styled as a “notice of supplemental authority,” ECF no. 21,5 in which

he made the Court aware of the status of another FOIA request he had pending before the PTO.

On August 2, 2018, the government complied with the Court’s Order on Hyatt’s Motion

to Compel, delivering to the Court a hard-copy of the single page in-dispute here. The Court has

reviewed the twenty-eight word email and, for the reasons articulated below, finds it to be

releasable pursuant to Mr. Hyatt’s FOI_A request,

Legal Standard

Summary Judgment

Summary judgment is appropriate where “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. PRO. 56(a). It is “appropriate only in circumstances where ‘the evidence is such that a

reasonable jury could not return a verdict for the nonmoving party.”’ Washington Post Co. v. U.S.

Dep ’t of Health & Haman Servs., 865 F.2d 320, 325 (D.C. Cir. 1989) (quotingAna'erson v. Liberty

Lobby, Inc., 477 U.S. 242, 248 (1986)). The Court must view all evidence “in the light most

favorable to the nonmoving party” and, if a genuine dispute exists, “parties should be given the

opportunity to present direct evidence and cross-examine the evidence of their opponents in an

adversarial setting.” Ia'.

5 Although the Court had signed the Order docketed as ECF no. 22 before the plaintiffs filing, the Order was not

uploaded to ECF until the following day.

As applied in a FOIA case, an agency defendant may be entitled to summary judgment if

it demonstrates that 1) no material facts are in dispute, 2) it has conducted an adequate search for

responsive records, and 3) each responsive record that it has located has either been produced to

the plaintiff or is exempt from disclosure. Miller v. U.S. Dep 't of Justice, 872 F. Supp. 2d 12, 18

(D.D.C. 2012) (citing Weisberg v. DOJ, 627 F.2d 365, 368 (D.C. Cir. 1980)). Agencies can

meet their burden on FOIA matters through a “reasonably detailed affidavit,” see Oglesby v. U.S.

Dep ’t of Army, 920 F.2d 57, 68 (D.C. Cir. 1990), which is to be “accorded a presumption of

good faith.” See Mobley v. C.I.A., 806 F.3d 568, 580-81 (D.C. Cir. 2015), quoting SafeCara1

Ser`vs., Inc. v. SEC, 926 F.2d `1197, 1200 (D.C. Cir. 1991).

Agency Records

Courts have long recognized that not all records that happen to reside in government

coffers are “agency records” for FOIA purposes. The Supreme Court in U.S. Department of

Jastice v. T ax Analysts established two factors to determine whether a document requested under

FOIA is an “agency record.” 492 U.S. 136, 144-45 (1989). First, the agency must either “create

or obtain” the document. Ia'. at 144-45. Second, the agency must be “in control of the requested

materials at the time the FOIA request is made.” Ia'. at 145. Whether an agency has “control”

over a record depends upon: “(1) the intent of the document's creator to retain or relinquish

control over the record[ ]; (2) the ability of the agency to use and dispose of the record as it sees

fit; (3) the extent to which agency personnel have read or relied upon the document; and (4) the

degree to which the document was integrated into the agency's record systems or files.” Barka v.

HHS, 87 F.3d 508, 515 (D.C. Cir. 1996) (quoting Tax Analysts v. DOJ, 845 F.2d 1060, 1069

(D.C. cir. 1988)).

As relevant here, “agency records” are distinguishable from “personal records” that might

be physically maintained by agency employees in their workspace, but that are nevertheless not

subject to release under FOIA. Determining that an item is a personal record involves “the

totality of the circumstances surrounding the creation, maintenance, and use” of the record.

Bureau of Nat'l Affairs, Inc. v. DOJ, 742 F.2d 1484, 1492 (D.C. Cir. 1984).

Exemption 6

Exemption 6 protects from FOIA disclosure “personnel and medical files and similar files

the disclosure of which would constitute a clearly unwarranted invasion of personal privacy.” 5

U.S.C § 552(b)(6). The exemption thus has two prongs, and requires an agency to prove both

the nature of the files and that the files' disclosure “would constitute a clearly unwarranted

invasion of personal privacy.” Dep 't of State v. Washington Post Co., 456 U.S. 595, 599_603

(1982). The first criterion-does not require that the information be contained in a specifically

designated “personnel” file, id. at 601 , and is met if the information “appl[ies] to a particular

individual” and is “personal” in nature. New York Times Co. v. NASA (N. Y. Times 1), 852 F.2d

602, 606 (D.C. Cir. 1988). The second step of an Exemption 6 analysis is to strike a “balance

between the protection of an individual's right to privacy and the preservation of the public's

right to government information.” Washington Post Co., 456 U.S. at 599. The “public interest”

in the analysis is limited to the “core purpose” for which Congress enacted the FOIA, i.e. , to

“shed . . . light on an agency's performance of its statutory duties.” U.S. Dep't of Justice v.

Reporters Comm. for Freea'om of the Press, 489 U.S. 749, 773 (1989).

“Under Exemption 6, the presumption in favor of disclosure is as strong as can be found

anywhere in the Act,” Nat'l Ass'n of Home Buz'la'ers v. Norton, 309 F.3d 26, 32 (D.C. Cir. 2002),

and many years of consistent precedent makes clear that information about federal employees

generally does not qualify for protection. See, e.g., Arieffv. Dep 't of the Navy, 712 F.2d 1462,

1467-68 (D.C. Cir. 1983); Aguirre v. SEC, 551 F.Supp.2d 33, 54 (D.D.C. 2008)

(“Correspondence does not become personal solely because it identifies government

employees.”). Although personal information about a particular individual can trigger

Exemption 6, that information normally falls into specific categories that typically includes

“place of birth, date of birth, date of marriage, employment history, and comparable data.” Nat'l

Ass'n of Retirea' Fed. Emps. v. Horner, 879 F.2d 873, 875 (D.C. Cir. 1989). In examining an

Exemption 6 withholding, the court must balance the privacy interest at stake against the public's

interest in disclosure. Fundfor Constitutional Go`v't v. National Archives and Recora’s Serv. , 656

F.2d 856, 862 (D.C. Cir. 1981).

Discussion

Hundreds of pages of court filings have been spent litigating the nature of a single email.

As happens sometimes in FOIA litigation, trees have been felled over the protection of a single

page. There is a silver-lining in this particular matter, however: the Court can dispose of it

relatively quickly.

Ultimately, the PTO’s arguments that the Khuu email 1) is not an agency record, and 2)

even if it is, may properly be withheld under Exemption 6, are both based upon the underlying

premise that the substance of Ms. Khuu’s email is purely personal. Where the agency’s

arguments on the two grounds diverge is on matters of function and substance - if the email was

not actually used in the normal course of agency business, PTO argues, it cannot be considered

an agency record; as to Exemption 6, PTO argues that Ms. Khuu included in her email

information so personally sensitive that its disclosure would constitute a clearly unwarranted

invasion of her personal privacy. Both arguments fail; the second one, miserably so.

Agency Records

To qualify as an agency record, the Khuu email must have been either created or obtained

by the PTO, and the PTO must have had control of it at the time Mr. Hyatt made his FOIA

request. See T ax Analysts, 492 U.S. at 145. There is no doubt that the Khuu email was

“obtained by” the PTO, see also ECF no. 15-1 at *4; the issue here is whether the agency has

“control” of the email for FOIA purposes.

Like so much of Mr. Hyatt’s litigation concerning other matters, this case rests on unique

facts, in which the general approach to what constitutes control of a record does not squarely fit

the circumstances This is because the agency’s structure with respect to Mr. Hyatt is itself

unique. PTO’s Art Unit 2615 is staffed principally to examine the patentability of inventions

claimed by a single applicant: Mr. Hyatt. Even considering the Burka factors at face value,

however, and especially considering that the only alternative finding here Would be to hold that

the Khuu email is a “personal record,” see also ECF 15-1 at *3, the Court finds that the totality

of the circumstances here weigh in favor of the Khuu email being an agency record for FOIA

purposes. The PTO attempts to frame the email as containing a personal opinion “in the context

of an email exchange about divorce proceedings.” But a close reading of its filings reveals that it

was unable even to assert that the email in question was about divorce. Indeed, a personal record

in that context might have included Ms. Khuu making a general comment about divorce,

lamenting about a personal experience with divorce, sharing her knowledge, experiences, or

beliefs about matrimony, divorce, religion, or the law, or expressing something similar. This

email does not. Instead, it comments specifically on an element of Mr. Hyatt’s character that

reasonably would be at issue in any negotiations between Mr. Hyatt and agency employees at

any level, from examiners to policymakers.

The Khuu email is part of a brief email exchange between two agency employees, on an

agency system, inspired by an article concerning the particular individual whose applications

these examiners were dedicated, full-time, to examining The PTO stakes its case heavily on the

notion that an email between agency employees on an agency server is not necessarily an agency

record, and, more importantly, the agency did not “rely upon” Khuu’s email in any formally

documented way that would unquestionably make it an agency record, PTO argues, “Neither

Ms. Khuu nor Mr. Briney used or intended to use the document in the examination of patents.”

See, e.g., ECF no. 15-4 at *5. This very literal but vacuous recitation of a judicially-created

factor belies the point, purpose, and implication of the underlying FOIA request. In this vein, the

PTO's heavy reliance on Jaa'icial Watch v. FHFA, 646 F.3d 924 (D.C. Cir. 2011), is

misplaced. The decisive factor in that case was that, "The public`cannot learn anything about

agency decisionmaking from a document the agency neither created nor consulted, and requiring

disclosure under these circumstances would do nothing to further FOIA's purpose of ‘open[ing]

agency action to the light of public scrutiny.”’ Ia'. at 927-28 (quoting Dep ’t of Air Force v.

Rose, 425 U.S. 352, 372 (1976). Here, however, the Court has before it a FOIA request

concerning what the requested document may reflect about how examination of a large group of

patents has proceeded, and Khuu clearly expresses an opinion about a character at the center of

her examination portfolio, to a colleague who has that same portfolio.

Here, too, is where PTO's reliance on Bureau of National Ajjfairs, Inc. v. U.S. Dep ’t of

Justice (BNA), 742 F.2d 1484 (D.C. Cir. 1984), for the proposition that documents merely

“relat[ing] to” an employee's duties, ia'. at 1493, fails. First, the instant facts present a situation

far different from the "personal diary" hypothetical BNA uses in the passages PTO cites. Second,

the Briney/Khuu exchange arguably does reflect substance related to, and therefore sheds light

10

on the examination of Mr. Hyatt’s applications. The document at-issue in this matter relates to

these examiners' interaction with a patent applicant. Indeed, the PTO’s description that the email

“reflected a . . . communication between those two individuals,” ECF 15-1 at 6, would have been

far more accurate if it had added, “about a matter within the scope of their duties, to wit, Mr.

Hyatt.” Under the circumstances of this case, in Which the government is seeking to shield from

disclosure Ms. Khuu's “personal thoughts and opinions,” id., concerning a matter under her

charge, the govemment's argument would seem to reach a document containing employee

dissent to an agency policy, or even employees' or officials' unadopted policy or operational

recommendations as they are unlikely to be “used in” official agency business under the PTO’s

definition. Although such deliberative products might nevertheless be exempted from FOIA

disclosure under, perhaps, Exemption 5, it is entirely likely they would meet the threshold test of

being agency records

That the emails were between patent examiners whose jobs are strictly to review patent

applications for compliance with statutory mandates is likewise unavailing See ECF no. 15-l at

6 (stating the PTO’s argument that “The examination of patents is governed by law and

regulation and specifically does not permit patent examiners to consider their personal feelings

or opinions in conducting their duties The use of the requested document solely for personal

reasons should be dispositive here.”6). The PTO appears to wish the Court to find that opinion-

laden documents are not agency records where the law does not allow for government employees

to consider their personal opinions in the course of their official duties, or where statute or

6 The second sentence in this passage is ambiguous The Court assumes, in the context of the present section, that

the PTO means to say, “The [email’s creator’s and receiver’s] use of [the email] solely for [their own] personal

reasons should be dispositive here.” This differs significantly from the arguments PTO makes With respect to

Exemption 6, where the exact same sentence could be read to mean, “The [plaintiff’s likely] use of the requested

document solely for [his own] personal reasons should be dispositive here.” As discussed below, the latter

construction goes to balancing the public interest with the purpose of the FOIA, which has no bearing on whether

the requested email is an agency record to which the exemption might apply.

11

regulation limits the extent to which an employee’s personal opinion is permitted to enter into

consideration in the course of those duties7

Contrary to the PTO’s assertion, the fact that the creation and reading of the email thread

may have been outside the scope of the sending and receiving examiners’ employment with the

agency is not dispositive as to whether the email is an agency record. Such a rule would, for

example, hinder a FOIA requester’s ability to uncover fraud, waste, or abuse in government

agencies Cf McDonnell Douglas Corp. v. U.S. Dep 't of the Air Force, 375 F.3d 1182, 1194

(D.C. Cir. 2004) (Garland, J., dissenting). Indeed, the universally recognized purpose of FOIA is

to make government more transparent, see, e.g. , Judicz`al Watch, Inc. v. United States Dep ’t` of

Homeland Se`c., 895 F.3d 770, 783 (D.C. Cir. 2018); it is in light of that purpose that the courts

have formulated their rulings and tests And the government would be hard-pressed to find any

other instance where an agency has created a defined, formalized, structured reporting unit

dedicated chiefly to adjudicating the administrative (and.Constitutional) rights of a single

citizen/applicant8 Under these circumstances it is not unreasonable to presume that

correspondence between two examiners concerning the individual whose applications they each

are charged with examining, full-time, would never influence how they treat his applications

notwithstanding statutory dictates It is true that neither Mr. Biney nor Ms. Khuu was charged

with performing any sort of all-source analysis upon which to make qualitative policy or

operational judgments However, the entire scope of their duties concerned reviewing Mr.

Hyatt’s life’s work, which is extensive enough that the PTO has taken affirmative steps to

organize itself in such a way as to dedicate a group of examiners to its review. This unique

7 Nothing in the agency’s arguments overtly suggests its reasoning would not also apply to lengthy exchanges

between multiple agency employees on agency networks but the Court has faith the government understands the

Burka factors to appear to Weigh even more heavily against that hypothetical situation.

8 Law enforcement and national security task forces have no bearing on the analysis here.

12

factor is critical to the Court’s determination that, under the totality of the circumstances here,

the Khuu email qualifies as an agency record for FOIA purposes

Finally, that the email was “never placed in any official Agency files,” ECF no. 15-1 at 5,

is of little relevance here. On its face, the govemment's argument seems to suggest that, for an

email to be releasable under FOIA, an employee must go out of his way to save it in a place

other than his email inbox. The Court trusts that the government is not actually making that

argument, as doing so would be rather preposterous in light of its recent release of more than

35,000 emails subject to FOIA litigation, even though many of them were stored on a private

server. See https://foia.state.gov/Search/Results.aspx?collection=Clinton_Email. Nevertheless,

the PTO offers the Court neither a limiting principle to its argument, nor a reasonable test for the

Court to apply in thisl case as to the scope and b`ounds of what should be considered “official

Agency files,” either generally or with respect to the examination of Mr. Hyatt’s patent

applications Indeed, that it merely “makes sense” that there would be personal correspondence

in an employee’s email box, ECF no. 15-1 at 5, does little here, where the PTO’s pointing to its

“policy permitting limited personal use of government resources, including email,” id.,

effectively operates as an admission that the majority of the emails in an employee's inbox are

(or at least ought to be) agency records

Exemption 6

To withhold the Khuu email under Exemption 6, PTO must show that l) the information

contained in the email “appl[ies] to a particular individual” and is “personal” in nature, N. Y.

Times 1, 852 F.2d at 606, and 2) that the files' disclosure “would constitute a clearly unwarranted

invasion of personal privacy,” as weighed against “the public's right to government information.”

Washington Post, 456 U.S. at 599-603.

13

The threshold for meeting the first prong is “minimal,” and this Circuit has

unambiguously held that, when there is non-lexical information in a government record that can

be traced to an individual (such as a single author), the government is entitled an opportunity to

satisfy the second prong See N. Y. Times Co. v. Nat’l Aeronautics & Space Admin. (N. Y. Times

Il), 920 F.2d 1002, 1006-1009 (D.C. Cir. 1990) (en banc). Although a hypothetically different

FOIA request for any replies to the Briney email might have allowed PTO an opportunity to

redact Ms. Khuu’s name from the email, that is not this case. Because we know the identity of

the author of the specific document at-issue, the law of this Circuit requires this Court to find that

the email is a record that applies “t`o a particular individual.”

But the PTO’s argument utterly fails the second prong of the test, especially given the

strong presumption in favor of disclosure under Exemption 6. See also Nat'l Ass"n of Home

Buila’ers, 309 F.3d at 32. To be sure, the public interest to be weighed is whether releasing the

document would “shed . . . light on an agency's performance of its statutory duties.” Reporters

Comm. for Freea'om of the Press, 489 U.S. at 773. Under the present facts and absent anything

other than the unsupported and conclusory arguments PTO makes as to Ms. Khuu’s alleged

privacy interest, this Court does not find there to be a “clearly unwarranted invasion of personal

privacy” here.

First, as to the privacy interest: for the proposition that the author of a document has “a

personal privacy interest in the thoughts and beliefs contained” in his communications the PTO

points to a single unreported case from the District of Hawaii only once cited to by another court

of this Circuit, and then only on easily distinguishable facts The cited case, Yonemoto v. Dep't

of Veterans Ajj”airs, Civ. No. 06378, 2007 WL 1310165 (D.Haw. May 2, 2007), arose from an

agency employee’s FOIA request for emails between co-workers that referred to the FOIA

14

plaintiff The court in Yorlemoto found the emails’ authors to have protectable privacy interests

in their personal feelings about Yonemoto, who presumably was a colleague of theirs over

whom the emails’ authors had no supervisory authority.9 The matter in which a different court

of this circuit cited to Yonemoto did so as an example of a court rejecting a fishing expedition by

a FOIA plaintiff See Krieger v. U.S. Dep ’t of Justice, 529 F.Supp.2d 29, 42 (2008) (CKK). In

any event, even if this Court were to agree with the analysis in Yonemoto, the present case is

easily distinguishable

Although the Court is confident that Ms. Khuu, like the PTO, would rather her email not

be released, she does not have a “strong privacy interest” tied to its contents ECF no. 15-1 at

12. As mentioned above, Ms Khuu does not give an opinion about divorce or other matter

personal to her in the email; rather, she relates an opinion about her `charge. Further, it is worth

repeating that Mr. Hyatt is not merely one of many patent applicants whose purported inventions

Ms. Khuu is reviewing - he is the full-time subject of her job.

The PTO also points to no grounds to substantiate its assertion that “Ms. Khuu [will] be

subjected to annoyance or harassment, by the Plaintiff or others,” and is in fact misleading when

it further surmises that any such harassment Would be “based on her personal opinions about a

sensitive topic such as divorce,” which her email is not, in fact, about. See ECF no. 15-1 at ll.

Further, that Ms. Khuu might be subjected to a deposition in future litigation is simply not the

sort of “annoyance or harassmen ” with which the D.C. Circuit was concerned when discussing

the topic in Lesar v. U.S. Dep ’t of Justice, 636 F.2d 472, 488 (D.C. Cir. 1980), which the PTO

cites in support. The Court in Lesar was concerned with protecting the identities of law

9 The court did not specifically address the relationship between the employees at-issue.

15

enforcement agents involved in investigations related to Dr. Martin Luther King, Jr., a scenario

readily distinguishable from this one.

Second, there is a cognizable public interest associated with the release of this email.

Although the PTO argues the email “does not contribute in any significant way to the public

understanding of the operations or activities of the USPTO,” ECF no. 15-1 at 11, its lens is

simply far too broad. The document does contribute to the public’s understanding about a

specific unit Within the PTO. Further, it is a document that could be argued to shed light on an

entire Art Unit’s approach to its work. Despite the PTO’s reliance on the fact that “The entire

examination process is governed by law and regulation§” and that “Examiners are` not permitted

to consider their personal feelings or opinions when determining whether to allow or reject a

` patent application,” ECF no. 15-4 at 3-4, 5, that Mr. Briney felt the need to 'ensure his colleagues

would “treat [Mr. Hyatt] with respect” suggests that the examiners in Art Unit 2615 may not

have been treating the applicant (who has paid millions of dollars in fees) with respect, to such

an extent that there is a plausible basis for Mr. Hyatt to suspect their personal opinions may have

interfered with their work. That the Khuu email contains a “personal opinion,” id. at 6, does not

means it satisfies the standard for Exemption 6. The PTO’s characterization that the document

at-issue was merely part of “an email exchange about divorce proceedings,” ia'., is so general and

incomplete as to be downright misleading The Khuu email, like the Briney email to which it

responded, relates to a subject who is not only within the scope of those examiners’ official

duties but who represents the singularity at the center of their professional universe.

The PTO also argues that Mr. Hyatt’s FOIA request is merely a function of his own

private interests as a litigant against the government, and thus does not fit the purpose for which

FOIA was enacted. First, “whether an invasion of privacy is warranted cannot turn on the

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purposes for which the request was made.” Reporters Comm., 489 U.S. at 771. Further,

although Mr. Hyatt’s FOIA request is undoubtedly not wholly separate from his litigation

interests the PTO’s argument ignores that how its patent examiners approach their jobs is a

question that falls squarely within the public’s right to know how their government is

functioning Patent examiners fulfill a critical role in our constitutional democracy, helping to

ensure the progress of science and useful arts See U.S. CONST. art. I, §8, cl. 8. They must fulfill

that duty without regard to the identity of whose patent application(s) they are examining The

email to which Ms. Khuu replied can be read in such a way as to call into question that necessary

obj ectivity. Both the Briney and Khuu emails were sent by examiners assigned specifically to

review Mr. Hyatt’s applications related to Mr. Hyatt as an individual and did not concern the

substance or merits of those applications and were unconnected to any other proceedings that

might make them subject to privilege. Although gossip amongst colleagues is natural and even

normal, such exchanges between public servants are not per se shielded from disclosure merely

because their employing agency considers them to be insignificant

Conclusion

For the reasons detailed above, the Court will GRANT Mr. Hyatt’s Motion for Summary

Judgment, ECF no. 3, and will DENY the PTO’s Cross-Motion for Summary Judgment, ECF no.

15. A separate order will issue this date.

Date: cl/¢_g//K ZH,¢( ;€w-OL/?jj

Royc`e C. Lamberth

United States District Judge

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