Rein v. U.S. Patent & Trademark Office

• Decision Date: 28 January 2009
• Docket Number: No. 07-1738.,07-1738.
• Citation: 553 F.3d 353
• Parties: Bert W. REIN; Hunton & Williams, Plaintiffs-Appellants, v. UNITED STATES PATENT & TRADEMARK OFFICE; United States Department of Commerce, Defendants-Appellees.
• Court: U.S. Court of Appeals — Fourth Circuit

553 F.3d 353

Bert W. REIN; Hunton & Williams, Plaintiffs-Appellants, v. UNITED STATES PATENT & TRADEMARK OFFICE; United States Department of Commerce, Defendants-Appellees.

No. 07-1738.

United States Court of Appeals, Fourth Circuit.

Argued: October 28, 2008.

Decided: January 28, 2009.

ARGUED:

John Jay Range, Hunton & Williams, Washington, D.C., for Appellants. Gerard John Mene, Office of the United States Attorney, Alexandria, Virginia, for Appellees.

ON BRIEF:

Edward P. Noonan, Hunton & Williams, Richmond, Virginia, for Appellants. Chuck Rosenberg, United States Attorney, Alexandria, Virginia, for Appellees.

Before WILKINSON and AGEE, Circuit Judges, and John T. COPENHAVER, JR., United States District Judge for the Southern District of West Virginia, sitting by designation.

Affirmed in part, reversed in part, and remanded by published opinion. Judge AGEE wrote the opinion, in which Judge WILKINSON and Judge COPENHAVER joined.

OPINION

AGEE, Circuit Judge:

Bert W. Rein and Hunton & Williams (collectively "R & HW") appeal the district court's award of summary judgment to the United States Patent & Trademark Office ("USPTO") and Department of Commerce ("DOC") (collectively "the Agencies") in their civil action alleging the Agencies did not conduct an adequate search for documents they requested under the Freedom of Information Act ("FOIA"), 5 U.S.C. § 552 (2000), and that the Agencies improperly withheld documents as exempt which were discovered during the search. At this juncture, we do not find that the Agencies improperly withheld any documents. However, as discussed below, some of the Vaughn index entries were insufficient to permit the district court, or this Court, to properly assess the Agencies' claimed exemptions from FOIA disclosure. Thus, for the reasons set forth below, we affirm the judgment of the district court, in part, and reverse the judgment, in part, and remand for further proceedings.

I.

R & HW represent parties involved in on-going patent litigation between NTP, Inc. ("NTP") and Research In Motion Ltd. ("RIM") related to BlackBerry wireless telephone and e-mail devices.¹ In pursuit of documentation relevant to that litigation, Rein and Hunton & Williams separately submitted FOIA requests for documents from the Agencies. Rein asked the USPTO for "any documents in [delineated] non-mutually exclusive categories pertaining to" certain patents, which were identified by number and referred to collectively as "the Campana Patents," as well as the re-examinations of those patents. (J.A. 20-25.) Hunton & Williams filed a FOIA request with the DOC seeking similar documents pertaining to the Campana Patents, the NTP patents and re-examinations of those patents. (J.A. 60-64.)

In response to Rein's request, the USPTO provided four interim responses yielding approximately 789 pages. The DOC conducted a search based on Hunton & Williams's request and also forwarded the request to the USPTO, which was the DOC unit determined to possess the most responsive material.² It initially provided Hunton & Williams the approximately 789 pages of documents that had previously been released to Rein. In response to both FOIA requests, the USPTO also identified approximately 1,621 additional documents that were released with redactions or not disclosed on the ground that they were exempt from disclosure.³

R & HW then filed complaints in the district court alleging the USPTO failed to fulfill its obligation to conduct adequate searches for responsive documents and wrongfully withheld or redacted responsive documents.⁴ After the complaints were filed, the Agencies provided R & HW with an additional 1,445 pages of responsive material, some of which contained redactions.⁵ The parties proceeded with discovery and submitted affidavits supporting their positions. In addition, the Agencies submitted a Vaughn index⁶ identifying the documents withheld, in whole or in part, based on the claim that the documents were exempt from the FOIA's disclosure requirements. The Vaughn index lists each document by number, and contains columns for reporting the document type (e.g., e-mail; report), date, employees (authors and recipients), document description/subject, number of pages, whether the document was withheld in whole or in part, the exemption claimed, and any other descriptive remarks. The Agencies filed a motion for summary judgment, and R & HW filed a motion for partial summary judgment.⁷

In an order entered June 26, 2007, the district court granted the Agencies' motion for summary judgment and denied R & HW's motion. The district court held that the searches described by the Agencies' declarations were reasonable and there was no reason to doubt the credibility of the declarations. The court observed that the USPTO's effort to correct minor defects in the initial search "demonstrates that [it] acted in good faith." It further observed that while R & HW "may believe that additional documents exist and that they are entitled to these documents, this belief alone is not sufficient to withstand a motion for summary judgment" where the Agencies demonstrated that they conducted a reasonable search. The district court concluded the DOC "did not abrogate or abandon its requirement to search for documents" by reviewing its own files and also forwarding Hunton & Williams's request to the USPTO for further response. (J.A. 1164-71.)

The district court rejected the allegation that the Agencies' Vaughn index was facially inadequate to determine whether documents the Agencies claimed were exempt from release were properly withheld. In so doing, the court described the Vaughn index provided by the Agencies and found "that the information provided regarding the description of each document, and the stated basis upon which no further portion of the document can be provided, is more than sufficient ... to find whether the ... exemptions properly apply to the listed materials." (J.A. 1172.)

The district court then concluded that the Agencies properly withheld or redacted the documents on the Vaughn index because the documents "consist[ed] of draft documents pertaining to the reexamination of the NTP litigation, and analysis and opinions on legal and policy matters surrounding the NTP administrative litigation faced by the various patent examiners." It determined the documents were both "predecisional" and "deliberative," thus meeting the requirements for exemption pursuant to 5 U.S.C. § 552(b)(5) (2007). The court also found that the Agencies had not waived their right to claim both attorney work product and attorney-client privilege exemptions.⁸ (J.A. 1171-77.) The district court thus concluded the Agencies were entitled to summary judgment. (J.A. 1177-79.)

R & HW noted a timely appeal and we have jurisdiction under 28 U.S.C. § 1291 (2000).

II.

We review the district court's grant of summary judgment in a FOIA action de novo. Ethyl Corp. v. U.S. Envtl. Prot. Agency, 25 F.3d 1241, 1246 (4th Cir.1994). Summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Hill v. Lockheed Martin Logistics Mgmt., Inc., 354 F.3d 277, 283 (4th Cir.2004) (en banc) (internal quotation marks omitted). We construe the evidence in the light most favorable to R & HW, the parties opposing the Agencies' summary judgment motion, and draw all reasonable inferences in their favor. See id.

The standard of review in FOIA cases is limited to determining "whether (1) the district court had an adequate factual basis for the decision rendered and (2) whether upon this basis the decision reached is clearly erroneous." Spannaus v. Dep't of Justice, 813 F.2d 1285, 1288 (4th Cir. 1987) (internal quotation marks omitted). Legal errors are reviewed de novo. Simmons v. Dep't of Justice, 796 F.2d 709, 710 (4th Cir.1986).

III.

R & HW challenge the district court's determinations that the Agencies conducted an adequate search in response to their FOIA requests and that the Agencies were entitled to withhold certain documents based on the deliberative process exemption. We address each issue in turn.

A. Adequacy of the Searches

R & HW first argue the Agencies' searches for the requested documents were insufficient. They assert the Agencies improperly relied on the results of a search conducted in response to existing FOIA requests from other entities ("the Media requests") instead of performing new searches tailored to the specific material R & HW sought. They also point to references in documents the Agencies did provide to contend that numerous "other responsive documents" exist but have not been provided or claimed as exempt. In addition, they contend the produced documents and the Agencies' declarations show that the Agencies failed to search certain offices likely to have responsive documents.

The FOIA requires governmental agencies to provide, upon request, information to the public if the request "reasonably describes" the record sought and is made in accordance with published agency guidelines for making such requests. § 552(a)(3)(A). "In responding ... to a request for records, an agency shall make reasonable efforts to search for the records in electronic form or format. ..." § 552(a)(3)(C). The requirement to "search" "means to review, manually or by automated means, agency records for the purpose of locating those records which are responsive to a request." § 552(a)(3)(D).

The Rein request, submitted prior to the Hunton & Williams request, sought "document[s], including emails or telephone logs, constituting, reflecting or relating to any internal or external written or oral communications between" certain categories of individuals relating to the USPTO's reexaminations of the Campana Patents, and which were dated (or sent, issued,...