Irons and Sears v. Dann

• Citation: 196 U.S.App.D.C. 308,606 F.2d 1215
• Decision Date: 31 August 1979
• Docket Number: No. 78-1200,78-1200
• Parties: , 202 U.S.P.Q. 798 IRONS AND SEARS, Appellant, v. C. Marshall DANN.
• Court: United States Courts of Appeals. United States Court of Appeals (District of Columbia)

Page 1215

606 F.2d 1215

196 U.S.App.D.C. 308, 202 U.S.P.Q. 798

IRONS AND SEARS, Appellant, v. C. Marshall DANN.

No. 78-1200.

United States Court of Appeals, District of Columbia Circuit.

Argued Jan. 19, 1979.

Decided July 19, 1979.

Rehearing Denied Aug. 31, 1979.

Richard H. Stern, Washington, D. C., for appellant. Edward S. Irons, Washington, D. C., was on the brief for appellant.

Thomas G. Corcoran, Asst. U. S. Atty., Washington, D. C., with whom Earl J. Silbert, U. S. Atty., Washington, D. C., at the time the brief was filed, and John A. Terry, Peter E. George, and Ann S. DuRoss, Asst. U. S. Attys., Washington, D. C., were on the brief, for appellee.

Before WRIGHT, Chief Judge, and ROBINSON and ROBB, Circuit Judges.

Opinion for the court filed by Chief Judge J. SKELLY WRIGHT.

J. SKELLY WRIGHT, Chief Judge:

Appellant seeks access under the Freedom of Information Act (FOIA) ¹ to all decisions of the Patent and Trademark Office (PTO) disposing of requests by would-be patentees for a filing date earlier than the one initially assigned to their applications. The agency granted access to a limited portion of these decisions and declared that the rest were not reachable under the FOIA. Appellant filed suit to secure the documents withheld, and the District Court substantially affirmed the PTO's position. We find ourselves in accord in significant respects with the District Judge's conclusion that the bulk of the material sought is exempt from the Act. We remand, however, because we believe that one category of decisions as to which FOIA access was apparently denied is in fact fully subject to the Act. While limited, this remand may have the added benefit of permitting the agency to take a second look at its discretionary decision to release certain decisions while maintaining in secrecy others that appear in material respects to be indistinguishable.

I

The patent process is commenced, not surprisingly, by the filing of a patent application. Pursuant to 35 U.S.C. § 111 (1976) such an application must include a number of items, among them a specification describing the invention and claiming the subject matter which the applicant regards as his, a drawing (where appropriate), an oath, the signature of the applicant, and the required fee. ² An application's filing date is the date on which the entire application was received by the Patent and Trademark Office. If an application is not complete at the time of initial filing, it is not assigned a filing date. Instead, the applicant is notified of the deficiency and the documents that were received by the PTO are in effect held in abeyance. If the applicant chooses to cure the defects or omissions he may do so, and his application will be given a filing date that corresponds to the date on which it was completed. ³

In the course of patent examination proceedings the patent application's filing date may play a critical role. In fact, the grant or denial of a patent may in some circumstances turn upon the filing date assigned to the application. ⁴ In light of this, applicants who have received a deferred filing date sometimes object to the date assigned to their application and petition the Commissioner of Patents and Trademarks for an earlier one. It is the decisions of the Commissioner and his assistants disposing of these petitions which are the subject of the instant litigation. ⁵

Patent applications may be grouped into three categories. ⁶ First are pending applications, which are exactly what the label suggests applications that are either on the brink of the examination process or already enmeshed in examination proceedings. Second are applications which have culminated in the issuance of a patent. These are called patent files. And third are applications with regard to which proceedings have terminated without the issuance of a patent, either because of an unfavorable PTO determination or because the applicant has for some reason decided not to pursue the matter. These are called abandoned patent applications. Pursuant to 35 U.S.C. § 122 (1976) categories one and three are maintained in confidence by the PTO. ⁷ Documents in category two, patent files, are public records open for inspection. ⁸

In the spring of 1975, appellant, a law firm that seems to devote considerable resources to FOIA litigation against the PTO, ⁹ filed a request for all decisions of the Commissioner granting or denying petitions for earlier filing dates and all indices pertaining to such decisions. ¹⁰ By letter of April 23, 1975 the PTO granted the request in part and denied it in part. ¹¹ More specifically, the agency agreed to make available (1) in their entirety all decisions Denying earlier filing dates contained in Patent files, and (2) after deletion of confidential material all decisions Denying earlier filing dates contained in Abandoned applications. In addition, the PTO provided indices of the decisions to which access was granted. The agency declined to release decisions Denying an earlier filing date that pertain to Pending applications as well as all decisions Granting earlier filing dates. ¹² Appellant appealed administratively, ¹³ and the agency adhered to its previous position. ¹⁴

On August 27, 1975 appellant filed suit in the District Court seeking disclosure of all filing date decisions withheld, along with pertinent indices. ¹⁵ The District Court granted summary judgment in favor of the PTO on January 23, 1978. ¹⁶ The court found that Exemption 3 of the FOIA, 5 U.S.C. § 552(b)(3) (1976), in conjunction with the provision of the patent statute requiring that patent applications be maintained in confidence, 35 U.S.C. § 122 (1976), shields the bulk of the decisions in suit from disclosure under the FOIA. This appeal followed.

II

The FOIA combines a strong disclosure mandate with nine rather specific exemptions. ¹⁷ It is a commonplace that the former is to be generously construed while the latter are narrowly circumscribed. ¹⁸ The key question posed by the instant litigation is whether patent applications and information concerning them qualify by virtue of 35 U.S.C. § 122 as materials "specifically exempted from disclosure by statute" for purposes of the third exemption to the FOIA, 5 U.S.C. § 552(b)(3), and thus may be kept in confidence by the PTO. The District Court held that they do so qualify, and we concur. ¹⁹

Exemption 3 excludes from the coverage of the FOIA matters that are

specifically exempted from disclosure by statute (other than section 552b of this title), provided that such statute (A) requires that the matters be withheld from the public in such a manner as to leave no discretion on the issue, or (B) establishes particular criteria for withholding or refers to particular types of matters to be withheld(.)

5 U.S.C. § 552(b)(3). The proviso that makes up the major part of this exemption was added to it in 1976 by the Government in the Sunshine Act. ²⁰ Congress' goal was to overrule legislatively the Supreme Court's decision in Administrator, FAA v. Robertson, 422 U.S. 255, 95 S.Ct. 2140, 45 L.Ed.2d 164 (1975), which had given an expansive reading to the version of Exemption 3 then in force. ²¹ The amended text and its legislative history make clear that Congress did not want the exemption to be triggered by every statute that in any way gives administrators discretion to withhold documents from the public. ²² On the contrary, Congress intended exemption from the FOIA to be a legislative determination and not an administrative one. ²³ It provided that only explicit nondisclosure statutes that evidence a congressional determination that certain materials ought to be kept in confidence will be sufficient to qualify under the exemption. But it did provide that such statutes would be sufficient. ²⁴

With this as background, we turn to Section 122 of the Patent Act, which provides:

Applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of any Act of Congress or in such special circumstances as may be determined by the Commissioner.

35 U.S.C. § 122 (1976). In Irons v. Gottschalk, 179 U.S.App.D.C. 37, 548 F.2d 992 (1976), Cert. denied, 434 U.S. 965, 98 S.Ct. 505, 54 L.Ed.2d 451 (1977), a panel of this court assumed that Section 122 was an express statutory exemption for purposes of the prior version of Exemption 3. ²⁵ In a footnote to that decision we made reference to the changes wrought by Congress via the Government in the Sunshine Act and expressed the view that those changes would not alter the outcome of that case. ²⁶ While indicative of that panel's view of the new statute, we do not think the footnote in Irons, appended as it was to a decision in a case argued under the prior statute, is properly elevated to a Holding binding upon us today. Thus it is on an at least formally clean slate that we now consider the matter.

We recognize at the outset that Section 122 fails to satisfy fully the first part of the proviso in Exemption 3. The Patent Act simply is not a statute that requires nondisclosure "in such a manner as to leave No discretion on the issue." (Emphasis added.) Rather it permits the Commissioner to release information concerning patent applications when he finds there exist the appropriate "special circumstances." But the mere presence of some residual administrative discretion does not take Section 122 out of Exemption 3. It is quite clear that the requirements set forth in that exemption are phrased in the disjunctive, and it is therefore sufficient if either prong of the proviso is satisfied. We believe that Section 122 does satisfy the second prong because it "refers to particular types of matters to be withheld" namely, patent applications and information concerning them. ²⁷ Moreover, taking a somewhat broader view, we would in any event be extremely...