Please ensure Javascript is enabled for purposes of website accessibility

Search for responsive records request was adequate

Virginia Lawyers Weekly//April 3, 2023

Search for responsive records request was adequate

Virginia Lawyers Weekly//April 3, 2023

Where the United States Patent and Trademark Office, or USPTO, submitted a declaration explaining the methodology of and rationale behind its search process, indicating the types of searches performed, listing the various locations searched and specifying the search terms used, the court found that the searches were reasonably calculated to find records responsive to a request under the Freedom of Information Act, or FOIA.


David E. Boundy, a patent attorney, submitted a request for records to the USPTO. Plaintiff sought “all documents,” including “guidance, memoranda, instructions, or other documents (internal or external)” that guided acceptable signatories for patent applications. Plaintiff received numerous document productions, totaling hundreds of pages.

But defendant withheld six pages of records in full and 28 pages in part, claiming that they were protected from disclosure pursuant to one of the statutory exemptions under the FOIA. Plaintiff filed this lawsuit, arguing that defendant did not perform an adequate search under the FOIA and was improperly withholding information from plaintiff that was subject to disclosure under the FOIA. Before the court are the parties’ cross motions for summary judgment.


Defendant argues that plaintiff’s claim is moot and should be dismissed because defendant “has fully complied with Plaintiff’s FOIA request” by producing all responsive records to plaintiff. This court finds that plaintiff’s claim is not moot because plaintiff challenges the adequacy of defendant’s search, and this court must still determine if the pages withheld in full and in part by defendant are being properly withheld under the FOIA.


The court finds that defendant conducted a search that was reasonably calculated to find records responsive to plaintiff’s request. In response to plaintiff’s request, at least 10 custodians conducted searches. Its declaration also sets forth the methodology of and rationale behind the search process; indicates the types of searches performed; lists the various locations searched and specifies the search terms used.

When it became clear to defendant that plaintiff had not, in fact, intended to narrow his request and sought more documents beyond the 2016 authority chart, defendant remanded and reopened plaintiff’s request, and conducted a re­examination of the records that had been collected via its initial search. Furthermore, defendant’s willingness to conduct additional searches in response to plaintiff’s objections, even though defendant was not required to make additional searches, “substantially undercut[s] any suggestion of bad faith.”

Plaintiff seeks an internally established set of “secret rules” that he believes governs USPTO personnel in “accepting and rejecting various signed documents.” Defendant has apparently not produced such a document to him. Although plaintiff “seems to believe that there are other documents that he is entitled to, this belief, standing alone, is inadequate to withstand a motion for summary judgment.”

Defendant’s failure to use plaintiff’s long list of search terms and to produce the “secret rules” plaintiff seeks does not preclude a finding that defendant conducted an adequate search. The court finds that defendant’s various searches were reasonably calculated to find records responsive to plaintiff’s request.


The court’s in camera review of documents one, two, three and five confirms that the information therein is predecisional and deliberative and, thus, properly redacted under the deliberative process privilege.

Documents two, three and five contain discussions about a draft version of the authority chart that had not been distributed to Office of Patent Application Processing, and with changes still pending approval by Office of General Law and finalization by Office of Patent Legal Administration.

Here, there are discrepancies between the 2016 authority chart (the version of the document produced to plaintiff) and the withheld draft. Redacted discussion is also consistent with defendant’s representation that no update to the 2016 authority chart had been “finalized or distributed for use by USPTO personnel.” Based on the redacted information, it appears the draft was neither widely distributed to USPTO personnel, nor regarded by USPTO personnel as the “functionally final” version of that document. Thus, the draft is covered by the deliberative process privilege and was properly withheld.

Defendant contends that the redacted information in documents two and three is also covered by the attorney-client privilege. The court agrees. The court concludes, however, that some information – two images in document four – was improperly withheld and must be disclosed to plaintiff. Pages 15 and 19 contain images of the 2013 authority chart, which was previously disclosed to plaintiff. This information is neither predecisional nor deliberative.

Plaintiff’s motion for summary judgment denied. Defendant’s motion for summary judgment granted.

Boundy v. United States Patent and Trademark Office, Case No. 1:21-cv-1366, March 17, 2023. EDVA at Alexandria (Giles). VLW 023-3-140. 20 pp.

Verdicts & Settlements

See All Verdicts & Settlements

Opinion Digests

See All Digests