Patent Office Must Justify Withheld Documents

     (CN) – The 4th Circuit partially revived a Freedom of Information Act action against the U.S. Patent & Trademark Office and the Department of Commerce, filed by attorneys involved in patent litigation over BlackBerry technology. The court said the agencies must explain why they withheld and redacted some of the requested documents.

     Attorneys Bert Rein and Hunton & Williams represented patent-holder NTP Inc. in a patent lawsuit against BlackBerry maker Research in Motion Ltd. (RIM). The Canadian-based RIM agreed to pay $612.5 million to settle the case in 2006.
     But after the settlement, the PTO called into question and even rejected some of NTP’s patents, prompting NTP to ask for re-examination.
     NTP reportedly heard rumors of contact between RIM and the PTO in 2006, and directed its attorneys to file FOIA requests seeking documents related to the patent holder’s re-exams.
     The PTO and the Department of Commerce produced 789 pages, but withheld or redacted 1,621 documents, claiming the files were exempt from disclosure.
     NTP’s attorneys filed complaints in federal court in Richmond, and the agencies responded by producing another 1,445 pages. They also submitted affidavits supporting their position, along with a Vaughn index identifying the documents that had been partially or fully withheld.
     The district court granted the agencies’ motion for summary judgment, finding that the documents on the Vaughn index met the requirements for exemption. U.S. District Judge Claude Hilton said most of the documents were exempt as “pre-decisional” and “deliberative” records. The PTO cited attorney-client privilege for a few others.
     The federal appeals court in Virginia agreed that the agencies had adequately searched for the documents and had not improperly withheld anything “at this juncture,” but said they needed to better explain why the documents on the Vaughn index warrant exemption.
     “The agencies bear the burden of providing sufficient factual information as to the document’s nature or content from which the district court can independently assess the applicability of the claimed exemption.”
     The court remanded with instructions to re-examine the Vaughn index documents.

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