Smartflash, LLC v. U.S. Pat. & Trademark Office, No. 22-1123, 2023 WL 5289287 (D.D.C. Aug. 17, 2023) (Howell, J.)

Smartflash, LLC v. U.S. Pat. & Trademark Office, No. 22-1123, 2023 WL 5289287 (D.D.C. Aug. 17, 2023) (Howell, J.)

Re:  Request for expansion of judicial panels of the Patent Trial and Appeal Board (“PTAB”) for certain USPTO proceedings

Disposition:  Granting defendant’s motion to dismiss; denying plaintiff’s cross-motion for summary judgment

• Litigation Considerations, Standing:  The court holds that “[a]n attorney filing a FOIA request on behalf of his or her client must clearly indicate that the request was filed on the client’s behalf.”  “This [plaintiff’s attorney] failed to do.”  “Plaintiff therefore lacks standing to assert its claims under FOIA, requiring dismissal of the Complaint for lack of subject matter jurisdiction.”  “Plaintiff has plainly not evinced that [plaintiff’s attorney] filed the Requests on its behalf.”  “[Plaintiff’s attorney] did not identify that he was making the Requests on behalf of plaintiff or as part of his representation of plaintiff in his email to USPTO detailing the Requests.”  “Moreover, [plaintiff’s attorney] attached no manner of release form to his Email to permit the release of responsive records to plaintiff.”  “In fact, nothing in [plaintiff’s attorney’s] Email ‘clearly indicate[s] that it is being made on behalf of [plaintiff] to give [plaintiff] standing to bring a FOIA challenge.’”  Additionally, the court finds that “[n]one of [plaintiff’s] arguments is persuasive.”  “Merely because [plaintiff’s attorney] represents plaintiff in some matters and used his work mailing and email addresses when filing the Requests, does not show – let alone clearly demonstrate – that [plaintiff’s attorney] submitted the Requests on plaintiff’s behalf.”  Also, “[t]o be sure, [plaintiff’s attorney] eventually assigned his rights to plaintiff when USPTO raised the issue in this litigation.”  “Assignment of a FOIA claim is permissible.”  “Yet, the belated assignment here . . . – nearly eight months after the Complaint was filed – does not suffice for standing purposes.”  “The Supreme Court has made clear that ‘[t]he existence of federal jurisdiction ordinarily depends on the facts as they exist when the complaint is filed.’”  “Given that [plaintiff’s attorney’s] assignment was only made after the Complaint was filed, plaintiff plainly lacked standing when it initiated this lawsuit.”  “Having failed to show that [plaintiff’s attorney] filed the Requests on plaintiff’s behalf or that [plaintiff’s attorney] timely assigned to plaintiff his
  FOIA rights, plaintiff makes a last-ditch attempt to avoid dismissal by arguing that USPTO conceded in its Answer . . . that ‘Plaintiff submitted’ the Requests and failed to raise the issue of standing until now.”  “This argument is a misfire because ‘standing is jurisdictional[,] and it can never be forfeited or waived.’”