MORINVILLE et al v. UNITED STATES PATENT AND TRADEMARK OFFICE

1
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
PAUL MORINVILLE, et al.,
Plaintiffs,
v.
UNITED STATES PATENT AND
TRADEMARK OFFICE,
Defendant.
Case No. 19-cv-1779-CKK-MJS
MEMORANDUM ORDER
Plaintiffs Paul Morinville and Gilbert Hyatt claim that the U.S. Patent and Trademark
Office’s (“PTO”) past use of a Sensitive Application Warning System (“SAWS”) violated the
Privacy Act as to two putative classes. At its simplest, SAWS functioned by flagging certain
“sensitive” patent applications for further review, without necessarily notifying applicants.
Relevant here, PTO has maintained throughout this case that SAWS was in use from 1994 to 2015,
and no later. But with discovery now complete and Plaintiffs’ motion for class certification still
pending, new information from the U.S. Department of Justice (“DOJ”) caused Plaintiffs to
question that proposition. In June 2025, Edward R. Martin, Jr.—the United States Pardon Attorney
and, at the time, Director of DOJ’s “Weaponization Working Group”—sent a letter to the then-
acting PTO Director concerning a PTO initiative that functioned in more recent years as a
“restarted” SAWS program, at least according to the letter. Plaintiffs, seizing on that description
and similar accompanying statements in the DOJ letter, now seek to reopen discovery to learn
more about the referenced program. (ECF No. 77.) PTO opposes the motion, insisting that the DOJ
Case 1:19-cv-01779-CKK-MJS Document 82 Filed 03/17/26 Page 1 of 11

2
letter clumsily described a review program that bears little similarity to SAWS. Because Plaintiffs
have shown good cause to reopen discovery in limited part, the Court GRANTS the motion.1
BACKGROUND
Judge Kollar-Kotelly ably described Plaintiffs’ claims in her prior ruling. See Morinville v.
United States Pat. & Trademark Off., 442 F. Supp. 3d 286 (D.D.C. 2020). The Court repeats here
only what is relevant to resolve the current discovery motion.
Paul Morinville and Gilbert Hyatt are both inventors whose patent applications were
subject to the SAWS program. Broadly speaking, Plaintiffs allege that “[u]nder SAWS, PTO
personnel flagged sensitive applications” based on various criteria, including the “possibility for
publicity, old effective filing dates with broad-scope patents, or objectionable or derogatory subject
matter.” Id. at 290. Plaintiffs additionally claim that, for certain SAWS-flagged applications, PTO
“would prepare a SAWS report” that would “identify[] the factual basis for the flag” to facilitate
further review. Id. PTO generally did not disclose to applicants the fact of any SAWS flags or
reports. Believing SAWS caused adverse consequences to them and others, Plaintiffs brought a
putative class action alleging that SAWS violated various provisions of the Privacy Act.
After Judge Kollar-Kotelly ruled that most of Plaintiffs’ claims could proceed past the
motion-to-dismiss stage, the parties completed discovery. Plaintiffs then moved for class
certification, and that motion remains pending (through a referral to the undersigned).
Enter the current dispute. From the outset of this case, PTO has staunchly maintained that
it shut down the SAWS program in 2015. (See, e.g., ECF No. 9, PTO’s Original Mot. to Dismiss
1 The referral order suggested that the undersigned issue a report and recommendation (see Min. Order,
Mar. 2, 2026), presumably based on the stated relation to the earlier referral on Plaintiffs’ motion for class
certification, which requires an R&R. But because the instant motion implicates a non-dispositive matter,
this ruling takes the form of an order rather than an R&R. See 28 U.S.C. § 636(b)(1)(A); LCvR 72.2(a).
Case 1:19-cv-01779-CKK-MJS Document 82 Filed 03/17/26 Page 2 of 11

3
at 21 (asserting that SAWS was “retired in 2015”); ECF No. 66, PTO’s Opp’n to Class Cert. at 12
(arguing that “the SAWS program was ended nearly a decade ago”); ECF No. 79, PTO’s Opp’n to
Mot. to Reopen Discovery (“Opp’n”) at 3 (stating that SAWS was “retired over a decade ago”).)
On September 24, 2025, Bloomberg Law published an article titled, DOJ ‘Weaponization’
Leader Sought Info on Patent Office Program. (ECF No. 77-1, Pls.’ Ex. E at 21–24.)2 The article
focused on a letter penned by Ed Martin—United States Pardon Attorney, Associate Deputy
Attorney General, and then-Director of the DOJ’s “Weaponization Working Group”—to then-
Acting PTO Director Coke Morgan Stewart concerning a “new Sensitive Application Warning
System program.” (See id.; ECF No. 77-1, Pls.’ Ex. F at 25–27.)3 Invoking his official capacity as
“Associate Deputy United States Attorney General,” Mr. Martin thanked Mr. Stewart for
discovering what he described as a “Biden-era directive to secretly flag pending patents and
allowable patent applications and claims to prevent them from issuing”—“SAWS activity” that
the letter described as “illegal” and “unconstitutional.” (Id., Pls.’ Ex. F at 26–27.) Mr. Martin went
on to request documents associated with Mr. Stewart’s discovery of “the new Sensitive Application
Warning System (SAWS) program, restarted in 2021 under President Joe Biden.” (Id.) And the
letter tied this “restarted” program, at least in some sense, to the prior “SAWS program that
operated from 1994 until it was ‘retired’ in 2015.” (Id.)
Based on that reporting, Plaintiffs’ counsel promptly contacted PTO’s counsel to request a
copy of the letter. (ECF No. 77, Mot. to Reopen Discovery (“Mot.”) at 4.) PTO was unable to
2 Michael Shapiro, DOJ ‘Weaponization’ Leader Sought Info on Patent Office Program, Bloomberg Law,
(Sept. 24, 2025, 6:05 AM), https://perma.cc/R897-TMPW.
3 Mr. Martin’s letter itself was later published by a different news outlet. See Gene Quinn, Prosecution
Laches 	Is 	Illegitimate—And 	SAWS 	Proves 	It, 	IP 	WatchDog 	(Nov. 	18, 	2025, 	3:15 	PM),
https://perma.cc/3WTN-7VW7 	(citing 	DOJ 	to 	USPTO, 	IP 	WatchDog 	(Jun. 	23, 	2025),
https://perma.cc/2UCJ-NLUY).
Case 1:19-cv-01779-CKK-MJS Document 82 Filed 03/17/26 Page 3 of 11

4
immediately engage because of the government shutdown that unfolded in late 2025. (Id.) But
PTO eventually responded in early December 2025. (Id.) PTO took the position that Mr. Martin’s
letter was “based on a misapprehension of how patents quality review programs work” and
inaccurately described the program as a “restarted” SAWS. (ECF No. 77-1, Pls.’ Ex. C at 12–15.)
Unassuaged, Plaintiffs now move to reopen discovery to “allow limited discovery on the ‘restarted’
SAWS program discussed in [the DOJ] letter.” (See Mot. at 1.)
PTO opposes the motion. (ECF No. 79 (“Opp’n”).) With their opposition, PTO submitted
a declaration from Dr. Kathleen Bragdon, Deputy Director for the PTO’s Office of Patent Quality
Assurance, who was deposed earlier in this case. (ECF No. 79-1, Bragdon Decl.) Dr. Bragdon’s
declaration attempts to explain that the review initiative referenced in Mr. Martin’s letter—what
she calls “Large Patent Family Review”—is meaningfully different from the SAWS program at
the center of this litigation. Dr. Bragdon asserts that “[a]lthough SAWS and Large Patent Family
Review both featured flagging applications … these review initiatives were not the same.” (Id.
¶ 20.) The declaration walks through how Large Patent Family Review functioned (id. ¶¶ 9–18),
states that none of Plaintiffs’ applications were subject to this review (id. ¶ 18), and articulates a
variety of asserted differences between SAWS and Large Patent Family Review (id. ¶¶ 19–26). Of
these 	differences, 	Dr. 	Bragdon 	highlights 	that 	SAWS 	selection 	criteria 	were 	“somewhat
subjective,” while Large Patent Family Review used “an objective standard” based on a threshold
number of patents within a family. (Id. ¶ 21.) She also emphasizes that applications in Large Patent
Family Review were generally only flagged for two weeks, as opposed to the “weeks, months, or,
in some extreme cases, even years” that some applications were flagged by SAWS. (Id. ¶ 23.)
Amid these two disparate descriptions of the PTO review program referenced in the DOJ
letter—Mr. Martin’s characterization of a “restarted” SAWS program that he described as “illegal”
Case 1:19-cv-01779-CKK-MJS Document 82 Filed 03/17/26 Page 4 of 11

5
and “unconstitutional,” versus Dr. Bragdon’s description of a separate initiative that bears little
resemblance to the prior SAWS program—the parties are at an impasse as to whether any new
discovery on this topic is justified. The matter is fully briefed and referred to the undersigned for
decision. (See ECF No. 81 (“Reply”); Min. Order, Mar. 2, 2026.)
LEGAL STANDARD
A scheduling order “may be modified only for good cause and with the judge’s consent.”
Fed. R. Civ. P. 16(b)(4); see LCvR 16.4. This “good cause standard requires the ‘party seeking
relief to show that [a scheduling order’s] deadlines cannot reasonably be met despite [its]
diligence.’” Capitol Sprinkler Inspection, Inc. v. Guest Servs., Inc., 630 F.3d 217, 226 (D.C. Cir.
2011) (quoting S&W Enters., LLC v. SouthTrust Bank, 315 F.3d 533, 535 (5th Cir. 2003)); see also
In re Rail Freight Fuel Surcharge Antitrust Litig. (Rail Freight II), 138 F. Supp. 3d 1, 2 (D.D.C.
2015) (“Reopening discovery … requires a showing of good cause.”) (cleaned up). In evaluating
good cause, courts consider six factors: “whether trial is imminent; whether the request is opposed;
whether the non-moving party would be prejudiced; whether the moving party was diligent in
obtaining discovery within the guidelines established by the court; the foreseeability of the need
for additional discovery in light of the time allotted by the district court; and the likelihood that
the discovery will lead to relevant evidence.” Rail Freight II, 138 F. Supp. 3d at 2 (quoting Watt v.
All Clear Bus. Sols., LLC, 840 F. Supp. 2d 324, 326 (D.D.C. 2012)) (numbering omitted).
Reopening discovery “is committed to the sound discretion of the trial court.” Watt, 840 F. Supp.
2d at 326 (quoting Childers v. Slater, 197 F.R.D. 185, 187 (D.D.C. 2000)).
Case 1:19-cv-01779-CKK-MJS Document 82 Filed 03/17/26 Page 5 of 11

6
ANALYSIS
The first two factors are straightforward and not in dispute here: trial is not imminent, and
PTO opposes the request. (See Mot. at 8; Opp’n at 12.) So only the last four factors require any
real discussion. Because the parties start with diligence, the Court begins its analysis there, too.
Diligence. The moving party’s diligence in pursuing the discovery at issue is often framed
as one of the most important factors in the “good cause” analysis. United States v. Kellogg Brown
& Root Servs., Inc., 285 F.R.D. 133, 136 (D.D.C. 2012) (“The primary factor in determining
whether good cause exists is the diligence of the party seeking discovery before the deadline.”)
(citing Johnson v. Mammoth Recreations, Inc., 975 F.2d 604, 609 (9th Cir. 1992)).
Here, as a starting point, there is no disagreement that Plaintiffs diligently pursued this new
discovery after learning about the DOJ letter at the center of the dispute. (See Mot. at 5 (“[O]nce
information about the ‘restarted’ SAWS program arose, Plaintiffs immediately sought for the PTO
to voluntarily reopen discovery to provide this material.”); Opp’n at 14 (“PTO does not contest
Plaintiffs’ diligence in the time frame between learning about the letter and filing their motion[.]”).)
That is an important facet of the backdrop here, as the Court would certainly look more dimly on
Plaintiffs’ request if they had dragged their feet in raising this new issue with PTO or the Court.
But this factor “primarily considers the diligence of the party in seeking discovery before the
deadline.” Lopez v. Timeco Inc., 291 F. Supp. 3d 1, 3 (D.D.C. 2017) (quoting Barnes v. Dist. of
Columbia, 289 F.R.D. 1, 7 (D.D.C. 2012)). And it is on that front where the parties disagree.
Plaintiffs assert they previously “sought comprehensive discovery on SAWS, including
discovery that ought to have elicited documents about the ‘restarted’ SAWS program.” (Mot. at 5.)
PTO disagrees, insisting that Plaintiffs could have pursued “discovery beyond the SAWS program
that PTO began in 1994 and ended in 2015” but chose not to, including by not moving to compel
Case 1:19-cv-01779-CKK-MJS Document 82 Filed 03/17/26 Page 6 of 11

7
discovery into other “review programs” over PTO’s objections. (Opp’n at 14.) PTO additionally
takes the position that Dr. Bragdon, during her deposition, referred to the review program Plaintiffs
now characterize as a “restarted SAWS program,” yet Plaintiffs “failed to ask Dr. Bragdon a single
follow-up question about it.” (See id. at 15.) On balance, the Court credits Plaintiffs’ diligence
during the discovery period and finds that PTO’s contrary arguments miss the mark.
Most importantly, PTO steadfastly maintained throughout discovery that the SAWS
program ended in 2015. That was true in PTO’s court filings, in PTO’s written discovery responses,
and even in Dr. Bragdon’s deposition testimony. (See ECF No. 77-1, Pls.’ Ex. G (Bragdon Dep.
Tr.) at 309 (testifying that the “SAWS program was shut down in 2015”).) When it came to the
lifespan of the SAWS program, PTO’s position was unequivocal. So, while it may be true that
Plaintiffs did not push harder for additional discovery into other secondary-review programs
administered by PTO in the years after 2015, the reason seems clear: based on PTO’s repeated
representations, Plaintiffs had no reason to believe any other review programs were akin to SAWS.
Then came the public reporting on Ed Martin’s letter. At that point, Plaintiffs discovered
that a senior DOJ official—reportedly based on specific information he received from the then-
Acting PTO Director—believed that PTO “restarted” the same prior SAWS program underlying
Plaintiffs’ claims. According to the letter, PTO began reengaging in “unconstitutional SAWS
activity” in 2021, including by “secretly flag[ging] pending patents and allowable patent
applications and claims to prevent them from issuing.” (See Pls.’ Ex. E; see also Pls.’ Ex. F.)
Plaintiffs never heard anything of the sort from PTO or its witnesses during discovery; PTO
certainly does not suggest as much. Framed appropriately, then, Plaintiffs’ request is comparable
to those cases where courts have reopened discovery based on newly disclosed evidence. 2910
Georgia Ave. LLC v. Dist. of Columbia, 312 F.R.D. 205, 209–11 (D.D.C. 2015); see also G & E
Case 1:19-cv-01779-CKK-MJS Document 82 Filed 03/17/26 Page 7 of 11

8
Real Est., Inc. v. Avison Young–Washington, D.C., LLC, 323 F.R.D. 67, 71 (D.D.C. 2017); In re
Rail Freight Fuel Surcharge Antitrust Litig. (Rail Freight I), 281 F.R.D. 12, 14 (D.D.C. 2011). And
viewed through that lens, the Court disagrees that Plaintiffs were not diligent in pursuing this
information earlier when their basis for seeking additional discovery only surfaced after the close
of discovery, especially given PTO’s own discovery representations about the lifespan of SAWS.
Prejudice. This factor asks “whether the non-moving party would be prejudiced” by
reopening discovery. Rail Freight II, 138 F. Supp. 3d at 2. PTO argues that it would be prejudiced
by the prospect of additional delay, both as to the resolution of Plaintiffs’ motion for class
certification and the disposition of the case overall. (See Opp’n at 15–16.) But as Plaintiffs identify
(Reply at 6), some delay, where a trial date is not set, is not particularly prejudicial. Wash. Metro.
Area Transit Comm’n v. Reliable Limousine Serv., LLC, 776 F.3d 1, 5 (D.C. Cir. 2015) (“[D]elay
that merely prolongs litigation ‘is not a sufficient basis for establishing prejudice.’”) (quoting
Berthelsen v. Kane, 907 F.2d 617, 621 (6th Cir. 1990)); see also Watt, 840 F. Supp. 2d at 327
(identifying little prejudice based on “the mere passage of time”) (citation omitted). More broadly,
to the extent PTO is concerned about prejudice beyond delay—i.e., prejudice from broader
discovery (Opp’n at 16)—this can be addressed by allowing only limited and targeted discovery
into the issues raised by the DOJ letter, as addressed below.
Foreseeability. The next factor considers “the foreseeability of the need for additional
discovery in light of the time allotted by the district court.” Rail Freight II, 138 F. Supp. 3d at 2.
For the same reasons explained above, the Court agrees with Plaintiffs that the need for the
additional discovery they seek was not foreseeable during the discovery period. PTO again argues
that Plaintiffs should have foreseen the need to pursue details about other PTO review initiatives
earlier, and PTO stresses that Plaintiffs could have (but did not) probe further with Dr. Bragdon
Case 1:19-cv-01779-CKK-MJS Document 82 Filed 03/17/26 Page 8 of 11

9
through deposition questions about the “large patent family review” program she referenced at one
point. (Opp’n at 15.) But this again ignores the chasm between Dr. Bragdon’s description of the
program and Mr. Martin’s description of that same program in his letter to the then-Acting PTO
Director. Based on the information PTO now identifies, Plaintiffs could not have reasonably
foreseen that another review initiative might be tantamount to a “restarted SAWS program,”
certainly not on the specific and provocative terms suggested by the DOJ letter, and certainly not
in the face of PTO’s steady insistence that the SAWS program was shut down for good in 2015.
Relevance. The final factor examines “the likelihood that the discovery will lead to relevant
evidence.” Rail Freight II, 138 F. Supp. 3d at 2. Unsurprisingly, the parties have widely divergent
views on this subject. Plaintiffs say the DOJ letter itself provides the relevance hook for the
additional discovery they seek. If PTO truly “restarted” the SAWS program in 2021, as Mr. Martin
stated he was advised by the then-Acting PTO Director, then it becomes easy to understand why
more discovery into the contours of that program would be relevant. For its part, PTO does not
really argue on that terrain. Instead, PTO’s relevance objections are premised on the notion that
the program described in the DOJ letter was not, in fact, a “restarted” SAWS program, no matter
what Mr. Martin might have meant. This explains why PTO submits a supplemental declaration
from Dr. Bragdon that goes into some meaningful detail about both the review program that PTO
contends was referenced in the DOJ letter and how that program differs substantially from the
SAWS program that Plaintiffs challenge. (See Bragdon Decl.)
Taken at face value, Dr. Bragdon’s declaration seems to go a long way toward undercutting
Plaintiffs’ theory. But Plaintiffs’ theory is not something they conjured up on their own. Again, it
traces its roots to a letter written by a senior DOJ official based on information reportedly conveyed
by the then-Acting PTO Director. And that DOJ letter made some bold assertions. It described a
Case 1:19-cv-01779-CKK-MJS Document 82 Filed 03/17/26 Page 9 of 11

10
recently discontinued PTO program as a “restarted” SAWS program that was in effect between
2021 and 2025, connected that “restarted” program to the SAWS program that operated from 1994
to 2015, and characterized the program as “illegal” and comprising “unconstitutional SAWS
activity.” Perhaps the DOJ’s “Weaponization Working Group” got out over its skis in the way it
described the issue, and perhaps the letter’s sensationalized characterizations of the relevant
program are inaccurate. But against that backdrop, the Court is hard-pressed to reject Plaintiffs’
relevance arguments out of hand. The Court agrees Plaintiffs should at least have an opportunity
to probe the newly proffered details in Dr. Bragdon’s supplemental declaration through a follow-
up deposition. See, e.g., Pishevar v. Fusion GPS, 2025 WL 885115, at *5 (D.D.C. Mar. 21, 2025)
(recognizing litigants’ interest in probing their adversaries’ representations in declarations,
including by asking follow-up questions and identifying other potentially relevant context); see
also Davidowitz v. Patridge, 2010 WL 1779279, at *5 (S.D.N.Y. Apr. 23, 2010) (characterizing
discovery as a “mechanism … to test the evidence of their opponents”). If, as PTO and Dr. Bragdon
proffer, the DOJ letter was simply wrong in its representations, that ought to be the end of the
matter. But given the unusual context through which this issue surfaced—formal correspondence
between a high-level DOJ official and PTO leadership—Plaintiffs understandably want a chance
to test whether there may yet be more to the story. Plaintiffs pass the relevance test.
* 	* 	*
On balance, with PTO opposing the request, all but one of the applicable “good cause”
factors weigh toward reopening discovery into the subject of a potentially “restarted” SAWS
program that may have been in effect beyond 2015. So, the Court believes that Plaintiffs’ motion
for additional discovery is warranted, at least in some sense. But that leaves the question of exactly
what additional discovery the Court should greenlight. Plaintiffs do not propose any specifics—
Case 1:19-cv-01779-CKK-MJS Document 82 Filed 03/17/26 Page 10 of 11

11
whether in the form of additional written discovery or deposition discovery—except to request,
“[a]t the very least,” an additional deposition of “Dr. Bragdon regarding her new declaration to
determine the scope of the … program.” (Reply at 4.) In fact, that strikes the Court as a sensible
starting point. Accordingly, the Court will allow Plaintiffs to conduct an additional deposition of
Dr. Kathleen Bragdon, not to exceed three (3) hours, with questioning limited to the subject of the
review program referenced in the DOJ letter, her new declaration, and any closely related issues.
CONCLUSION AND ORDER
For the reasons stated, the Court GRANTS Plaintiffs’ motion (ECF No. 77) to authorize
an additional deposition of Dr. Bragdon, not to exceed three (3) hours, limited to the subject of the
review program referenced in the DOJ letter, her new declaration, and any closely related issues.
The parties should complete the deposition within thirty (30) days of this order absent mutual
agreement or further order of the Court.
Thereafter, the parties should confer and file a joint status report within ten (10) days after
the conclusion of that deposition, setting forth their respective positions on whether any additional
discovery may be appropriate and on precisely what terms. In keeping with the existing referral,
the undersigned stands ready, as necessary, to resolve any future disagreement between the parties.
In the meantime, the Court will temporarily table any further consideration of Plaintiffs’ motion
for class certification based on the possibility that the parties might seek to supplement their
submissions with additional information that may be uncovered through further discovery.
SO ORDERED.
Dated: March 17, 2026
MATTHEW J. SHARBAUGH
United States Magistrate Judge
Case 1:19-cv-01779-CKK-MJS Document 82 Filed 03/17/26 Page 11 of 11