IP Law Daily, PATENT—4th Cir.: USPTO properly withheld PTAB draft decisions and internal review communications, (May 6, 2026)

By Ravindra Kumar Singh, B.L.

Draft PTAB opinions and comments from non-panel judges were protected materials under the FOIA exemption as they formed part of the agency’s internal adjudicative process.

The U.S. Court of Appeals for the Fourth Circuit has affirmed summary judgment in favor of the United States Patent and Trademark Office (USPTO), holding that the agency properly withheld draft Patent Trial and Appeal Board (PTAB) decisions and related internal communications under Freedom of Information Act Exemption 5. The court concluded that the withheld records were both predecisional and deliberative because they consisted of draft opinions, comments, and recommendations exchanged during the PTAB’s internal review process. The court further rejected arguments that circulation of draft opinions to non-panel administrative patent judges constituted unlawful ex parte communications or government misconduct that defeated the deliberative-process privilege (Malone v. USPTO, No. 24-1706 (4th Cir. May 5, 2026)).

Background. Appellant Josh Malone served as a volunteer with US Inventor, a nonprofit organization advocating for inventors and innovation policy in the United States. The appellee, the USPTO, oversees patent examination and adjudicative proceedings through the PTAB. The dispute arose from Malone’s effort to obtain internal PTAB records concerning an inter partes review proceeding involving cybersecurity company Palo Alto Networks and patent owner Centripetal Networks.

The underlying PTAB proceeding concerned a cybersecurity-related patent challenged through an inter partes review proceeding under the America Invents Act. Although the Fourth Circuit decision did not identify the asserted patent number, it focused on PTAB procedures governing adjudication under 35 U.S.C. §§ 311-318 and the Board’s circulation of draft opinions among administrative patent judges. Malone’s Freedom of Information Act (FOIA) request specifically targeted documents related to PTAB Paper 55, which denied Centripetal Networks’ motion for recusal and rehearing, as well as documents concerning panel composition and internal circulation review procedures.

The dispute originated after Palo Alto Networks initiated an inter partes review challenging Centripetal Networks’ patent. During the proceeding, Centripetal sought the recusal of one administrative patent judge due to alleged stock ownership conflicts. Two judges later withdrew from the panel, and the PTAB assigned two replacement judges before issuing a decision denying the recusal motion. Malone subsequently submitted a FOIA request seeking records concerning the identities and opinions of judges involved in the PTAB decision-making process, including members of the “Circulation Judge Pool” who reviewed draft decisions. After the USPTO failed to respond within the statutory deadline, Malone filed suit in the Eastern District of Virginia seeking disclosure of the requested materials. The USPTO later produced approximately 1,500 pages of documents but withheld draft PTAB decisions and related emails under FOIA Exemption 5. The district court granted summary judgment to the agency, and Malone appealed the ruling to the Fourth Circuit.

Court’s analysis. The appellate court first held that the withheld records plainly qualified as predecisional and deliberative documents protected by Exemption 5. The court emphasized that the records consisted of draft PTAB decisions containing redlines and comments, along with emails discussing proposed edits and legal analysis. Relying on U.S. Fish & Wildlife Service v. Sierra Club, Inc., 592 U.S. 261 (2021), and Solers, Inc. v. IRS, 827 F.3d 323 (4th Cir. 2016), the court explained that Exemption 5 protects agency deliberations intended to foster candid internal discussion and policy development. The appellate court noted that draft opinions and recommendations represented classic examples of deliberative materials because they reflected the “give-and-take” of agency consultation before issuance of a final decision.

The Fourth Circuit next rejected Malone’s central argument that circulating draft opinions to non-panel patent judges transformed the communications into unlawful ex parte contacts. The court explained that PTAB judges routinely circulated draft opinions to other Board members for comments concerning consistency, readability, and legal accuracy, while retaining sole authority over the final decision. The appellate court compared the PTAB’s practice to longstanding procedures used by federal appellate courts, including the Fourth Circuit itself, where judges circulate draft opinions among non-panel colleagues before publication. Citing SAS Institute, Inc. v. Iancu, 584 U.S. 357 (2018), the court observed that inter partes review proceedings resembled adversarial civil litigation and that judicial circulation practices served the legitimate purpose of improving adjudicative quality. The court concluded that communications between judges did not constitute ex parte communications because ex parte prohibitions addressed unilateral contacts between parties and decisionmakers, not internal judicial consultation.

The court also rejected Malone’s assertion that alleged agency misconduct defeated the deliberative-process privilege. Malone argued that the PTAB’s circulation practices violated due process, the Administrative Procedure Act, and USPTO regulations, thereby removing the documents from Exemption 5 protection. The Fourth Circuit disagreed, holding that FOIA contained no government-misconduct exception applicable to Exemption 5. The appellate court relied on Rudometkin v. United States, 140 F.4th 480 (D.C. Cir. 2025), which held that no misconduct exception existed under Exemption 5. The court further stressed that FOIA could not serve as a vehicle for collateral attacks on the legality or constitutionality of broader agency procedures, because FOIA litigation concerned only whether documents must be disclosed. The Fourth Circuit therefore affirmed the district court’s judgment in full.

Disposition. Thus, the Fourth Circuit held that the USPTO properly withheld the PTAB draft decisions and related communications under FOIA Exemption 5 because the materials were predecisional and deliberative. The court reasoned that the circulation of draft opinions to non-panel judges formed part of the PTAB’s legitimate internal review process, did not constitute unlawful ex parte communications, and did not trigger any government-misconduct exception to the exemption.

The Case is No. 24-1706.

Judge: Niemeyer, P.

Attorneys: Brett Aaron Mangrum (Cherry Johnson Siegmund James, PLLC) for Josh Malone. Matthew James Mezger, Office of the U.S. Attorney, for USPTO.

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