Malone v. USPTO — Fourth Circuit Upholds Withholding of PTAB Draft Opinions Under FOIA Deliberative Process Privilege

Background

Josh Malone, a volunteer with US Inventor — a nonprofit organization that advocates for inventor rights — filed a Freedom of Information Act request with the USPTO seeking documents from a specific inter partes review (IPR) proceeding. The underlying IPR had been initiated by Palo Alto Networks against a cybersecurity patent owned by Centripetal Networks, and involved a mid-proceeding recusal of one administrative patent judge due to a stock ownership conflict.

Malone’s FOIA request targeted ten categories of documents, including the identities and opinions of individuals involved in the recusal decision, stock holdings of specific judges, and information about the PTAB’s “Circulation Judge Pool” — a practice where draft opinions are shared with non-panel judges for comment before finalization.

The PTO produced roughly 1,500 pages of responsive documents but withheld two categories under FOIA Exemption 5: (1) draft versions of three PTAB decisions at various editing stages, with redlining and comments, and (2) emails between PTAB employees discussing those drafts. The Eastern District of Virginia granted summary judgment to the PTO, and Malone appealed.

The Court’s Holding

The Fourth Circuit unanimously affirmed, upholding the PTO’s withholding under the deliberative process privilege.

On the threshold question, the court found the withheld documents were clearly “predecisional” and “deliberative.” Draft opinions prepared before a panel issues its final decision are plainly predecisional, and the edits, comments, and proposed changes they contain reflect the “give-and-take of the consultative process” that Exemption 5 is designed to protect.

Malone’s central argument was more provocative: he contended that the PTAB’s Circulation Judge Pool practice — sharing draft opinions with non-panel judges — constituted unlawful ex parte communications that violated the APA and due process, and therefore the documents could not be shielded as legitimate deliberation. The court rejected this entirely.

Judge Niemeyer explained that ex parte communications are properly defined as communications between an adverse party and the decisionmaker in the absence of the opposing party. Communications between judges — including between panel and non-panel judges — are categorically not ex parte. The court drew an explicit analogy to federal appellate courts’ own practices: the Fourth Circuit’s Internal Operating Procedure 36.2 requires circulating proposed opinions to all judges for comment before finalization, and the Third, Sixth, Tenth, D.C., and Federal Circuits have similar formal rules.

Finally, the court rejected Malone’s argument that a “government misconduct” exception should override Exemption 5, confirming that no such exception exists in FOIA law.

Key Takeaways

• PTAB’s draft-circulation practice is lawful deliberation. The court drew an explicit parallel between PTAB’s Circulation Judge Pool and the practices of every federal circuit court, cementing this as routine judicial deliberation rather than improper outside influence.
• FOIA Exemption 5 protects internal PTAB communications. Draft opinions, editorial comments, and inter-judge emails about pending decisions fall squarely within the deliberative process privilege — even when those communications involve judges not formally assigned to the three-judge panel.
• No government misconduct carve-out. Allegations that the underlying practice is improper do not strip the deliberative process privilege. FOIA is a document-disclosure statute, not a vehicle for challenging agency adjudicatory procedures.
• Published and precedential. As a published Fourth Circuit opinion, this ruling binds all district courts in the Fourth Circuit — including the Eastern District of Virginia, where many PTAB-related actions are filed.

Why It Matters

This decision settles a question that has animated patent reform advocates for years: whether the PTAB’s practice of circulating draft decisions to non-panel judges represents improper “shadow panel” influence. The Fourth Circuit’s answer is an emphatic no — this is the same kind of collegial review that every federal appellate court uses to maintain consistency and quality in its opinions.

For patent challengers and inventors who believe PTAB paneling decisions involve improper influence, this ruling closes the FOIA route. Those challenges must instead be brought in proceedings where the challenger has direct standing and a particularized injury — not through document requests aimed at exposing internal deliberations.