Freedom of Information – Exemption 5 protects draft PTAB written decision

Where a requester sought drafts of a written decision relating to a particular adversary proceeding before a three-judge panel of the Patent Trial and Appeal Board, the documents were properly withheld under Exemption 5. They were categorically predecisional and deliberative.

Background

Josh Malone filed a Freedom of Information Act, or FOIA, request with the Patent and Trademark Office, or PTO, seeking documents relating to a particular adversary proceeding before a three-judge panel of the Patent Trial and Appeal Board, or PTAB. Malone requested documents relating to the panel of administrative patent judges assigned to hear the matter, the changes to the makeup of the panel during the course of the proceeding and the drafts of the written decision that the panel ultimately issued.

The PTO provided roughly 1,500 pages of documents in response to Malone’s request. But it did not provide the drafts of the panel’s decision, which had been circulated to nonpanel judges, nor did it provide communications relating to the circulation of those drafts to nonpanel judges, relying on Exemption 5 in FOIA.

On cross-motions for summary judgment, the district court concluded that the documents were properly withheld under Exemption 5 and were not ex parte communications and that there was no “government misconduct defense” under Exemption 5 that would require their disclosure.

Exemption 5

This court must first decide whether the withheld documents were categorically predecisional and deliberative, so as to fall within Exemption 5. The documents in question were, as described by the PTO, (1) “draft versions of three different PTAB decisions at various stages of the editing and review process, with redlining and/or comments” and (2) “emails between PTAB employees discussing these drafts and exchanging their opinions and analysis of the issues presented.” This court has little difficulty in concluding that the documents withheld by the PTO were categorically both predecisional and deliberative.

A PTAB panel’s draft opinions that are proposed to resolve some or all claims in an inter partes review, as well as the comments and proposed edits of various nonpanel judges on and about those drafts, are plainly predecisional. They are prepared to assist the panel in advance of arriving at its final decision and issuing its written opinion.

The “fact that the documents in question were drafts . . . indicates that the documents were . . . deliberative.” Moreover, “recommendations, draft documents, proposals, suggestions, and other subjective documents which reflect the personal opinions of the writer rather than the policy of the agency” are quintessential examples of that which the deliberative-process privilege covers.

Circulation

Malone argues that the requirement that a document be “deliberative” can only be satisfied by documents of and among the patent judges assigned to the proceeding, as only those panel members were authorized to issue the written decision. Malone thus argues that documents circulated to nonpanel judges are not “deliberative” and that only drafts and communications that remained within and among the three-judge panel could be protected by the deliberative-process privilege. This court disagrees.

During the course of deliberating on their decision, panel judges are authorized to, and in practice actually do, circulate draft opinions to nonpanel judges and request their input, but the panel retains “sole discretion” whether to accept any such input. The PTAB treats this circulation practice as “part of the Board’s deliberative process,” designed “to promote decision consistency and clarity.” The communication between two judges, whether on a court of appeals or the PTAB, is not an ex parte communication. Such communications remain part of the deliberative process for purposes of Exemption 5.

Misconduct

Malone contends that “the deliberative process privilege should also not apply here because the communications sought by [him] shed light on government misconduct — namely, violations of the APA, due process, and the USPTO’s regulations against ex parte communications.’”

While this is essentially an extension of Malone’s argument that the PTAB practice of circulating draft opinions involves ex parte communications, the further claim that the practice constitutes government misconduct is utterly unsupported by law. Moreover, it is simply untenable to assert that government misconduct bears on the application of Exemption 5. FOIA itself provides no such exception.

Affirmed.

Malone v. United States Patent and Trademark Office, Case No. 24-1706, May 5, 2026. 4th Cir. (Niemeyer), from EDVA at Alexandria (Hilton). Brett Aaron Mangrum for Appellant. Matthew James Mezger for Appellee. VLW 026-2-166. 15 pp.

Full-Text Opinion
VLW 026-2-166

• Malone v. United States Patent and Trademark Office