Administrative – Internal Communications Among Patent Judges – Withheld Materials

Draft Patent Trial and Appeal Board (PTAB) decisions and internal communications among patent judges were properly withheld under the Freedom of Information Act’s deliberative-process exemption.

The Fourth Circuit affirmed summary judgment in favor of the United States Patent and Trademark Office (USPTO).

The dispute arose after inventor advocate Josh Malone, a volunteer with the nonprofit organization US Inventor, submitted a FOIA request seeking documents related to an inter partes review proceeding involving cybersecurity patents owned by Centripetal Networks Inc. Malone sought information concerning the composition of a PTAB panel, changes made to the panel during the proceeding, and internal discussions surrounding a decision denying a recusal motion directed at one of the administrative patent judges. After Malone filed suit over delayed responses, the USPTO produced roughly 1,500 pages of documents but withheld draft decisions and related internal emails under FOIA Exemption 5, which protects pre-decisional and deliberative agency materials from disclosure.

Malone argued that the withheld materials were not genuinely deliberative because draft PTAB opinions had been circulated to judges who were not assigned to the three-judge panel deciding the proceeding. According to Malone, communications between assigned and non-assigned judges amounted to improper ex parte contacts that violated due process, the Administrative Procedure Act, and USPTO regulations governing adjudications. He further contended that alleged misconduct stripped the documents of Exemption 5 protection.

The Fourth Citcuit rejected those arguments and concluded that the withheld records plainly fell within the deliberative-process privilege incorporated into Exemption 5. The court explained that draft opinions, comments, edits, and internal recommendations are classic examples of pre-decisional and deliberative materials because they reflect the “give-and-take” of agency decision-making before a final adjudication is issued. The opinion emphasized that PTAB procedures allowing draft decisions to circulate among nonpanel judges mirror longstanding practices used in federal appellate courts, where draft opinions are routinely shared with non-panel judges for feedback intended to improve consistency, clarity, and legal analysis.

The Fourth Circuit also rejected Malone’s characterization of the communications as ex parte. The court explained that ex parte communications traditionally involve improper contact between a decision-maker and one party outside the presence of the opposing party, not internal discussions among adjudicators within the same tribunal. The court further held that FOIA does not create a “government misconduct” exception to Exemption 5 and stressed that FOIA litigation cannot be used as a collateral vehicle to challenge broader agency practices or the legality of agency adjudicatory procedures.

Affirmed.

Malone v. U.S. Patent and Trademark Office (Lawyers Weekly No. 001-162-26, 15 pp.) (Paul V. Niemeyer, J.) Appealed from the U.S. District Court for the Eastern District of Virginia, at Alexandria (Claude M. Hilton, J.) ARGUED: Brett Aaron Mangrum, CHERRY JOHNSON SIEGMUND JAMES, PLLC, Dallas, Texas, for Appellant. Matthew James Mezger, OFFICE OF THE UNITED STATES ATTORNEY, Alexandria, Virginia, for Appellee. ON BRIEF: Travis L. Richins, CHERRY JOHNSON SIEGMUND JAMES, PLLC, Waco, Texas, for Appellant. Jessica D. Aber, United States Attorney, Carolyn M. Wesnousky, Assistant United States Attorney, OFFICE OF THE UNITED STATES ATTORNEY, Alexandria, Virginia, for Appellee. U.S. Court of Appeals for the Fourth Circuit

Full-Text Opinion

• Malone v. U.S. Patent and Trademark Office