FOIA Exemption 5 Protects PTAB Draft Decisions Circulated to Nonpanel Judges; No “Government Misconduct” Exception

Introduction

In Josh Malone v. United States Patent & Trademark Office (4th Cir. May 5, 2026), Josh Malone—a volunteer with US Inventor—used the Freedom of Information Act (FOIA) to seek internal Patent and Trademark Office (PTO) materials concerning an inter partes review before a three-judge panel of the Patent Trial and Appeal Board (PTAB). The request targeted (i) who participated in particular PTAB decisions, (ii) how and why the panel’s composition changed, and (iii) crucially, drafts of the panel’s written decision and related emails—especially drafts circulated to nonpanel administrative patent judges.

The PTO produced roughly 1,500 pages but withheld draft decisions and intra-agency emails under FOIA Exemption 5, which incorporates the deliberative-process privilege for materials that are both predecisional and deliberative. Malone argued that circulation to nonpanel judges was unlawful “ex parte” interference violating the Administrative Procedure Act (APA), due process, and PTO regulations, and that such “government misconduct” should defeat Exemption 5.

Summary of the Opinion

The Fourth Circuit affirmed summary judgment for the PTO, holding:

  • The withheld draft PTAB decisions and related emails are categorically predecisional and deliberative and therefore fall within Exemption 5.
  • Circulating drafts among PTAB judges (including nonpanel judges) is not an “ex parte” communication; “ex parte” concerns party-to-decisionmaker contacts, not judge-to-judge consultation.
  • FOIA Exemption 5 contains no “government misconduct” exception, and FOIA is not a vehicle for collateral attacks on agency legality/constitutionality.

Analysis

Precedents Cited

1) The Exemption 5 / deliberative-process framework

  • Solers v. IRS, 827 F.3d 323 (4th Cir. 2016): The court relied on Solers for the core test: the government must show the materials are both predecisional and deliberative “in the context in which the materials were used.” This is the central analytic lens applied to PTAB drafts and emails.
  • City of Virginia Beach v. U.S. Dep't of Com., 995 F.2d 1247 (4th Cir. 1993): Cited as authority describing Exemption 5’s deliberative nature and the type of internal communications protected, supporting the conclusion that draft adjudicatory documents fit comfortably within the privilege.
  • U.S. Fish & Wildlife Serv. v. Sierra Club, Inc., 592 U.S. 261 (2021): Used to underscore that Exemption 5 tracks traditional civil-discovery privileges (including deliberative process), reinforcing that draft, internal decisionmaking documents are paradigmatic protected materials.
  • Empower Oversight Whistleblowers & Rsch. v. Nat'l Insts. of Health, 122 F.4th 92 (4th Cir. 2024): Heavily supports the “drafts are deliberative” principle; the court quoted it for: (i) the definition of “pre-decisional,” and (ii) the inference that draft status “indicates” deliberativeness.
  • Rein v. U.S. Pat. & Trademark Off., 553 F.3d 353 (4th Cir. 2009): Cited to confirm that requests seeking “opinions” of agency decisionmakers about draft decisions seek deliberative material.
  • Hanson v. U.S. Agency for Int'l Dev., 372 F.3d 286 (4th Cir. 2004): Cited for the burden allocation—the agency bears the burden of proving the exemption applies— which the court found satisfied by the PTO’s description of drafts and intra-agency commentary.

2) “Ex parte” communications and why judge-to-judge circulation is different

  • RZS Holdings AVV v. PDVSA Petroleo S.A., 506 F.3d 350 (4th Cir. 2007): Provided a conventional definition of ex parte: one adverse party communicating with the decisionmaker without the other party present.
  • Pendleton v. Revature LLC, No. 2:22-cv-01399-TL, 2025 WL 2586448 (W.D. Wash. Aug. 27, 2025), and In re A.H. Robins Co., Inc., 602 F. Supp. 243 (D. Kan. 1985): Cited to make the narrow but decisive point that “ex parte” refers to judge–party communications, not communications among judges.

3) Rejecting a “government misconduct” exception to Exemption 5

  • Rudometkin v. United States, 140 F.4th 480 (D.C. Cir. 2025): The court adopted Rudometkin’s clear statement that no government misconduct exception exists for FOIA Exemption 5. This citation is pivotal: it supplies appellate authority rejecting the very doctrinal carveout Malone urged.

4) PTAB procedure analogized to federal appellate practice

  • SAS Inst., Inc. v. Iancu, 584 U.S. 357 (2018): Cited to characterize inter partes review as “an adversarial process … that mimics civil litigation,” helping justify why PTAB’s deliberative practices can reasonably resemble judicial deliberation, including draft circulation.

5) FOIA’s limited role

  • Habeas Corpus Res. Ctr. v. U.S. Dep't of Just., No. 08-cv-2649, 2008 WL 5000224 (N.D. Cal. Nov. 21, 2008): Quoted for the proposition that in FOIA cases, “production of documents is the beginning and the end” of the claim—supporting the Fourth Circuit’s refusal to let FOIA become a vehicle for broad, collateral attacks on agency adjudicatory practices.

Legal Reasoning

  1. Exemption 5 applies because the materials are predecisional. Draft PTAB decisions and emails commenting on them are created to assist the panel before it issues a “final written decision.” The court treated Malone’s own characterization (“recommendations for changes to draft opinions”) as reinforcing the “before the final decision” nature.
  2. Exemption 5 applies because the materials are deliberative. Drafts, redlines, comments, and intra-agency exchanges of analysis reflect “give-and-take”—the hallmark of deliberation under Fourth Circuit doctrine.
  3. Circulation to nonpanel judges does not destroy deliberativeness. The court rejected the premise that only assigned panel members may participate in “deliberation” for privilege purposes. It credited PTAB rules and practices that allow circulation to nonpanel judges while preserving panel “sole discretion” to accept or reject input (citing 37 C.F.R. § 43.5(b) and related provisions), and it analogized to widespread federal appellate draft-circulation norms (including 4th Cir. I.O.P. 36.2).
  4. Judge-to-judge consultation is not “ex parte.” Ex parte restrictions (APA, 5 U.S.C. § 557(d), and PTO’s 37 C.F.R. § 42.5(d)) address party contacts with adjudicators outside the presence of other parties. Communications among adjudicators and agency colleagues are not ex parte in that sense.
  5. No “government misconduct” carveout exists in Exemption 5. The court treated the proposed exception as textually unsupported by FOIA and doctrinally foreclosed (relying on Rudometkin v. United States). Even if Malone believed the practice unlawful, FOIA does not create a freestanding mechanism to litigate that theory through compelled disclosure.

Impact

  • Strong protection for PTAB drafting and internal review. Within the Fourth Circuit, FOIA requesters should expect draft PTAB decisions, redlines, and intra-PTAB evaluative emails—whether or not shared with nonpanel judges—to be routinely upheld as Exemption 5 material.
  • Clarified boundary between “ex parte” and “intra-decisional consultation.” The decision sharply distinguishes improper party communications from internal judge-to-judge consultation, reducing the viability of “ex parte” arguments aimed at internal circulation practices.
  • Forecloses “misconduct” strategies against Exemption 5. By embracing the “no government misconduct exception” rule, the opinion narrows a common FOIA litigation tactic: reframing deliberative materials as discoverable because they might reveal impropriety.
  • Institutional legitimation of PTAB SOP-based circulation. The court’s reliance on PTAB’s stated goals—“decision consistency and clarity” (PTAB, Standard Operating Procedure 4)—may encourage the PTO to maintain or formalize internal review mechanisms, while signaling that transparency objections generally must be pursued through other legal avenues (e.g., direct APA challenges by proper parties), not FOIA.

Complex Concepts Simplified

FOIA Exemption 5
A FOIA exemption that lets agencies withhold internal documents that would normally be protected in civil litigation (like privileged internal deliberations).
Deliberative-process privilege
A privilege designed to protect frank internal discussion before the government finalizes a decision—so employees and decisionmakers can debate, edit, and reconsider without fearing every draft will become public.
Predecisional vs. deliberative
“Predecisional” means created before the final agency decision; “deliberative” means it reflects internal evaluative thinking (recommendations, edits, debate), not merely final or purely factual statements.
Ex parte communications
Usually, private contact by one side in a dispute with the decisionmaker without the other side being included. The court emphasized that judge-to-judge (or adjudicator-to-adjudicator) discussions are not “ex parte” in this legal sense.
Inter partes review (IPR)
A PTAB process where a third party challenges an issued patent in an adversarial proceeding, culminating in a “final written decision” by a three-judge panel.

Conclusion

Josh Malone v. United States Patent & Trademark Office cements a clear Fourth Circuit rule: draft PTAB decisions and internal emails about them remain protected by FOIA Exemption 5 even when circulated to nonpanel judges, because such circulation is part of lawful deliberation and is not “ex parte.” The court further aligns with the view that Exemption 5 has no government-misconduct exception and reiterates FOIA’s limited function—disclosure disputes, not collateral litigation over the legality of agency adjudicatory practices.