Fourth Circuit Affirms USPTO Withholding of PTAB Drafts in Centripetal Networks IPR Repaneling FOIA Case

The U.S. Court of Appeals for the Fourth Circuit issued a published opinion on May 5, 2026, in Malone v. United States Patent and Trademark Office (No. 24-1706), affirming the district court’s grant of summary judgment to the USPTO and holding that the agency properly withheld documents related to administrative patent judge (APJ) paneling at the Patent Trial and Appeal Board (PTAB) under the Freedom of Information Act’s Exemption 5 for predecisional and deliberative documents. The decision forecloses one avenue that critics of the PTAB have used to seek transparency over how IPR panels are constituted and reconstituted.

Background—Centripetal Networks IPR Repaneling

The case arose from a FOIA request filed by Josh Malone of US Inventor for documents concerning the reconstitution of an APJ panel that oversaw inter partes review (IPR) proceedings brought by Palo Alto Networks against Centripetal Networks’ patent claims.

Malone’s request focused on the original APJ panel; the panel’s reconstitution after disclosures of one APJ’s stock interest in Cisco, which had joined the proceedings; and the reconstituted panel’s decision denying Centripetal’s motion to recuse the interested APJ.

USPTO produced 1,500 responsive documents but withheld others, including redlined versions of PTAB decisions at various stages of the editing and review process and emails between PTAB employees discussing analysis of the issues presented by those drafts. The agency invoked FOIA Exemption 5 (5 U.S.C. § 552(b)(5)) to justify the withholdings, contending that the documents were both predecisional—proposed agency actions antecedent to adoption of a position—and deliberative—employee recommendations on legal policy matters.

District Court—”Precisely the Kind of Documents That Are Considered Deliberative”

Malone challenged the withholdings in the Eastern District of Virginia, arguing that the documents were not subject to Exemption 5 because they constituted unlawful ex parte communications between panel and nonpanel APJs.

The district court granted summary judgment to the USPTO, finding that the withheld adjudicatory opinion drafts with inter-agency comments were “precisely the kind of documents that are considered deliberative.” The court also dismissed Malone’s claims under the Administrative Procedure Act and the Fifth Amendment’s Due Process Clause, finding no explanation of legal authority for such claims in the FOIA context and that Malone likely lacked standing to bring them.

Fourth Circuit—Inter-APJ Communications Are Not “Ex Parte”

The Fourth Circuit had little difficulty concluding that USPTO’s withheld documents were categorically both predecisional and deliberative. Draft PTAB opinions proposing to resolve IPR claims, as well as comments and proposed edits by nonpanel judges, are plainly predecisional because they assist the panel in arriving at its final opinion, the court found. The draft nature of the documents—containing recommendations and personal opinions that were not agency policy—indicated that they were also deliberative.

Malone’s argument that communications to nonpanel APJs are not deliberative “takes far too narrow a view of judicial deliberation,” the Fourth Circuit said. The court pointed to agency rules at 37 CFR § 43.5(b) and 37 CFR § 43.4(b)–(c), which authorize draft circulation to nonpanel APJs while preserving panel APJs’ sole discretion to accept any input—a practice the court analogized to broader judicial practice. The PTAB’s standard operating procedures expressly describe this practice as “part of the Board’s deliberative process.”

The appellate court further found that Malone’s argument relied on a fundamental misunderstanding of ex parte communications, which are typically defined as one party’s communication with a decision-maker without the presence of the adverse party. Communications among APJs—whether on the panel or not—are not the unilateral communications that are ordinarily deemed unlawful, the court held. Nothing in USPTO’s regulations on ex parte communications purports to alter that traditional definition, leaving the inter-APJ communications squarely within Exemption 5.

FOIA Cannot Be Used for Collateral Attacks on Policy

The Fourth Circuit added that any potential the withheld documents shed light on government misconduct, as Malone claimed, “does not bear on the application of Exemption 5 under FOIA.” Malone’s further claim that the practice of draft circulation itself constitutes government misconduct was unsupported by law. The court emphasized that FOIA claims are limited to document production and cannot serve as a vehicle for collateral attacks on the legality or constitutionality of broader agency policy.

Practical Implications

The decision effectively closes one avenue for inventor advocates and small patent owners to obtain transparency around APJ communications outside the formal panel. For the USPTO, the ruling secures protection for internal deliberation—a result the agency has long defended as essential to candid analysis among its judges.

The opinion also provides precedential clarity on the scope of FOIA protection over internal drafts and inter-employee emails in the broader controversy over APJ panel reconstitution and conflict-of-interest handling. The underlying matter—an APJ’s disclosed stock interest in a joined party—has been a flashpoint in transparency debates over PTAB governance. This decision shuts off one path to compel disclosure of how those situations are managed internally.

Malone, an activist within US Inventor and the inventor of the well-known “Bunch O Balloons” toy patent, has been a leading voice for PTAB reform. While this ruling closes a particular FOIA-based strategy, it leaves open challenges through different procedural vehicles, although those would face their own substantive and standing barriers.