Key Takeaway: In a precedential decision in Light & Wonder, Inc. v. Evolution Malta Ltd., U.S. Patent and Trademark Office Director Squires extended the deadline for requesting Director Review of decisions granting institution of inter partes reviews/post-grant reviews from 14 to 30 days. He may further extend the deadline in exceptional circumstances, such as where the claims are invalidated or dismissed, or a Sotera stipulation is violated in litigation.
Background on Light & Wonder, Inc. v. Evolution Malta Ltd.
On June 22, 2026, U.S. Patent and Trademark Office Director John Squires issued a precedential decision extending the deadline under 37 C.F.R. § 42.75(c)(1) for requesting Director Review of decisions granting institution of inter partes reviews (IPRs)/post-grant reviews (PGRs) from 14 days to 30 days. In his decision in Light & Wonder, Inc. v. Evolution Malta Ltd., Director Squires explained that this extension results in the time period for requesting Director Review of a decision granting institution of trial to be the same as for decisions denying institution as well as final written decisions.
Exceptional Circumstances May Warrant Further Extension
In addition to extending the deadline to request Director Review of decisions granting institution from 14 to 30 days, the Director explained that the deadline may be further extended in exceptional circumstances, so long as the trial has not progressed meaningfully. The Director did not articulate all scenarios that would qualify as having not progressed meaningfully. However, the case at hand qualified in view of the Patent Owner’s Response having been filed, but the Petitioner’s Reply had not.
The Director provided three examples that may constitute exceptional circumstances:
- Dismissal of all or substantially all claims in a co-pending litigation;
- Findings of fact and conclusions of law that render all or substantially all challenged claims invalid in litigation; and
- Violation of a Sotera stipulation, in which a petitioner stipulates that it will not raise in district court any invalidity ground it raised or reasonably could have raised in an IPR.
The Director determined that exceptional circumstances existed in Light & Wonder. After the Board instituted Light & Wonder’s IPRs, the district court judge in co-pending litigation found the challenged claims at issue were directed to patentable ineligible subject matter under 35 U.S.C. § 101 and dismissed the litigation with prejudice. The Director explained that “[b]ecause all of the challenged claims now stand invalid, it is unnecessary and inefficient to maintain these IPRs to further review the claims for patentability on other grounds.” The Director pointed to a previous informative decision, Hulu, LLC v. Piranha Media Distribution, LLC, that likewise explained “where a district court already has found the challenged claims invalid, the efficiency and integrity of the patent system is best served by denying institution.”
Light & Wonder argued that the IPRs should proceed in view of the potential for the Federal Circuit to reverse the district court’s decision on appeal, at which point refiling the IPR petitions would be time-barred and require them to pursue invalidity only in district court. The Director determined that pursing invalidity in district court on remand would be the better and more efficient approach than allowing the IPR trials to proceed. The Director therefore vacated the Board’s decisions granting institution, denied institution, and terminated the IPRs.
How to Seek a Deadline Extension for Director Review
Parties seeking Director Review of institution decisions should carefully review the factors that could trigger a deadline extension for Director Review requests.
- In decisions where institution is granted, the deadline for seeking Director Review is now automatically 30 days rather than 14 days.
- The deadline may be further extended if there are exceptional circumstances, so long as the trial has not progressed meaningfully.
- If the 30-day deadline has passed and a party believes there are exceptional circumstances, the decision states that the party should send an email to Director_PTABDecision_Review@uspto.gov copying counsel for all parties and provide no more than three sentences summarizing why exceptional circumstances warrant an extension of the 30 day deadline. The other parties to the case will be given an opportunity to respond in kind.
Subscribe for News and Updates
