Background
When a company petitions the Patent Trial and Appeal Board (PTAB) for inter partes review (IPR) of a patent, the Board first decides whether to “institute” — that is, whether to open a formal validity trial. Under the USPTO’s rules, either party can ask the Director to personally review that institution decision, but only within 14 days of it issuing.
That 14-day window creates a problem when circumstances change after the deadline passes. Suppose the Board institutes an IPR in December, but in January a federal district court finds the same patent claims invalid under 35 U.S.C. § 101 (the patent-eligibility statute). The window to challenge institution has closed. The PTAB’s rules didn’t explicitly allow any mechanism to bring those new facts to the Director’s attention.
That is exactly what happened in three IPR proceedings instituted in December 2025, including Light & Wonder, Inc. v. Evolution Malta Ltd. (IPR2025-01072). After institution, the challenged patents’ claims were dismissed with prejudice in parallel district court litigation as directed to patent-ineligible subject matter. Patent owner Evolution Malta emailed the Director’s office asking how to raise these developments — and Director Squires responded with a precedential order on June 22, 2026.
The Director’s Holding
Director Squires’s order does three things:
1. Extends the standard Director Review deadline from 14 to 30 days. Going forward, any party seeking Director Review of an institution decision has 30 days — not 14 — to file. The Director aligned this deadline with the window for Director Review of final written decisions, simplifying the overall scheme.
2. Identifies “exceptional circumstances” that justify even further extensions. Squires defined three categories that can warrant Director Review requests filed after the new 30-day deadline:
- Dismissal of all or substantially all claims in co-pending litigation;
- Findings of fact and conclusions of law that render all or substantially all challenged claims invalid in litigation; or
- Violation of a Sotera stipulation (a commitment by the petitioner not to re-litigate certain invalidity grounds in district court).
The Director acknowledged that “changed circumstances can surface after the deadline to file a request for Director Review has elapsed but before trial has progressed meaningfully,” and that parties should be able to raise such issues promptly rather than waiting for PTAB-initiated sua sponte review.
3. Terminated the three IPRs. Because the district courts had already found the challenged claims patent-ineligible under § 101, the Director vacated the institution decisions and denied review. Continuing the IPRs would have been a waste of agency resources and party expense — the patent claims at issue no longer exist as a practical matter.
The decision was designated precedential as of June 22, 2026, meaning it now binds PTAB panels in future proceedings.
Key Takeaways
- 30-day window is now the rule. Parties have twice as long to seek Director Review of institution decisions — a meaningful change for parties managing complex parallel litigation timelines.
- District court invalidity rulings can stop an IPR. A final court judgment (or even findings of fact and conclusions of law) holding challenged claims invalid under any ground is now an enumerated basis to seek Director Review of institution, even after standard deadlines have passed.
- Sotera stipulation violations also qualify. Petitioners who breach their Sotera commitments — pledging not to re-litigate invalidity grounds — risk giving patent owners a post-deadline path to Director Review of institution.
- Strategic timing matters more than ever. Parallel district court proceedings now interact directly with the IPR institution decision in an institutionalized way. Patent owners with a favorable § 101 ruling should immediately assess whether an exceptional-circumstances request to the Director is warranted.
- The order does not address ITC determinations. The three-factor exceptional-circumstances list references litigation, not ITC proceedings — a gap that practitioners should watch for future guidance.
Why It Matters
Before this order, the 14-day Director Review window created an awkward gap: an IPR could be well underway by the time a district court ruled the same claims invalid, leaving parties to wait for either the PTAB trial to conclude or the Director to act sua sponte. Neither option was efficient.
Director Squires’s order gives companies a clear, affirmative mechanism to flag changed circumstances — and a doubled standard window to do so. For patent owners defending multi-front litigation (district court plus PTAB), a favorable court ruling on invalidity is now a lever that can reach back into the IPR institution decision itself. For petitioners, the order is a reminder that parallel litigation victories by the patent owner can unwind an IPR they invested in filing.
The use of the precedential designation also signals Squires’s intent to build a coherent body of Director Review doctrine, providing predictability that was lacking under ad hoc sua sponte review.