Key Takeaways
- • USPTO Director Squires extended the deadline for requesting Director Review of institution decisions from 14 days to 30 days, bringing parity with review deadlines for final decisions and institution denials under 37 C.F.R. § 42.75(c)(1).
- • "Exceptional circumstances" doctrine now permits further deadline extensions beyond 30 days when changed conditions surface after institution but before trial progresses meaningfully, including district court findings of invalidity, dismissal of substantially all claims in co-pending litigation, or Sotera stipulation violations.
- • In Light & Wonder, Inc. v. Evolution Malta Ltd. (IPR2025-01072), Director Squires vacated three institution decisions nearly six months post-institution after a district court found challenged claims invalid under § 101, demonstrating application of the new framework sua sponte.
- • Patent owners and petitioners must now email [email protected] with three-sentence summaries to invoke exceptional circumstances extensions, with opposing parties granted opportunity to respond—formalizing a previously ad hoc process.
- • The decision prioritizes resource efficiency: by vacating institution and denying petitions when all claims face invalidity findings in district court, the USPTO reserves further adjudication for district court remand, reducing duplicative PTAB proceedings.
Summary
In a precedential decision issued June 22, 2026, USPTO Director Squires substantially restructured the procedural framework for challenging inter partes review institution decisions by extending review deadlines and formalizing a mechanism to address changed circumstances arising post-institution. The ruling emerged from Light & Wonder, Inc. v. Evolution Malta Ltd. (IPR2025-01072), where the Director vacated three related institution decisions nearly six months after the PTAB's decision to institute trial, after a district court subsequently invalidated the challenged claims on patent eligibility grounds under 35 U.S.C. § 101.
The Director implemented two complementary deadline extensions. First, he extended the baseline deadline for requesting Director Review of institution decisions from 14 days to 30 days under 37 C.F.R. § 42.75(c)(1), aligning it with existing deadlines applicable to requests challenging final written decisions or decisions not to institute trial. This change addresses asymmetry in the PTAB's procedural rules and, as the Director noted, "puts requests for Director Review of decisions to institute trial on equal footing" with other reviewable decisions. Second, recognizing that "changed circumstances can surface after the deadline to file a request for Director Review but before trial has progressed meaningfully," the Director outlined categories of "exceptional circumstances" warranting further deadline extension. These include: dismissal of all or substantially all claims in co-pending district litigation; findings of fact or law rendering all or substantially all challenged claims invalid in separate litigation; and violations of Sotera stipulations.
In the Light & Wonder case, the factual sequence demonstrated the practical utility of this framework. Patent Owner amended its district court complaint in June 2025; the PTAB instituted inter partes review in December 2025; and in February 2026, the district court dismissed all challenged claims with prejudice on § 101 grounds. Patent Owner's subsequent motion to terminate the IPR proceedings was denied by the PTAB in April 2026, citing lack of discretionary authority. Rather than require formal Director Review requests under outdated rules, Director Squires initiated sua sponte review, found the district court's invalidity finding to be an exceptional circumstance, and vacated the institution decisions. On the merits, the Director determined that terminating the IPRs and denying the petitions was the most efficient approach, reserving any remaining invalidity issues for district court remand.
Going forward, parties invoking exceptional circumstances to extend deadline will submit emails to [email protected] containing three-sentence summaries, with opposing parties afforded response opportunity. This formalized process replaces the previous ad hoc approach of sua sponte Director Reviews and provides patent owners and petitioners greater procedural flexibility to address post-institution developments affecting the viability of challenged patents—materially impacting strategy in cases involving parallel PTAB and district court proceedings.
The Director implemented two complementary deadline extensions. First, he extended the baseline deadline for requesting Director Review of institution decisions from 14 days to 30 days under 37 C.F.R. § 42.75(c)(1), aligning it with existing deadlines applicable to requests challenging final written decisions or decisions not to institute trial. This change addresses asymmetry in the PTAB's procedural rules and, as the Director noted, "puts requests for Director Review of decisions to institute trial on equal footing" with other reviewable decisions. Second, recognizing that "changed circumstances can surface after the deadline to file a request for Director Review but before trial has progressed meaningfully," the Director outlined categories of "exceptional circumstances" warranting further deadline extension. These include: dismissal of all or substantially all claims in co-pending district litigation; findings of fact or law rendering all or substantially all challenged claims invalid in separate litigation; and violations of Sotera stipulations.
In the Light & Wonder case, the factual sequence demonstrated the practical utility of this framework. Patent Owner amended its district court complaint in June 2025; the PTAB instituted inter partes review in December 2025; and in February 2026, the district court dismissed all challenged claims with prejudice on § 101 grounds. Patent Owner's subsequent motion to terminate the IPR proceedings was denied by the PTAB in April 2026, citing lack of discretionary authority. Rather than require formal Director Review requests under outdated rules, Director Squires initiated sua sponte review, found the district court's invalidity finding to be an exceptional circumstance, and vacated the institution decisions. On the merits, the Director determined that terminating the IPRs and denying the petitions was the most efficient approach, reserving any remaining invalidity issues for district court remand.
Going forward, parties invoking exceptional circumstances to extend deadline will submit emails to [email protected] containing three-sentence summaries, with opposing parties afforded response opportunity. This formalized process replaces the previous ad hoc approach of sua sponte Director Reviews and provides patent owners and petitioners greater procedural flexibility to address post-institution developments affecting the viability of challenged patents—materially impacting strategy in cases involving parallel PTAB and district court proceedings.
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