“(Of his own accord review) is not always the most efficient process, and parties should be able to seasonably raise issues affecting institution.” – Squires precedential order
The U.S. Patent and Trademark Office (USPTO) on late Monday issued a notice designating as precedential a Of his own accord Director Review Order of a Patent Trial and Appeal Board (PTAB) decision granting institution in three inter partes review (IPR) proceedings. The order waived the 14-day deadline for requesting Director Review of a decision to institute trial and denied institution under Hulu, LLC v. Piranha Media Distribution, LLCIPR2024-01252, Paper 27 (Director Apr. 17, 2025).
In Light & Wonder, Inc. v. Evolution Malta Ltd.IPR2025-01072, Paper 30 (Director June 22, 2026) (precedential), the PTAB granted institution of IPR in three proceedings and subsequently denied the patent owner’s Motion to Terminate based on a decision in a parallel district court litigation. The patent owner, Evolution Malta, then emailed the USPTO Director “‘seek(ing) guidance on how to request Director (R)eview’ of the Board’s decision because ‘denial of a motion to terminate is not one of the expressly permitted bases’ for seeking Director Review,” according to the order.
USPTO Director John Squires explained in the order that the patent owner was correct that the Director Review rule “does not expressly permit a party to seek Director Review of a decision denying a motion to terminate.” However, Squires acknowledged that “changed circumstances can surface after the deadline to file a request for Director Review has elapsed but before trial has progressed meaningfully.” While of his own accord review has been the typical solution in such cases, it “is not always the most efficient process, and parties should be able to seasonably raise issues affecting institution,” said the order.
For that reason, the precedential decision waives the time period under 37 C.F.R. § 42.75(c)(1) for requests for Director Review of a decision to institute a trial. The waiver extends the deadline from 14 days to 30 days and “puts requests for Director Review of decisions to institute trial on equal footing to requests for Director Review of final decisions or decisions not to institute trial.”
Additionally, the Office may further extend the deadline in “exceptional circumstances,” and where trial has not meaningfully progressed, such as “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 a violation of a Sotera stipulation.”
The present case represents such a situation, explained the order, since the district court granted Light & Wonder’s motion to dismiss, finding the challenged claims to be directed to patent ineligible subject matter under 35 U.S.C. § 101. Evolution Malta argued it would therefore be inefficient to continue the IPR proceedings, and Squires agreed. “Because all of the challenged claims now stand invalid, it is unnecessary and inefficient to maintain these IPRs to further review the claims for patentability under other grounds,” said the order, citing Hulu.
While Light & Wonder argued that the U.S. Court of Appeals for the Federal Circuit (CAFC) could still reverse the district court, thereby forcing it to pursue the invalidity challenge only in district court, Squires pointed to Hulu again, explaining that “under the same circumstances, raising invalidity in the district court on remand ‘is the better and more efficient approach.’” Since the reply and sur-reply remain pending in the IPRs and the Board has not yet conducted oral argument or authored a final written decision, “the efficient administration of the Office and the ability of the Office to timely complete its work are directly implicated.” Squires thus terminated the IPRs.
