In a precedential and sua sponte Director Review decision, USPTO Director Squires recently vacated three related institution decisions nearly six months after institution where a district court later found the challenged claims invalid. Because the fourteen-day deadline to request Director Review of the institution decisions had passed, the Director used this opportunity to formally extend the deadline in two ways. First, he extended the fourteen-day deadline under 37 C.F.R. § 42.75(c)(1) to thirty days, which “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.” Second, he outlined certain “exceptional circumstances” that warrant a further extension of the deadline to account for changes in the case that “surface after the deadline.” In the case at hand, the Director found the district court’s invalidity finding to be such an “exceptional circumstance” and ultimately initiated review and vacated the institution decisions on that basis.
Prior to institution, a judge in the related district court litigation had dismissed the complaint with respect to the challenged claims without prejudice under § 101 and granted the Patent Owner leave to amend. The Patent Owner filed its amended complaint in district court in June 2025, and the PTAB instituted inter partes review in December 2025. In February 2026, the district court again dismissed the claims on § 101 grounds, this time with prejudice and without granting leave to amend. Because the patents were now invalid, Patent Owner moved to terminate the IPR proceedings in April 2026. The PTAB denied the motion, however, citing a lack of authority to terminate proceedings for discretionary reasons. Patent Owner then submitted an email to the Director seeking guidance on how to request Director Review of the termination denial given that such decisions are not one of the expressly permitted bases for seeking Director Review under 37 C.F.R. § 42.75(a).
After agreeing that the rules do not permit seeking Director Review on the motion to terminate, Director Squires provided a basis for seeking review of the underlying institution decisions instead, even though the deadline for doing so had long passed. Recognizing that parties should “be able to seasonably raise issues affecting institution,” Director Squires first applied the “waiver” mechanism of 37 C.F.R. § 42.5 to extend the deadline to request Director Review of a decision to institute trial to thirty days, making it consistent with the deadlines to request Director Review for both institution denials and final written decisions. In addition, Director Squires “recognize[d] that changed circumstances can surface after the deadline to file a request for Director Review …but before trial has progressed meaningfully.” He then noted that, in the past, he typically “initiated a sua sponte Director Review to determine the impact on institution,” which “is not always the most efficient process.” To redress these situations, the Director explained that certain other “exceptional circumstances” may warrant a further deadline extension, so long as trial has not progressed meaningfully. Those circumstances include the dismissal of all or substantially all claims in a co-pending litigation, findings of fact or law that render all or substantially all challenged claims invalid in litigation, or a violation of a Sotera stipulation. Here, even though more than thirty days had passed since institution, the Director found that the district court’s dismissal of the challenged claims for patent ineligibility under § 101 was an “exceptional circumstance” warranting Director Review.
On the merits of the Review itself, the Director found that termination of the IPR proceedings was appropriate and vacated the institution decisions on that basis. Because the district court found all of the challenged claims to be ineligible—and the PTAB and parties had expended limited resources in the IPR proceedings thus far—the Director reasoned that it would be more efficient to terminate the IPRs and reserve any invalidity issues for the district court on remand to the extent necessary. Accordingly, the Director vacated the PTAB’s decisions granting institution and further ordered denial of the Petitions and no institution of trial.
Notably, for efficiency, the Director issued the current decision sua sponte instead of requiring Patent Owner to file a formal request for review under his new rules. However, going forward, the Director instructed parties seeking an extension based on “exceptional circumstances” to send an email to Director_PTABDecision_Review@uspto.gov. The email should “provide a short summary of no more than three sentences” explaining the exceptional circumstances, to which “[t]he other parties to the case will be given an opportunity to respond.”
Practice Tip: The extended request window to thirty days and formalized “exceptional circumstances” extension now provides parties with more time to formally request Director Review of a decision granting institution, including in response to late-surfacing developments in a district court litigation. Going forward, if a party believes that “exceptional circumstances” warrant an extension to request Director Review, that party will have the opportunity to address those circumstances in three sentences or less as part of the formal request process.
Light & Wonder, Inc. v. Evolution Malta Ltd., IPR2025-01072, Paper 30 (P.T.A.B. June 22, 2026)