IP Law Daily, PATENT—PTAB: Director vacates instituted IPRs following district court invalidity ruling, designates decision as precedential, (Jun 23, 2026)

By Saurabh Kashyap, B.A., M.A., LL.B., LL.M.

A district court’s invalidation of all challenged claims under 35 U.S.C. § 101 made further PTAB proceedings unnecessary.

USPTO Director John A. Squires designated as precedential a decision vacating PTAB institution decisions and denying three instituted inter partes reviews sought by a casino gaming and entertainment technology provider. The Director concluded that further review was unwarranted because a federal district court had already invalidated all challenged claims under 35 U.S.C. § 101, and that continuing the proceedings would not serve the efficiency or integrity of the patent system. Applying the Office's workload-management framework, the Director found that no meaningful trial activity had occurred and that agency resources should not be expended reviewing claims already held invalid in parallel litigation (Light & Wonder, Inc. v. Evolution Malta Ltd., No. 571.272.7822 (PTAB. Jun. 22, 2026)).

Light & Wonder, Inc., the petitioner, develops gaming equipment, casino systems, and digital gaming technologies. Evolution Malta Limited, the patent owner, develops and supplies online casino platforms and gaming content. The companies operate in the gaming technology sector and participate in the market for electronic and online gaming products and services.

The proceedings involved U.S. Patent Nos. 11,011,014 B1 (the ’014 patent), 10,629,024 B1 (the ’024 patent), and 11,756,371 B1 (the ’371 patent). The PTAB instituted review of all three patents in December 2025 after Light & Wonder challenged various claims through separate IPR petitions.

The dispute stemmed from parallel litigation in the District of Nevada concerning the patents challenged in the IPRs. In February 2025, the district court granted Light & Wonder’s Rule 12(b)(6) motion, finding the asserted claims directed to patent-ineligible subject matter under Section 101, but allowed Evolution to amend its complaint. While a renewed motion to dismiss remained pending and the district court action was stayed, Light & Wonder filed the IPR petitions in May 2025. The Acting Director declined Evolution’s earlier request for discretionary denial because the district court had not yet entered a final ruling. After the Board instituted review, however, the district court granted Light & Wonder’s renewed motion to dismiss with prejudice and again held the challenged claims patent-ineligible. Evolution then moved to terminate the IPRs, arguing that further proceedings would be wasteful because the claims had already been invalidated. The Board denied the motion, reasoning that it lacked authority to terminate instituted proceedings on discretionary grounds. Evolution subsequently sought guidance on obtaining Director Review, prompting the Director to initiate review sua sponte.

Director review and procedural guidance. The Director first addressed whether review was appropriate, given that PTAB rules do not expressly authorize Director Review of a decision denying a motion to terminate. He observed that material developments affecting the institution may arise after the institution and after the ordinary deadline for seeking Director Review has expired. Citing ASUSTeK Computer Inc. v. Nokia Technologies OY, IPR2025-01153, Paper 27 (Director May 27, 2026), the Director explained that the Office had previously initiated sua sponte review to address post-institution developments bearing on institution decisions. He also announced that the USPTO would extend the standard deadline for seeking Director Review of institution decisions from fourteen days to thirty days and noted that exceptional circumstances could justify additional extensions.

District court's invalidity ruling altered the institution analysis. Turning to the merits, the Director concluded that the district court’s dismissal with prejudice fundamentally changed the posture of the proceedings. At the time the petitions were referred to the Board, the district court had not entered a final invalidity ruling, and further amendments remained possible. After institution, however, the district court again found all challenged claims patent-ineligible and dismissed the action with prejudice. The Director determined that because all challenged claims had already been adjudicated invalid, further PTAB review of patentability served no meaningful purpose. Relying on Hulu, LLC v. Piranha Media Distribution, LLC, IPR2024-01252, Paper 27 (P.T.A.B. Apr. 17, 2025) (informative), the Director stated that where a district court has already invalidated challenged claims, the efficiency and integrity of the patent system are best served by denying institution.

Efficiency concerns favored termination. Further, the Director rejected Light & Wonder’s argument that the IPRs should continue in case the Federal Circuit later reversed the district court’s Section 101 ruling. Quoting Hulu, he concluded that any future invalidity issues could be addressed in district court on remand and that such a course would be more efficient than maintaining parallel PTAB proceedings. The Director also disagreed that substantial Board resources had already been expended. Although an institution had occurred, the briefing remained incomplete, no oral hearing had been held, and no final written decision had been prepared. Citing Magnolia Medical Technologies, Inc. v. Kurin, Inc., IPR2026-00097, Paper 17 (P.T.A.B. May 14, 2026) (precedential), the Director emphasized that efficient administration of the Office and timely completion of agency work are proper considerations in determining whether review should proceed. On balance, those factors favored terminating the proceedings.

The Case is No. 571.272.7822.

Judge: NA.

Attorneys: Joshua R. Nightingale (Jones Day) for Light & Wonder, Inc. Lauren Katzeff (Sidley Austin LLP) for Evolution Malta Ltd.

Companies: Light & Wonder, Inc.; Evolution Malta Ltd.

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