Three designated rulings say the same thing: once a court has held the challenged claims ineligible, the Office stops reviewing them. In two, the Board had already instituted trial. The newest, precedential since June 2026, came at the Director’s own initiative.
Before you read
A court held the claims ineligible after the Board had instituted review. What happened to the IPR?
In Light & Wonder and in Hulu, the Board had instituted. Both times the Director vacated institution and denied the petitions.
Part 1 of 7
Light & Wonder was defending a patent suit in Nevada and challenging the same patents at the PTAB. In February 2025 the court dismissed the complaint, finding the claims ineligible under § 101, but let the patent owner amend. The Board instituted three IPRs in December 2025.
On March 30, 2026, the court dismissed again, this time with prejudice. The Board had already declined to terminate the trials. On June 22, 2026, the Director opened review on the Director’s own initiative, vacated all three institution decisions and denied the petitions.
Month-level dates (May, June and December 2025) are plotted at mid-month; the order gives the month, not the day.
Source
“Because all of the challenged claims now stand invalid, it is unnecessary and inefficient to maintain these IPRs.”
Part 2 of 7
A defendant accused of infringement can attack a patent in two places. In court, it can argue the claims are ineligible under § 101, which covers abstract ideas, and it can do that early, on a motion to dismiss before discovery. An IPR can’t hear § 101 at all. It is limited to anticipation and obviousness based on patents and printed publications.
So the two tracks run on different grounds and different clocks. These rulings answer what happens when the court track finishes first.
| District court | IPR at the PTAB | |
|---|---|---|
| § 101 eligibility | Yes, as early as a motion to dismiss | No |
| Prior-art grounds | Any invalidity defense | Anticipation and obviousness, patents and printed publications only |
35 U.S.C. § 311(b) limits IPR grounds. Which track finishes first depends on the two schedules; these rulings take the order as given.
Part 3 of 7
The Office has designated three rulings on the point. Each ended review of claims a court had already held invalid under § 101. Tap a filter to compare them.
The rulingSua sponte Director Review. Institution vacated; petitions denied.
The rulingInstitution vacated; petitions denied.
What happened nextOn October 14, 2026, the Federal Circuit affirmed the § 101 dismissal in a nonprecedential opinion covering the ’768 patent and its parent.
The rulingPetition timely, but denied.
Hulu’s reasoning is the template. The usual test for parallel litigation “does not fit neatly” when the court has already decided the claims are invalid, and in that situation “the efficiency and integrity of the patent system is best served by denying institution.”
Toshiba got there earlier, after a Federal Circuit affirmance: “Given the low probability that the Federal Circuit’s judgment of unpatentability will be overturned, we do not believe that PTAB resources should be devoted to addressing additional potential grounds of unpatentability.”
Part 4 of 7
The obvious worry for a petitioner: the court’s ruling is appealed, the appeal goes the other way, and the IPR is already gone. Light & Wonder raised exactly that, along with the work already spent on its trials.
The tempting reading
If the court’s § 101 ruling is reversed, the vacated IPR comes back.
What the rulings say
None of the three revives the IPR. Hulu said that if the Federal Circuit reverses, the petitioner “may raise such invalidity arguments in the district court on remand,” and Light & Wonder relied on that. The fallback is the court, not the Board.
Source
The Director also rejected the sunk-cost argument. The reply and surreply were still pending, and there had been no hearing and no final decision, so ending the trials saved Office work.
In Hulu’s own case the worry never materialized. The Federal Circuit affirmed the § 101 dismissal on October 14, 2026, in a nonprecedential opinion. Any further review of that judgment, such as a rehearing petition, has not been checked.
Part 5 of 7
Light & Wonder also changed the calendar. A request for Director Review of an institution decision is normally due within 14 days. The order extended that period to 30 days by waiving the rule, and said the deadline can be extended further for good cause in exceptional circumstances, if the trial hasn’t progressed meaningfully.
Part 6 of 7
Choose your side.
Part 7 of 7
All three rulings involved a final court ruling of invalidity: two dismissals with prejudice and one Federal Circuit affirmance. None says what happens while a court ruling is pending, or when it covers only some of the challenged claims.
They cover
They don’t cover
Hulu is informative, so it guides the Board but doesn’t bind it. Toshiba was designated for its fee holding, not for the § 101 point. Light & Wonder is the one that binds, and it is less than four months old.
The takeaway
Decide the order of your two challenges on purpose. A court win can take the IPR with it.
Each item is marked in the story with a dashed outline. We update the story when the official record confirms or corrects it.
Precedential decisions bind the Board within their designated scope. Informative decisions show the Office’s reasoning but do not bind the Board. Court opinions are cited for what they decided; later history was checked on the date shown above.