# Win § 101 in court, and the IPR ends. 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. Sources checked October 16, 2026 **3 of 3** designated rulings ended Office review after a court held the claims ineligible. Two came after the Board had instituted. ## Before you read A court held the claims ineligible after the Board had instituted review. What happened to the IPR? - The trial ran to a final decision - It paused until the appeal ended - Institution was vacated and the petitions denied In Light & Wonder and in Hulu, the Board had instituted. Both times the Director vacated institution and denied the petitions. ## Stopped mid-trial 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. Light & Wonder, pp. 1, 5 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. Light & Wonder, pp. 1, 4–6 ## Two tracks 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. 35 U.S.C. § 311(b) So the two tracks run on different grounds and different clocks. These rulings answer what happens when the court track finishes first. ## Three rulings, one answer 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. 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.” Hulu v. Piranha 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.” Toshiba, Paper 20 ## If the court is reversed 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. Light & Wonder, p. 6 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. Light & Wonder, p. 6 In Hulu’s own case the worry never materialized. The Federal Circuit affirmed the § 101 dismissal on October 14, 2026, in a nonprecedential opinion. Piranha v. Hulu Any further review of that judgment, such as a rehearing petition, has not been checked. ## Raising it in time 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. Light & Wonder, pp. 3–4 ## What to do Choose your side. ## Cuts the other way 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. 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. ## Related stories - [AI claims can recite math and still pass § 101.](https://postgrantproceeding.com/insights/d16-ai-claims-can-recite-math-and-still-pass-101) - [The one-year clock runs on paper, not excuses.](https://postgrantproceeding.com/insights/d12-the-one-year-clock-runs-on-paper) - [Past the Director is not past the Board.](https://postgrantproceeding.com/insights/d02-past-the-director-is-not-past-the-board) ## Sources - S16. Light & Wonder, Inc. v. Evolution Malta Ltd., No. IPR2025-01072, Paper 30 (USPTO Director June 22, 2026) (precedential, designated June 22, 2026). https://www.uspto.gov/sites/default/files/documents/ipr2025-01072-dr-paper_30.pdf - S46. Hulu, LLC v. Piranha Media Distribution, LLC, No. IPR2024-01252, Paper 27 (USPTO Acting Director Apr. 17, 2025) (informative, designated May 7, 2025), also covering IPR2024-01253. https://www.uspto.gov/patents/ptab/precedential-informative-decisions - S47. Piranha Media Distribution LLC v. Hulu, LLC, No. 25-1038 (Fed. Cir. Oct. 14, 2026) (nonprecedential), affirming dismissal under 35 U.S.C. § 101. https://www.cafc.uscourts.gov/opinions-orders/25-1038.OPINION.10-14-2026_2770728.pdf - S26. Toshiba America Electronic Components, Inc. v. Monument Peak Ventures, LLC, No. IPR2021-00330, Paper 20 (P.T.A.B. January 14, 2022) (Precedential Opinion Panel; precedential). https://www.uspto.gov/sites/default/files/documents/IPR2021-00330_pop_dec_20220114.pdf - S13. Federal patent statutes, 35 U.S.C. §§ 253(a), 303(a), 311–315, 317 and 321–325. Reproduced in MPEP Appendix L (currency date stated by the appendix: Jan. 31, 2024). https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.html ## Not yet confirmed - Any further review of that judgment, such as a rehearing petition, has not been checked. 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. General information about published decisions, not legal advice. Reading it does not create an attorney-client relationship.