IP Essentials: Q&A Series

Q What happens to a district court case if the defendant petitions for IPR? A IPR and district court litigation are allowed to proceed in parallel. District courts are not required to stop or pause a litigation just because a petition has been filed, or because the PTAB has decided to institute review. However, some courts are willing to stay , or pause, litigation if it seems likely that the IPR has the possibility of narrowing the issues being litigated, or resolving the dispute entirely. Q Are there limits to the number of patents or claims that can be challenged in IPR? A A single petition for IPR can only challenge the validity of a single patent. There is no statutory limit to the number of claims of a patent that can be challenged in a single petition. However, because the PTAB limits the length of petitions, and requires the petitioner to make fully supported arguments, there may be a practical limit to the number of claims that can be effectively challenged in a single petition. A petitioner may file multiple petitions against multiple patents. Or it can file multiple petitions against a single patent.

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