A recent district court decision illustrates that petitioners should think carefully about requesting IPRs of claims that they may challenge as indefinite in litigation. Indefiniteness challenges are not permitted during an IPR. However, a PTAB decision during IPR may influence a district court’s ruling on an indefiniteness challenge raised in the litigation.
An IPR petitioner may, by request, and at the PTAB’s discretion, join another party’s prior filed IPR . A petitioner may seek to join an IPR to avoid the bar to filing more than one year after service of a complaint alleging infringement or to ensure the petitioner can continue its IPR if the parties to the prior filed IPR settle. If the petitioner’s challenge is substantially the same as that in the earlier IPR, it weighs in favor of joinder . Parties often copy the petitions from prior filed IPRs to facilitate joinder.