As inter partes reviews become harder to get, parties have been increasingly turning to ex parte review (EPR) proceedings. I've noticed an increase in requests for stays pending EPRs—at least one of which was recently granted, for a case in its early stages.
Yesterday, visiting Judge Wolson of EDPA issued an order addressing a later-stage motion to stay, which the Court denied.
Along the way, Judge Wolson set forth his views that, unlike IPRs, EPRs rarely warrant staying the action.
He first noted that these proceedings are uncertain and lengthy:
Parties routinely ask me to stay cases pending an EPR. I write here to explain why, except in extraordinary cases, I do not think it is appropriate to do so. EPRs have an uncertain path and do not necessarily simplify a case. It’s possible, of course, that an EPR could result in claims that a party asserts being cancelled. Or it could result in their confirmation or amendment. Although EPRs are supposed proceed on an expedited basis, the duration of such proceedings is inherently uncertain, and appeals can extend the timeline further. I cannot confidently predict when the reexamination process will conclude or what its outcome will be.
Aptiv Technologies Ag v. Microchip Technology, Inc., C.A. No. 23-307-JDW, at 5 (D. Del. Mar. 6, 2026).
He contrasted that to IPRs, which more provide results more reliably and quickly—and result in estoppel:
EPRs stand in contrast to IPRs. IPRs have rigid statutory timetables. They have binary outcomes. And they estop parties from raising in litigation arguments that they made before the PTAB. EPRs offer none of that certainty. A stay pending an EPR therefore kicks the can down the road without any clarity about how long the road will be or even what route the road will follow after the detour to the PTO. Thus, while EPRs offer the theoretical possibility of narrowing the case, ex ante, it is almost impossible to say that an EPR will simplify issues for trial, rather than just changing or deferring those issues.
Id. at 5-6.
Of course, that did not end the analysis. The Court continued on to review the normal stay factors, and found that given this was a late-stage request, made after the close of fact discovery, that the moving party was only speculating as to the results of the EPRs, and that the party had unduly delayed in seeking the IPRs in the first place.
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