The Interplay between Inter Partes Review (IPR) Petition and Ex Parte Reexamination (XPR)

The Interplay between Inter Partes Review (IPR) Petition and

Ex Parte Reexamination (XPR): Practical and Strategic Considerations

Whether parties choose to file Inter Partes Review (IPR) petition or Ex Parte Reexamination (XPR) generally has to do with the overall litigation strategy. Similar to IPRs and post-grant review (PGRs), XPR is a cost-effective alternative to using litigation to challenge patent validity. The standard for proving that a claim is unpatentable is lower during an XPR than during litigation.

This panel consists of all women PTAB Practitioners who review and explore practical and strategic considerations of parties choosing Ex Parte Reexamination (XPR) rather than Inter Partes Review (IPRs) petitions. Our panel consists of Michelle Aspen, Senior Patent Counsel at Unified Patents, LLC; Jessica C. Kaiser, former Lead Administrative Patent Judge (LAPJ) of the United States Patent and Trade Office (USPTO), and Partner at Arnold Porter Kay Scholer, LLP (Denver Office); Kara Specht, Partner at Finnegan, LLP (Atlanta office); and moderated by Grace Wang, Associate of Allen & Overy, LLP (New York office).

"Strategy without tactics is the slowest route to victory. Tactics without strategy are the noise before defeat."

- Sun Tzu, The Art of War -