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ARTICLE · 21 AUGUST 2017

If You Need A Second Bite At The IPR Apple, Take It Quickly

McDermott Will & Emery
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In considering the arguments, the PTAB observed that the petitioner had already challenged the same claims of same patent.

United StatesIntellectual Property
G. Matthew McCloskey
G. Matthew McCloskey
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In a decision denying a second petition for inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) elucidated the factors weighing against granting the petitioner's request. The decision underscores the PTAB's concern regarding serial attacks against a patent owner. Nautilus Hyosung Inc. v. Diebold, Inc., Case No. IPR2017-00426 (PTAB, June 22, 2017) (Benoit, APJ).

Diebold had earlier filed both a district court action and a US International Trade Commission (ITC) complaint against Nautilus, alleging infringement of the challenged patent. The patent was directed to methods for sensing magnetic ink character recognition lines on financial checks, such as those typically used by automated teller machines (ATMs). Nautilus filed a first IPR petition against the asserted claims, but the PTAB declined institution. Nautilus then filed a second IPR petition against the patent. In its preliminary response to the second IPR petition, Diebold claimed that the second

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