On January 28, 2015, the Patent Trial and Appeal Board (PTAB) issued its decision to institute inter partesreview in Valeo North America, Inc., et al., v. Magna Electronics, Inc., IPR2014-01203 with Administrative Patent Judges Lee, Kauffman, and Clements presiding. In its decision, the board rejected patent owner’s argument that the petition should be rejected under 35 U.S.C. Section 325(d), which states that the director “may” take into account whether the same or substantially the same prior art arguments previously were presented to the Office in determining whether to institute review. The petitioner had previously filed a petition on the same claims, including some of the same prior art. For example, some claims in the first petition were challenged on the basis of a single reference, and in the follow-on petition, those same claims were challenged on the basis of the same single reference in addition to one or two others. Notably, the board rejected a number of arguments advanced by the patent owner that, (1) the petitioner must affirmatively explain why a follow-on petition is not redundant; and 2) the mere addition of prior art does not preclude rejection under Section 325(d). The board explained that there is no requirement for a petitioner to explain why a follow-on petition is not redundant, and maintained that even though there was overlap in the prior art between petitions, the arguments were not substantially the same in the follow-on petition, and therefore they would not exercise their discretion under Section 325(d). 
 
Valeo North America, Inc., et al., v. Magna Electronics, Inc., IPR2014-01203 (PTAB Jan. 28, 2015) [Lee, Kauffman, and Clements (opinion)].