OVERLAPPING PRIOR ART NOT GROUNDS FOR AUTOMATIC REJECTION OF FOLLOW-ON IPR PETITION

In Valeo North America, Inc., et al., v. Magna Electronics, Inc., IPR2014-01203, the PTAB granted the petition for IPR review rejecting the patent owner's argument that the petition should be denied under Section 325(d) on the grounds that the same or substantially the same prior art arguments were previously presented to the office.  In this case, the petitioner previously filed a petition on the same claims including some of the same prior art but the follow-on petition was based on additional prior art.  Rejecting the patent owner's arguments that the follow-on petition should be rejected, the board explained that even though there was overlap in the prior art between petitions, the arguments were not substantially the same and therefore, the board would not exercise its discretion under Section 325(d).