Takeaway: There is no per se rule that a petitioner must demonstrate how a petition is not redundant to any prior art and argument previously presented to the Office under 35 U.S.C. § 325(d). Instead, the Board has discretion under this statute to consider whether the same or substantially the same prior art or arguments were previously presented to the Office.

In its Decision, the Board concluded that Petitioner had persuasively demonstrated a reasonable likelihood of showing that claims 2, 3, 5, 7, 11, 12, 18, 19, 21-26, 28, 32-35, 37, 40, and 44-46 of the ’522 patent are unpatentable. Thus, the Board instituted trial with respect to these claims.  The Board was not similarly persuaded as to challenged claims 4, 16, 17, and 20, and therefore did not institute trial with respect to challenged claims 4, 16, 17, and 20.  The ’522 patent relates “to vision or imaging systems for vehicles . . . that are operable to determine if a vehicle or object of interest is adjacent to, forward of, or rearward of the subject vehicle to assist the driver in changing lanes or parking the vehicle.”

The Petition had identified multiple entities, including Valeo, Inc. and Valeo GmbH, as the real parties in interest. But Patent Owner asserted that Petitioner knew or should have known at the time of filing the Petition that Valeo, Inc. had ceased to exist because it had merged with another entity to become Valeo North America, Inc.  In view of this and another related assertion, Patent Owner argued “that the Petition is fatally deficient because it fails to identify all real parties in interest as required by 35 U.S.C. § 312(a)(2).”  The Board disagreed, finding that while the Petition was technically in error in that it named Valeo, Inc. rather than Valeo North America, Inc., the Petition was substantively correct in that it identified the real party of interest (because Valeo North America, Inc. is the legal successor to Valeo, Inc.).

Patent Owner also requested rejection of the Petition as raising “substantially the same arguments and prior art as raised in the 221 IPR” as was the case in Medtronic, Inc., v NuVasive, Inc., Case IPR2014-00487, slip op. at 7 (PTAB Sept. 11, 2014).  In reply, the Board pointed out that the cited case was “not precedential and does not set forth a ‘requirement’ that a petitioner must explain adequately why a follow-on petition is not redundant.”  Moreover, the Board did not agree with Patent Owner that the references and positions asserted in the Petition are the same or substantially the same prior art or arguments previously presented to the Office.  Thus, the Board declined to exercise its discretion under 35 U.S.C. § 325(d) to deny the Petition.

The Board then went on to find that claims 2, 3, 5, 7, 11, 12, 28, 32-35, 37, 40, and 44-46 of the ’522 patent are unpatentable as having been obvious under 35 U.S.C. § 103 in view of Nissan and Hitachi. As found by the Board, Petitioner had specifically alleged where each element of the claims was found in the prior art (“with citations by exhibit number to the specific portion of the evidence that supports the challenge”), and had adequately explained why a person skilled in the art “would have been motivated to replace Nissan’s physical correction for camera position misalignment with Hitachi’s image processing technique.”  However, the Board found that Petitioner had not persuasively shown the same with respect to challenged claim 4.

The Board also found that claims 18, 21, 25, and 26 of the ’522 patent are unpatentable as having been obvious under 35 U.S.C. § 103 in view of Nissan, Hitachi, and Gutta. With respect to the combination of Nissan and Hitachi, Petitioner relied upon the same rationale as for the previous grounds.  And as to the further modification in view of Gutta, the Board found that the provided evidence adequately supported Petitioner’s assertion that adding Gutta’s object detection system to Nissan in order to limit cognitive load on the driver would have been obvious.

The Board was not persuaded that claims 16 and 17 are unpatentable over Nissan, Hitachi, and either Ohtsuka or Broggi II because, for example, Petitioner’s obviousness analysis “does not explain adequately how the combination of Nissan and Hitachi is modified to reach the claimed.” More particularly, the Board found that Petitioner’s obviousness analysis failed to state explicitly the differences between the Nissan/Hitachi combination and the claimed subject matter” and merely provided citations without explaining persuasively the relevance of the evidence.

On the other hand, the Board determined that Petitioner had established a reasonable likelihood of showing that claims 19, 23, and 24 are unpatentable over the combination of Nissan, Hitachi, and Broggi. For example, according to the Board, “Petitioner’s reasoning is supported by evidence, and Patent Owner’s argument is unpersuasive because it fails to address that evidence.”

Petitioner had also asserted that claim 20 would have been obvious under 35 U.S.C. § 103(a) in view of Nissan, Hitachi, Sun, and Bos. The Board found this ground to be deficient for several reasons.  As one example, the Board stated that it “will not consider an argument not made in the Petition.”  Thus, the Board concluded that Petitioner had not established a reasonable likelihood of prevailing on the ground of unpatentability asserted against claim 20.

The Board was persuaded that there existed a reasonable likelihood that Petitioner would prevail in establishing that claim 22 is unpatentable over Nissan, Hitachi, and either Gutta or Breed. For example, the Board concluded that Petitioner had presented adequate reasons to show “that it would have been obvious to further modify the combination of Nissan and Hitachi to take the motion direction of the car into account so that only potentially hazardous objects would be identified as disclosed by Gutta.”

Valeo North America, Inc.; Valeo S.A.; Valeo GmbH; Valeo Schalter und Sensoren Gmbh; and Connaught Electronics Ltd. v. Magna Electronics, Inc., IPR2014-01208
Paper 13: Decision on Institution of Inter Partes Review 
Dated: December 23, 2014 
Patent: 7,991,522 B2
Before: Jameson Lee, Phillip J. Kauffman, and Matthew R. Clements 
Written by: Kauffman
Related Proceedings: Magna Electronics Inc. v. Valeo, Inc., No. 2:13-cv-11376-DRG (filed on Mar. 28, 2013) (E.D. Mich.); Valeo, Inc. v. Magna Elects., Inc., Case IPR2014-00221 (PTAB May 29, 2014); IPR2014-00223 (not instituted); IPR2014-00227; IPR2014-01206; IPR2014-00222; and IPR2014-01204