US International Trade Commission Issues Notice Regarding Overland Patent …

The U.S. International Trade Commission issued the following notice by Lisa R. Barton, acting secretary to the commission: In the Matter of Certain Automated Media Library Devices investigation No. 337-TA-746 Notice of Commission Decision to Review in Part a Remand Initial Determination Finding no Violation of Section 337 Agency: U.S. International Trade commission.

Summary
Notice is hereby given that the U.S. International Trade commission has determined to review in part the presiding administrative law judge’s (ALJ) remand initial determination (RID) issued on March 26, 2013, finding no violation of section 337 of the Tariff Act of 1930, 19 U.S.C.’ 1337 in the above-captioned investigation.

Supplementary Information
The commission instituted this investigation on November 24, 2010, based upon a complaint filed by Overland Storage, Inc. of San Diego, CA on October 19, 2010, and supplemented on November 9, 2010. 75 Fed. Reg. 71735 (Nov. 24, 2010). The complaint alleged violations of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. section 1337) by reason of infringement of certain claims of U.S. Patent No. 6,328,766 and U.S. Patent No. 6,353,581.

The notice of investigation named as respondents BDT AG of Rottweil, Germany; BDT-Solutions GmbH & Co. KG of Rottweil, Germany; BDT Automation Technology (Zhuhai FTZ), Co., Ltd. of Zhuhai Guandang, China; BDT de Mexico, S. de R.L. de C.V., of Jalisco, Mexico; BDT Products, Inc., of Irvine, CA; Dell Inc. of Round Rock, TX; and International Business Machines Corp. of Armonk, New York. The Office of Unfair Import Investigations was not named as a party.

On August 15, 2011, the ALJ granted Overland’s motion for partial termination of the investigation with respect to claims 6 and 11 of the ‘766 patent and claims 8, 11 and 17-19 of the ‘581 patent (order No. 26). The ALJ terminated BDT-Solutions GmbH & Co. KG from the investigation upon a motion for summary determination of no violation (Order No. 31). The ALJ also terminated IBM and Dell based on a license agreement (Order No. 35). The determinations were not reviewed by the commission. Accordingly, BDT AG, BDT Automation Technology (Zhuhai FTZ) Co., Ltd., BDT de Mexico, S. de R.L. de C.V, and BDT Products, Inc. remain as respondents in this investigation.

On June 20, 2012, the ALJ issued his final ID, finding no violation of section 337 by the BDT respondents with respect to any of the asserted patent claims. On August 20, 2012, the commission determined to review the final ID in part and requested briefing on several issues it determined to review, and on remedy, the public interest and bonding. 77 Fed. Reg. 51573 (August 24, 2012). On September 4, 2012, the parties filed written submissions on the issues under review, remedy, the public interest, and bonding. The commission did not receive any non-party submissions.

On October 25, 2012, the commission determined to remand the investigation to the ALJ with respect to both asserted patents, and to extend the target date for completion of the investigation. 77 Fed. Reg. 65907 (Oct. 31, 2012). Specifically, the commission affirmed, with modified reasoning, the ALJ’s finding that the BDT respondents did not contributorily infringe the asserted claims of the ‘766 patent. In addition, the commission reversed the ALJ’s finding that the IBM documents related to the IBM 3570, 7331, 7336, and 3494 tape libraries do not qualify as ‘printed publications’ under 35 U.S.C. section 102, but affirmed the ALJ’s finding that the IBM documents related to the IBM 3575 tape library do not qualify as ‘printed publications.’ The commission remanded the investigation to the ALJ to consider whether the IBM documents that qualify as prior art anticipate or, in combination with their associated IBM tape library and/or U.S. Patent No. 6,434,090, render obvious the asserted claims of the ‘766 patent.

With respect to the ‘581 patent, the commission construed the limitation ‘linear array’ as recited in claims 1, 2, 5, 6, 7, 9, 10, 12, and 16 to mean "media element storage locations [or cells] arranged in one or more straight lines." The commission affirmed, with modified reasoning, the ALJ’s finding of noninfringement of the ‘581 patent. The commission also affirmed, with modified reasoning, the ALJ’s finding that the ‘581 patent was not shown to be invalid (except for claim 15). In addition, the commission reversed the ALJ’s finding that Overland had failed to satisfy the technical prong of the domestic industry requirement. Accordingly, the commission remanded the investigation to the ALJ to consider whether Overland has satisfied the economic prong of the domestic industry requirement. Finally, the commission affirmed, with modified reasoning, the ALJ’s rejection of the BDT respondents’ patent exhaustion defense with respect to both asserted patents.

On November 8, 2012, Overland filed a petition for reconsideration of the commission’s determination that the BDT respondents did not infringe claims 10, 12, and 16 of the ‘581 patent, which the BDT respondents opposed. On December 11, 2012, the commission granted Overland’s petition for reconsideration in view of the commission’s determination that the accused products met its modified construction of the term ‘linear array.’ A revised commission opinion issued on January 9, 2013 clarifying that the commission affirms, with modified reasoning, the ALJ’s finding of noninfringement of claims 1-2, 5-7 and 9 of the ‘581 patent. In addition to the issues remanded to the ALJ in the commission’s order dated October 25, 2012, the commission further remanded the investigation to the ALJ to make all findings regarding infringement of claims 10, 12, and 16 based on the existing record.

On remand, the ALJ extended the target date for completion of the investigation to June 25, 2013. The commission determined not to review the ID setting the new target date. Notice (Jan. 9, 2013). On March 26, 2013, the ALJ issued his RID in this investigation. The ALJ found no violation of section 337 by the BDT respondents in connection with the asserted patents. Specifically, the ALJ found that the accused products do not directly infringe claims 10, 12 and 16 of the ‘581 patent because they do not meet the limitations: "a linear array of media element cells in fixed position with respect to said housing"; "a linear array of media element cells in fixed relative position;" "a moveable cell coupled to said end of said magazine adjacent to said opening"; and "at least one movable cell coupled to one end of said linear array."

Having found no direct infringement, the ALJ concluded that the BDT respondents also do not induce or contributorily infringe claims 10, 12 and 16 of the ‘581 patent. The ALJ further found that the economic prong of the domestic industry requirement has been satisfied for the ‘581 patent under 19 U.S.C. section 1337(a)(3)(A), (B), and (C). With respect to the ‘766 patent, the ALJ found that claims 1-3 and 7-9 are invalid under 35 U.S.C. section 102 as anticipated by the 3494 Operator Guide, but that the claims are not invalid under 35 U.S.C. section 103 for obviousness.

On April 8, 2013, Overland petitioned for review of certain aspects of the RID. In particular, Overland requested that the commission review and reverse the RID’s finding of no infringement of claims 10, 12 and 16 of the ‘581 patent and the RID’s finding that the asserted claims of the ‘766 patent are invalid as anticipated by the 3494 Operator Guide. The BDT respondents did not file a petition for review, but did file a response to Overland’s petition for review on April 15, 2013.

Having considered the evidence of record, and the parties’ submissions, the commission has determined to review the RID in part. Specifically, the commission has determined to review the RID’s finding that Overland has not shown by a preponderance of the evidence that the accused products infringe claim 16 of the ‘581 patent. The commission has also determined to review the RID’s finding that the asserted claims of the ‘766 patent are invalid as anticipated by the 3494 Operator Guide.

The commission has determined not to review the remaining issues decided in the RID. In connection with its review, the commission is not requesting briefing on the reviewed issues or additional briefing on remedy, bonding, and the public interest.

The authority for the commission’s determination is contained in section 337 of the Tariff Act of 1930, as amended (19 U.S.C. section 1337), and in sections 210.42-46 and 210.50 of the commission’s Rules of Practice and Procedure (19 C.F.R. sections 210.42-46 and 210.50).