[Federal Register Volume 77, Number 211 (Wednesday, October 31, 2012)]
[Notices]
[Pages 65907-65908]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2012-26709]
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INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-746]
Certain Automated Media Library Devices; Notice of Commission
Decision Remanding the Investigation as To U.S. Patent Nos. 6,328,766
and 6,353,581; Extension of Target Date
AGENCY: U.S. International Trade Commission.
ACTION: Notice.
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SUMMARY: Notice is hereby given that the U.S. International Trade
Commission has determined to remand to the presiding administrative law
judge (``ALJ'') with respect to U.S. Patent Nos. 6,328,766 (``the '766
patent'') and 6,353,581 (``the '581 patent''), and the target date for
completion of the investigation is extended to March 25, 2013.
FOR FURTHER INFORMATION CONTACT: Cathy Chen, Esq., Office of the
General Counsel, U.S. International Trade Commission, 500 E Street,
SW., Washington, DC 20436, telephone (202) 205-2392. Copies of non-
confidential documents filed in connection with this investigation are
or will be available for inspection during official business hours
(8:45 a.m. to 5:15 p.m.) in the Office of the Secretary, U.S.
International Trade Commission, 500 E Street, SW., Washington, DC
20436, telephone (202) 205-2000. General information concerning the
Commission may also be obtained by accessing its Internet server at
http://www.usitc.gov. The public record for this investigation may be
viewed on the Commission's electronic docket (EDIS) at http://edis.usitc.gov. Hearing-impaired persons are advised that information
on this matter can be obtained by contacting the Commission's TDD
terminal on (202) 205-1810.
SUPPLEMENTARY INFORMATION: This investigation was instituted on
November 24, 2010, based upon a complaint filed by Overland Storage,
Inc. of San Diego, California (``Overland'') on October 19, 2010, and
supplemented on November 9, 2010. 75 FR 71735 (Nov. 24, 2010). The
complaint alleged violations of section 337 of the Tariff Act of 1930,
as amended (19 U.S.C. 1337) by reason of infringement of certain claims
of the '766 patent and the '581 patent (collectively, ``the Asserted
Patents''). 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, California; Dell Inc. of Round Rock, Texas
(``Dell''); and International Business Machines Corp. of Armonk, New
York (``IBM''). The Office of Unfair Import Investigations was not
named as a party.
The ALJ granted BDT Solutions GmbH & Co. KG's motion for summary
determination of no violation on September 2, 2011. See Notice of
Commission Determination Not to Review an Initial Determination
Granting BDT Solutions' Motion for Summary Determination of No
Violation of Section 337 (Sep. 21, 2011). On December 5, 2011, the ALJ
granted a joint motion to terminate IBM and Dell from the
investigation. See Notice of Commission Determination to Affirm an
Initial Determination Granting a Joint Motion For Termination of the
Investigation by Settlement as to Respondents International Business
Machines Corp. and Dell Inc. (Jan. 27, 2012). BDT AG; BDT Automation
Technology (Zhuhai FTZ), Co., Ltd.; BDT de Mexico, S. de R.L. de C.V.;
and BDT Products, Inc. (collectively, ``the BDT Respondents'') remain
as respondents in the 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 claims. Specifically, the ALJ found no violation of section
337 by the BDT Respondents in connection with claims 1-3 and 7-9 of the
'766 patent and claims 1-2, 5-7, 9-10, 12, and 15-16 of the '581
patent. The ALJ also found that the asserted claims were not shown to
be invalid except for claim 15 of the '581 patent. The ALJ further
found that a domestic industry in the United States exists that
practices the '766 patent. The ALJ, however, found that a domestic
industry in the United States does not exist that practices the '581
patent. The ALJ also rejected the BDT Respondents' patent exhaustion
defense.
On July 5, 2012, the BDT Respondents filed a joint petition for
review of certain aspects of the final ID's findings concerning
infringement of the '766 patent, and invalidity and patent exhaustion
with respect to the Asserted Patents. Also on July 5, 2012, Overland
filed a petition for review of certain aspects of the final ID's
findings concerning claim construction, invalidity, and domestic
industry with respect to the '581 patent, and infringement of the
Asserted Patents. On July 13, 2012, Overland and the BDT Respondents
each filed a response.
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 FR. 51573
(August 24, 2012). Specifically, with respect to the '766 patent, the
Commission determined to review the ALJ's finding that Overland did not
prove the BDT Respondents possessed the requisite knowledge required
for contributory infringement. The Commission also determined to review
the ALJ's finding that the IBM documents related to certain IBM tape
libraries do not qualify as printed publications under 35 U.S.C. 102,
and the ALJ's invalidity analysis concerning any IBM documents that are
found to
[[Page 65908]]
qualify as printed publications. With respect to the '581 patent, the
Commission determined to review the ALJ's construction of the claim
term ``linear array,'' and the ALJ's findings on infringement and
invalidity in view of the proper construction of that claim term. The
Commission also determined to review the ALJ's finding that no domestic
industry exists with respect to the '581 patent. The Commission further
determined to review the ALJ's rejection of the BDT Respondents' patent
exhaustion defense. The Commission determined not to review the
remaining issues decided in the ID.
On September 4, 2012, the parties filed written submissions on the
issues under review, remedy, the public interest, and bonding. On
September 12, 2012, the parties filed reply briefs. The Commission did
not receive any non-party submissions.
Having examined the record of this investigation, including the
ALJ's final ID and the parties' submissions, the Commission has
determined to remand the investigation to the ALJ with respect to the
'766 and the '581 patents, and to extend the target date.
Specifically, the Commission affirms, with modified reasoning, the
ALJ's finding that the BDT Respondents did not contributorily infringe
the asserted claims of the '766 patent. In particular, the Commission
finds that Overland waived its right to argue that the requisite
knowledge required for contributory infringement can be presumed. The
Commission also finds that Overland has not proven that the BDT
Respondents imported, sold for importation, or sold after importation
within the United States, any Accused Products that contributed to
IBM's or Dell's direct infringement after the BDT Respondents had
knowledge of the '766 patent. In addition, the Commission reverses 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. 102, but affirms the ALJ's finding that
the IBM documents related to the IBM 3575 tape library do not qualify
as ``printed publications.'' Accordingly, the Commission remands 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 finds that the
limitation ``linear array'' as recited in claims 1, 2, 5, 6, 7, 9, 10,
12, and 16 means ``media element storage locations [or cells] arranged
in one or more straight lines.'' The Commission affirms, with modified
reasoning, the ALJ's finding of noninfringement. The Commission also
affirms, with modified reasoning, the ALJ's finding that the '581
patent was not shown to be invalid. In addition, the Commission
reverses the ALJ's finding that Overland has failed to satisfy the
technical prong of the domestic industry requirement. Specifically, the
Commission finds that Overland has sustained its burden of showing by a
preponderance of the evidence that at least its NEO 2000, 2000e, 4000,
and 4000e tape libraries practice one or more claims of the '581
patent. Accordingly, the Commission remands the investigation to the
ALJ to consider whether Overland has satisfied the economic prong of
the domestic industry requirement. Finally, the Commission affirms,
with modified reasoning, the ALJ's rejection of the BDT Respondents'
patent exhaustion defense.
The Commission has extended the target date for completion of this
investigation to March 25, 2013.
The authority for the Commission's determination is contained in
section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and
in section 210.50 of the Commission's Rules of Practice and Procedure
(19 CFR 210.50).
By order of the Commission.
Issued: October 25, 2012.
Lisa R. Barton,
Acting Secretary to the Commission.
[FR Doc. 2012-26709 Filed 10-30-12; 8:45 am]
BILLING CODE 7020-02-P