[Federal Register Volume 78, Number 106 (Monday, June 3, 2013)]
[Notices]
[Pages 33106-33108]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2013-12980]
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INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-746]
Certain Automated Media Library Devices; Decision to Modify In
Part a Remand Initial Determination; Termination of the Investigation
With A Finding of No Violation
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 modify 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. The Commission has terminated the investigation.
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 U.S. Patent No. 6,328,766 (``the '766 patent'') and U.S. Patent No.
6,353,581 (``the '581 patent''). 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.
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) (not reviewed by the Commission, Aug. 26, 2011). On September 2,
2011, the ALJ terminated BDT-Solutions GmbH & Co. KG from the
investigation upon a motion for summary determination of no violation
(Order No. 31) (not reviewed by the Commission, Sept. 21, 2011). The
ALJ also terminated IBM and Dell based on a license agreement (Order
No. 35) (affirmed by the Commission, Jan. 27, 2012). Accordingly, BDT
AG, BDT Automation Technology (Zhuhai FTZ) Co., Ltd., BDT de
M[eacute]xico, S. de R.L. de C.V, and BDT Products, Inc. (collectively,
``the BDT Respondents'') 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 FR 51573 (August 24, 2012). On September 4,
[[Page 33107]]
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 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. 102, but
affirmed the ALJ's finding that the IBM documents related to the IBM
3575 tape library do not qualify as ``printed publications.'' 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. Finally, the Commission affirmed, with modified reasoning,
the ALJ's rejection of the BDT Respondents' patent exhaustion defense
with respect to both asserted patents.
The Commission also determined to remand the investigation to the
ALJ with respect to certain issues regarding both asserted patents, and
to extend the target date for completion of the investigation. 77 FR
65907 (Oct. 31, 2012). Specifically, 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. The Commission also
remanded the investigation to the ALJ to consider whether Overland has
satisfied the economic prong of the domestic industry requirement for
the '581 patent.
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 November 13, 2012, the BDT Respondents filed a motion for leave
to file out of time a petition for reconsideration of the Commission's
determination that the BDT Respondents waived consideration of certain
testimonies in support of a finding of invalidity of the '581 patent.
The Commission found good and sufficient reason to waive the 14-day
limit of rule 210.47 and granted the BDT Respondents' motion for leave
to file out of time a petition for reconsideration. However, the
Commission determined that the petition did not comply with 19 CFR
210.47 because it was not confined to ``new questions'' raised by the
Commission determination and for which the BDT Respondents had no
opportunity to submit arguments.
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. 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. 102 as anticipated by the 3494 Operator Guide,
but that the claims are not invalid under 35 U.S.C. 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.
On May 10, 2013, the Commission determined to review in part the
RID. Specifically, the Commission determined to review the RID's
finding that Overland did not show by a preponderance of the evidence
that the accused products infringe claim 16 of the '581 patent. The
Commission 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 determined not to review the
remaining issues decided in the RID. Pursuant to the Commission Orders
of October 25, 2012 and December 11, 2012, the ALJ's determinations on
the unreviewed issues became the Commission's final determinations.
On review, the Commission has determined to affirm, based on the
Commission's construction of the limitation ``cells in fixed relative
position,'' 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 affirm the
RID's finding that the BDT Respondents have shown by clear and
convincing evidence that the 3494 Operator Guide anticipates the
asserted claims of the '766 patent. A Commission opinion on remand will
be issued concurrently with this notice.
The Commission has terminated this investigation. 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 Part 210 of the
Commission's Rules of Practice and Procedure (19 CFR Part 210).
Issued: May 28, 2013.
[[Page 33108]]
By order of the Commission.
William R. Bishop,
Supervisory Hearings and Meetings Officer.
[FR Doc. 2013-12980 Filed 5-31-13; 8:45 am]
BILLING CODE 7020-02-P