By way of background, the Complainant in this matter is Overland Storage, Inc. and the Respondents are BDT AG, BDT-Solutions GmbH & Co. KG, BDT Products, Inc., BDT Automation Technology (Zhuhai FTZ) Co., Ltd., and BDT de México, S. de R.L. de C.V. (collectively, “BDT”). The two patents at issue, namely: U.S. Patent Nos. 6,328,766 (the ‘766 patent) and 6,353,581 (the ‘581 patent) are directed to automated media library devices, also known as tape libraries. In his ID, ALJ Bullock determined that (i) the ‘766 and ‘581 patents are not infringed by BDT; (ii) the patents are not invalid except for claim 15 of the ‘581 patent.; and (iii) a domestic industry in the United States exists that practices the ‘766 patent, but does not exist that practices the ‘581 patent. See our July 27, 2012 post for more details.
According to the notice, the Commission determined to review the ID in part. Specifically, with respect to the ‘766 patent, the Commission determined to review the ALJ’s findings on contributory infringement, validity and patent exhaustion. 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, validity, domestic industry and patent exhaustion.
The parties are requested to brief their positions on the following five questions listed in the notice:
1. The ALJ found that the BDT Respondents did not prove by clear and convincing evidence that the IBM 3570, 3575, 7331, 7336 and 3494 documents qualify as printed publications under 35 U.S.C. § 102. For each respective IBM document, please identify all evidence in the record that supports a finding that the document was publicly accessible before the filing date of the ‘766 patent.
2. To the extent the IBM 3570, 7331, 7336 and 3494 documents qualify as printed publications under 35 U.S.C. § 102, how does each document either alone or in combination with other prior art of record anticipate or render obvious the asserted claims of the ‘766 patent? Please specify what prior art, if any, allegedly combines with the respective IBM document(s) to render obvious the asserted claims, and why. We are particularly interested in how the respective IBM documents, either alone or in combination with other prior art, expressly or inherently disclose or suggest the features of “said controller is configured such that a subset of said plurality of media elements and a subset of said plurality of media element drives are available for read/write access by a first one of said plurality of host computers and are unavailable for read/write access by a second one of said plurality of host computers” in claim 1 and the “queuing” and “sequentially performing” steps in claim 2. Please cite only record evidence and relevant legal authority to support your position. Arguments not made before the ALJ will not be considered.
3. The ALJ found that Overland did not prove that the BDT Respondents possessed the requisite knowledge that the acts of IBM and Dell constituted patent infringement. Please identify all evidence in the record that supports a finding of contributory infringement of the ‘766 patent.
4. Please comment on Overland’s assertion that its evidence and analysis for domestic industry with respect to its NEO 2000, 2000e, 4000 and 4000e tape libraries were undisputed. Please cite all evidence in the record that supports your position.
5. The BDT Respondents raise the question of whether the settlement agreement and the license agreement between Overland and IBM exhaust Overland’s rights in the Asserted Patents as to an upstream, unlicensed supplier. Please address the ALJ’s finding that the license agreement itself, as opposed to a sale of the patented goods, constitutes a “first authorized sale” for purposes of patent exhaustion in view of pertinent legal authorities (e.g., Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617(2008); LG Elecs., Inc. v. Bizcom Elecs., Inc., 453 F.3d 1364 (Fed.. Cir. 2006); Excelsior Tech. Inc. v. Pabst Licensing GMBH & Co., KG, 541 F.3d 1373 (Fed. Cir. 2008); LG Elecs. Inc. v. Hitachi Ltd., 655 F. Supp. 2d 1036 (N.D. Cat,,2009); and Tessera, Inc. v. Inti. Trade Comm 'n, 646 F.3d 1357 (Fed. Cir. 2011)).
The notice also requests briefing on the issues of remedy, public interest, and bonding. Written submissions are due by September 4, 2012, with reply submissions due by September 12, 2012.