By Eric SchweibenzOn October 25, 2012, the International Trade Commission (“Commission”) issued a notice and order remanding the investigation with respect to U.S. Patent Nos. 6,328,766 and 6,353,581 in Certain Automated Media Library Devices (Inv. No. 337-TA-746).
By way of background, the complainant in this matter is Overland Storage, Inc. (“Overland”) and the remaining 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 ‘766 patent and the ‘581 patent are directed to automated media library devices, also known as tape libraries. In his June 20, 2012 Initial Determination (“ID”), Chief ALJ Charles E. Bullock determined that (1) the ‘766 and ‘581 patents are not infringed by BDT; (2) the patents are not invalid except for claim 15 of the ‘581 patent; and (3) a domestic industry in the United States exists for the ‘766 patent, but not for the ‘581 patent. See our July 27, 2012 post for more details.
The Commission had 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. Regarding 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. See our September 21, 2012 post for more details.
According to the notice and order, the Commission made the following determinations after examining the record, the ID and the parties’ submissions:
1. With respect to the ‘766 patent, the Commission affirmed, with modified reasoning, the ALJ’s finding that BDT did not contributorily infringe the asserted claims. In particular, the Commission determined that Overland waived its right to argue that the requisite knowledge required for contributory infringement can be presumed. The Commission also determined that Overland did not prove that BDT imported, sold for importation, or sold after importation any accused products that contributed to IBM’s or Dell’s direct infringement after BDT had knowledge 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 § 102, but affirmed the ALJ’s finding that documents related to the IBM 3575 tape library are printed publications. Accordingly, the investigation was remanded to the ALJ to consider (1) whether any of the IBM documents related to the IBM 3570, 7331, 7336 and 3494 teach or suggest a controller that is configured to partition media elements and drives in the infringing manner; (2) whether any of those documents teach or suggest the command queuing feature of claim 2 of the ‘766 patent; and (3) if necessary, whether there is sufficient evidence to support combining the respective IBM document with the IBM tape libraries and/or U.S. Patent No. 6,434,090 to render obvious the asserted claims of the ‘766 patent.
2. With respect to the ‘581 patent, the Commission determined that the limitation “linear array” means “media element storage locations [or cells] arranged in one or more straight lines.” The Commission affirmed, with modified reasoning, the ALJ’s findings of noninfringement and no invalidity. The Commission also reversed the ALJ’s finding that Overland failed to satisfy the technical prong of the domestic industry requirement. Specifically, the Commission determined that Overland 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 remanded the investigation to the ALJ to issue a final initial remand determination on the economic prong of the domestic industry requirement for the ‘581 patent. Finally, the Commission affirmed, with modified reasoning, the ALJ’s rejection of BDT’s patent exhaustion defense.
3. The Commission extended the target date of completion of the investigation to March 25, 2013.