By John PresperOn December 11, 2012, the International Trade Commission (“Commission”) issued a notice and order granting petitions for reconsideration filed by Complainant Overland Storage, Inc. (“Overland”) and Respondents BDT AG, BDT Automation Technology (Zhuhai FTZ), Co., Ltd., BDT de Mexico, S. de R.L. de C.V., and BDT Products, Inc.’s (“BDT”) in Certain Automated Media Library Devices (Inv. No. 337-TA-746).
By way of background, Chief ALJ Charles E. Bullock issued an Initial Determination (“ID”) on June 20, 2012 finding that (1) U.S. Patent Nos. 6,328,766 and 6,353,581 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. In its October 25, 2012 order, the Commission remanded the investigation with respect to the ‘766 and ‘581 patents. Regarding the ‘766 patent, the Commission affirmed -- with modified reasoning -- the ALJ’s finding that BDT did not contributorily infringe the asserted claims, and remanded the investigation for consideration of whether certain IBM documents deemed to qualify as printed publications under § 102 teach or suggest the features of the asserted claims, either alone or in combination with other prior art. With respect to the ‘581 patent, the Commission modified ALJ Bullock’s construction of the term “linear array,” determining that it means “media element storage locations [or cells] arranged in one or more straight lines.” In light of this modification, the Commission reconsidered the ALJ’s infringement determination and found that the accused products meet the limitation of “linear array.” However, the Commission ultimately affirmed the ALJ’s finding of noninfringement of the ‘581 patent because the accused products do not satisfy the limitation of a “manually movable towards said door” mail slot. The Commision also affirmed the ALJ’s finding that the ‘581 patent is not invalid. Further, the Commission affirmed -- with modified reasoning -- ALJ Bullock’s rejection of BDT’s patent exhaustion defense, reversed the ALJ’s finding that Overland failed to satisfy the technical prong of the domestic industry requirement as to the ‘581 patent, and remanded the investigation for consideration of whether Overland satisfied the economic prong. See our November 28, 2012 post for more details.
According to the notice and order, Overland filed a petition for reconsideration of the Commission’s determination that BDT does not infringe claims 10, 12 and 16 of the ‘581 patent. BDT filed a petition for reconsideration of the Commission’s determination that BDT waived the testimony of Mr. Fago and Mr. Siegle in support of its invalidity arguments regarding the ‘581 patent by failing to cite the testimony in pre-hearing or post-hearing briefs.
Having considered the matter, the Commission granted Overland’s petition for reconsideration in view of the Commission’s determination that the accused products meet its modified construction of “linear array.” Thus, in addition to the issues to be considered on remand in the Commission’s October 25, 2012 order, the investigation was further remanded for ALJ Bullock to make all findings regarding direct infringement and, if necessary, indirect infringement, of claims 10, 12 and 16 of the ‘581 patent. The ALJ was also directed to construe the “manually moveable towards said opening” and “manually moveable towards a doorway” limitations in claims 10, 12 and 16 in accordance with their plain and ordinary meaning. BDT’s request for reconsideration of the Commission’s determination that BDT waived the testimony of Mr. Fago and Mr. Siegle was denied.