By Eric Schweibenz
On April 23, 2013, Chief ALJ Charles E. Bullock issued the public version of the Remand Initial Determination (the “Remand ID”) (dated March 26, 2013) finding no violation of section 337 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.  Overland asserted U.S. Patent Nos. 6,328,766 (the ‘766 patent) and 6,353,581 (the ‘581 patent) which are directed to automated media library devices, also known as tape libraries.  In his June 20, 2012 Initial Determination, ALJ 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.  On October 25, 2012, the International Trade Commission (the “Commission”) issued a notice and order remanding the investigation.  See our October 31, 2012 and November 28, 2012 posts for more information on the Commission’s decision to review and remand the investigation.

According to the Remand ID, ALJ Bullock found that there is no violation of Section 337 with respect to claims 10, 12, and 16 of the ‘581 patent.  ALJ Bullock further determined that there is no violation of Section 337 with respect to claims 1, 2, 3, and 7-9 of the ‘766 patent as these claims were found to be invalid as anticipated.  ALJ Bullock also determined that the economic prong of the domestic industry requirement has been satisfied for the ‘581 patent.

The ‘766 Patent


Claim 1 of the ‘766 patent requires the claimed tape library controller to be configured to partition, i.e., maintain the allocation of storage locations and subsets of media elements.  There was no dispute between the parties that the prior art taught “how the 3570 tape library can be configured to achieve two discrete partitions.”  However, the ALJ determined that “[h]aving the ability to partition … does not mean that the controller is configured to partition” as it was disclosed in the prior art.  Thus, ALJ Bullock found that claim 1 was not anticipated by the 3570 tape library.  The ALJ also found that each element of claim 1 was not disclosed by the 7331 and 7336 tape libraries.

Claim 1 also requires a “plurality of media elements, all of which are readable in each of said plurality of media element drives.”  As to this claim limitation, ALJ Bullock determined that a prior art document entitled the 3494 Operator Guide disclosed this and all other elements of claim 1.  Further, the ALJ noted that Overland only asserted that the 3494 Operator Guide failed to teach this specific claim limitation in its post-hearing briefing, which amounted to a violation of Ground Rule 8.2 requiring all issued to be raised in the pre-hearing brief, otherwise they are abandoned.  Thus, ALJ Bullock found that claim 1 is anticipated by the 3494 Operator Guide. 

As to claim 2, the ALJ determined that the 3570, 7331, and 7336 tape libraries did not expressly or inherently disclose the claim element “command queuing” and, thus, that claim 2 was not anticipated by these references.  Regarding the 7331 and 7336 tape libraries, ALJ Bullock determined that Respondents’ failed to identify a specific document or teaching regarding the products that clearly disclosed the “command queuing” limitation.  Ultimately, however, claim 2 was found to be invalid as anticipated in view of the 3494 Operator Guide.  The ALJ determined that although the 3494 Operator Guide “executes commands based on a priority scheme, [that] does not mean that the Guide does not also teach the sequential performance of queued commands,” as required by the “command queuing” limitation of claim 2.  Further, because the additional limitations of dependent claims 3 and 7-9 were taught by the 3494 Operator Guide, these claims were also found to be invalid as anticipated.

Regarding the obviousness of claims 1 and 2 of the ‘766 patent, the ALJ rejected each ground set forth by Respondents as failing to constitute clear and convincing evidence of obviousness.  In particular, ALJ Bullock determined that Respondents broad citations to its expert witness statements and citation to certain conclusory ascertains contained therein failed to establish how a skilled artisan would have combined the prior art to arrive at the claimed invention.

The ‘581 Patent

Direct Infringement

Claim 10 of the ‘581 patent requires “media element cells in fixed position with respect to said housing.”  Respondents’ accused devices have removable magazines that can be unlatched and removed from their housing.  ALJ Bullock determined that Overland failed to demonstrate by a preponderance of the evidence how Respondents’ accused devices could have magazines that are both readily removable as well as not readily movable.  As to the claim term “a moveable cell coupled to said end of said magazine adjacent to said opening,” the ALJ determined that Overland failed to prove infringement by a preponderance of the evidence because there was no specific discussion of this claim limitation in Overland’s post-trial briefs.

As to claim 16 of the ‘581 patent, ALJ Bullock found the preamble to be limiting because without reference back to the preamble, “the remainder of the claim has no point of reference with which to describe the recited ‘cells’ as relative or movable.”  However, for the same reason as with claim 10, the ALJ found that Overland failed to show how Respondents’ accused devices contain “media element cells in [a] fixed position with respect to said housing.”  Thus, claim 16 was not infringed by Respondents.  As before, Overland also failed to include any discussion in its post-trial briefs on how Respondents’ accused devices satisfied the claim limitation “at least one movable cell coupled to one end of said linear array,” thereby preventing a finding of infringement on this additional ground. 

Lastly, because Overland was unable to show that the above claims were directly infringed, ALJ Bullock determined that, as a matter of law, Overland could not show induced or contributory infringement.

Domestic Industry

Regarding the economic prong of the domestic industry requirement, the ALJ approved Overland’s use of a product-by-product allocation derived from each product’s percentage contribution to Overland’s 2010 revenue.  Based on this allocation data, ALJ Bullock determined that Overland made a significant investment in plant and equipment for products that practice the ‘581 patent.  The ALJ also found that Overland undertook a significant employment of labor and capital in the United States attributable to exploitation of the ‘581 patent.  Similarly, ALJ Bullock determined that Overland’s investment in research and development directed to products that practice the ‘581 patent was significant and, therefore, that Overland had satisfied the economic prong of the domestic industry requirement.