[Federal Register Volume 77, Number 165 (Friday, August 24, 2012)]
[Notices]
[Pages 51573-51574]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2012-20795]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-746]


Certain Automated Media Library Devices; Determination To Review 
in Part a Final Initial Determination; Schedule for Filing Written 
Submissions

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 review in part the final initial 
determination (``ID'') issued by the presiding administrative law judge 
(``ALJ'') on June 20, 2012, finding no violation of section 337 of the 
Tariff Act of 1930, as amended, 19 U.S.C. 1337, in this 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 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 
(19 U.S.C. 1337) by reason of infringement of certain claims of U.S. 
Patent No. 6,328,766 and U.S. Patent No. 6,353,581 (collectively, ``the 
Asserted Patents''). 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.
    The ALJ granted BDT Solutions GmbH & Co. KG's motion for summary 
determination of no violation on September 2, 2011. See Notice of 
Commission Determination Not to Review an Initial Determination 
Granting BDT Solutions' Motion for Summary Determination of No 
Violation of Section 337 (Sep. 21, 2011). On December 5, 2011, the ALJ 
granted a joint motion to terminate IBM and Dell from the 
investigation. See Notice of Commission Determination to Affirm an 
Initial Determination Granting a Joint Motion For Termination of the 
Investigation by Settlement as to Respondents International Business 
Machines Corp. and Dell Inc. (Jan. 27, 2012). BDT AG, BDT Automation 
Technology (Zhuhai FTZ), Co., Ltd., BDT de Mexico, S. de R.L. de C.V., 
and BDT Products, Inc. (collectively, ``the BDT Respondents'') remain 
as respondents in the 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 claims. Specifically, the ALJ found no violation of section 
337 by the BDT Respondents in connection with claims 1-3 and 7-9 of the 
'766 patent and claims 1-2, 5-7, 9-10, 12 and 15-16 of the '581 patent. 
The ALJ also found that the asserted claims were not shown to be 
invalid except for claim 15 of the '581 patent. The ALJ further found 
that a domestic industry in the United States exists that practices the 
'766 patent. The ALJ, however, found that a domestic industry in the 
United States does not exist that practices the '581 patent. The ALJ 
also found that the BDT Respondents are not entitled to a patent 
exhaustion defense.
    On July 5, 2012, Overland and the BDT Respondents each filed a 
petition for review of the ID. On July 13, 2012, Overland and the BDT 
Respondents each filed a response.
    Having examined the record of this investigation, including the 
ALJ's final ID, the petitions for review, and the responses thereto, 
the Commission has determined to review the ALJ's final ID in part. 
Specifically, with respect to the '766 patent, the Commission has 
determined to review the ALJ's findings on contributory infringement, 
validity and patent exhaustion. With respect to the '581 patent, the 
Commission has 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 issues 
under review with reference to the applicable law and the evidentiary 
record. In connection with its review, the Commission is only 
interested in responses to the following questions. Each party's brief 
responding to the following questions should be no more than 50 pages.
    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

[[Page 51574]]

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. Cal. 2009); and Tessera, Inc. 
v. Intl. Trade Comm'n, 646 F.3d 1357 (Fed. Cir. 2011)).
    In connection with the final disposition of this investigation, the 
Commission may (1) issue an order that could result in the exclusion of 
the subject articles from entry into the United States, and/or (2) 
issue one or more cease and desist orders that could result in the 
respondent(s) being required to cease and desist from engaging in 
unfair acts in the importation and sale of such articles. Accordingly, 
the Commission is interested in receiving written submissions that 
address the form of remedy, if any, that should be ordered. If a party 
seeks exclusion of an article from entry into the United States for 
purposes other than entry for consumption, the party should so indicate 
and provide information establishing that activities involving other 
types of entry either are adversely affecting it or likely to do so. 
For background, see In the Matter of Certain Devices for Connecting 
Computers via Telephone Lines, Inv. No. 337-TA-360, USITC Pub. No. 2843 
(December 1994) (Commission Opinion).
    If the Commission contemplates some form of remedy, it must 
consider the effects of that remedy upon the public interest. The 
factors the Commission will consider include the effect that an 
exclusion order and/or cease and desist orders would have on (1) the 
public health and welfare, (2) competitive conditions in the U.S. 
economy, (3) U.S. production of articles that are like or directly 
competitive with those that are subject to investigation, and (4) U.S. 
consumers. The Commission is therefore interested in receiving written 
submissions that address the aforementioned public interest factors in 
the context of this investigation.
    If the Commission orders some form of remedy, the U.S. Trade 
Representative, as delegated by the President, has 60 days to approve 
or disapprove the Commission's action. See Presidential Memorandum of 
July 21, 2005, 70 FR 43251 (July 26, 2005). During this period, the 
subject articles would be entitled to enter the United States under 
bond, in an amount determined by the Commission. The Commission is 
therefore interested in receiving submissions concerning the amount of 
the bond that should be imposed if a remedy is ordered.

Written Submissions

    The parties to the investigation are requested to file written 
submissions on the issues identified in this notice. Parties to the 
investigation, interested government agencies, and any other interested 
parties are encouraged to file written submissions on the issues of 
remedy, the public interest, and bonding. Such submissions should 
address the recommended determination by the ALJ on remedy and bonding 
with respect to the Asserted Patents. Complainant is also requested to 
submit proposed remedial orders for the Commission's consideration. 
Complainant is further requested to state the date that the patents 
expire and the HTSUS numbers under which the accused products are 
imported. The written submissions and proposed remedial orders must be 
filed no later than close of business on Tuesday, September 4, 2012. 
Reply submissions must be filed no later than the close of business on 
Wednesday, September 12, 2012. No further submissions on these issues 
will be permitted unless otherwise ordered by the Commission.
    Persons filing written submissions must file the original document 
electronically on or before the deadlines stated above and submit 8 
true paper copies to the Office of the Secretary by noon the next day 
pursuant to section 210.4(f) of the Commission's Rules of Practice and 
Procedure (19 CFR 210.4(f)). Submissions should refer to the 
investigation number (``Inv. No. 337-TA-746'') in a prominent place on 
the cover page and/or the first page. (See Handbook for Electronic 
Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf ). Persons with questions 
regarding filing should contact the Secretary (202-205-2000).
    Any person desiring to submit a document to the Commission in 
confidence must request confidential treatment. All such requests 
should be directed to the Secretary to the Commission and must include 
a full statement of the reasons why the Commission should grant such 
treatment. See 19 CFR 201.6. Documents for which confidential treatment 
by the Commission is properly sought will be treated accordingly. A 
redacted non-confidential version of the document must also be filed 
simultaneously with the any confidential filing. All non-confidential 
written submissions will be available for public inspection at the 
Office of the Secretary and on EDIS.
    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 sections 210.42-46 and 210.50 of the Commission's Rules of Practice 
and Procedure (19 CFR 210.42-46 and 210.50).


    By order of the Commission.

    Issued: August 20, 2012.
Lisa R. Barton,
Acting Secretary to the Commission.
[FR Doc. 2012-20795 Filed 8-23-12; 8:45 am]
BILLING CODE 7020-02-P