[Federal Register Volume 77, Number 211 (Wednesday, October 31, 2012)]
[Notices]
[Pages 65907-65908]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2012-26709]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-746]


Certain Automated Media Library Devices; Notice of Commission 
Decision Remanding the Investigation as To U.S. Patent Nos. 6,328,766 
and 6,353,581; Extension of Target Date

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 remand to the presiding administrative law 
judge (``ALJ'') with respect to U.S. Patent Nos. 6,328,766 (``the '766 
patent'') and 6,353,581 (``the '581 patent''), and the target date for 
completion of the investigation is extended to March 25, 2013.

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, 
Inc. 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, 
as amended (19 U.S.C. 1337) by reason of infringement of certain claims 
of the '766 patent and the '581 patent (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 rejected the BDT Respondents' patent exhaustion 
defense.
    On July 5, 2012, the BDT Respondents filed a joint petition for 
review of certain aspects of the final ID's findings concerning 
infringement of the '766 patent, and invalidity and patent exhaustion 
with respect to the Asserted Patents. Also on July 5, 2012, Overland 
filed a petition for review of certain aspects of the final ID's 
findings concerning claim construction, invalidity, and domestic 
industry with respect to the '581 patent, and infringement of the 
Asserted Patents. On July 13, 2012, Overland and the BDT Respondents 
each filed a response.
    On August 20, 2012, the Commission determined to review the final 
ID in part and requested briefing on several issues it determined to 
review, and on remedy, the public interest and bonding. 77 FR. 51573 
(August 24, 2012). Specifically, with respect to the '766 patent, the 
Commission determined to review the ALJ's finding that Overland did not 
prove the BDT Respondents possessed the requisite knowledge required 
for contributory infringement. The Commission also determined to review 
the ALJ's finding that the IBM documents related to certain IBM tape 
libraries do not qualify as printed publications under 35 U.S.C. 102, 
and the ALJ's invalidity analysis concerning any IBM documents that are 
found to

[[Page 65908]]

qualify as printed publications. 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 and 
invalidity in view of the proper construction of that claim term. The 
Commission also determined to review the ALJ's finding that no domestic 
industry exists with respect to the '581 patent. The Commission further 
determined to review the ALJ's rejection of the BDT Respondents' patent 
exhaustion defense. The Commission determined not to review the 
remaining issues decided in the ID.
    On September 4, 2012, the parties filed written submissions on the 
issues under review, remedy, the public interest, and bonding. On 
September 12, 2012, the parties filed reply briefs. The Commission did 
not receive any non-party submissions.
    Having examined the record of this investigation, including the 
ALJ's final ID and the parties' submissions, the Commission has 
determined to remand the investigation to the ALJ with respect to the 
'766 and the '581 patents, and to extend the target date.
    Specifically, the Commission affirms, with modified reasoning, the 
ALJ's finding that the BDT Respondents did not contributorily infringe 
the asserted claims of the '766 patent. In particular, the Commission 
finds that Overland waived its right to argue that the requisite 
knowledge required for contributory infringement can be presumed. The 
Commission also finds that Overland has not proven that the BDT 
Respondents imported, sold for importation, or sold after importation 
within the United States, any Accused Products that contributed to 
IBM's or Dell's direct infringement after the BDT Respondents had 
knowledge of the '766 patent. In addition, the Commission reverses 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 35 U.S.C. 102, but affirms the ALJ's finding that 
the IBM documents related to the IBM 3575 tape library do not qualify 
as ``printed publications.'' Accordingly, the Commission remands the 
investigation to the ALJ to consider whether the IBM documents that 
qualify as prior art anticipate or, in combination with their 
associated IBM tape library and/or U.S. Patent No. 6,434,090, render 
obvious the asserted claims of the '766 patent.
    With respect to the '581 patent, the Commission finds that the 
limitation ``linear array'' as recited in claims 1, 2, 5, 6, 7, 9, 10, 
12, and 16 means ``media element storage locations [or cells] arranged 
in one or more straight lines.'' The Commission affirms, with modified 
reasoning, the ALJ's finding of noninfringement. The Commission also 
affirms, with modified reasoning, the ALJ's finding that the '581 
patent was not shown to be invalid. In addition, the Commission 
reverses the ALJ's finding that Overland has failed to satisfy the 
technical prong of the domestic industry requirement. Specifically, the 
Commission finds that Overland has 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 remands the investigation to the 
ALJ to consider whether Overland has satisfied the economic prong of 
the domestic industry requirement. Finally, the Commission affirms, 
with modified reasoning, the ALJ's rejection of the BDT Respondents' 
patent exhaustion defense.
    The Commission has extended the target date for completion of this 
investigation to March 25, 2013.
    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 section 210.50 of the Commission's Rules of Practice and Procedure 
(19 CFR 210.50).

    By order of the Commission.

     Issued: October 25, 2012.
Lisa R. Barton,
Acting Secretary to the Commission.
[FR Doc. 2012-26709 Filed 10-30-12; 8:45 am]
BILLING CODE 7020-02-P