[Federal Register Volume 78, Number 106 (Monday, June 3, 2013)]
[Notices]
[Pages 33106-33108]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2013-12980]


-----------------------------------------------------------------------

 INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-746]


Certain Automated Media Library Devices; Decision to Modify In 
Part a Remand Initial Determination; Termination of the Investigation 
With A Finding of No Violation

AGENCY: U.S. International Trade Commission.

ACTION: Notice.

-----------------------------------------------------------------------

SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission has determined to modify in part the presiding 
administrative law judge's (``ALJ'') remand initial determination 
(``RID'') issued on March 26, 2013, finding no violation of section 337 
of the Tariff Act of 1930, 19 U.S.C. 1337 in the above-captioned 
investigation. The Commission has terminated the 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, 
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 U.S. Patent No. 6,328,766 (``the '766 patent'') and U.S. Patent No. 
6,353,581 (``the '581 patent''). 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.
    On August 15, 2011, the ALJ granted Overland's motion for partial 
termination of the investigation with respect to claims 6 and 11 of the 
'766 patent and claims 8, 11 and 17-19 of the '581 patent (Order No. 
26) (not reviewed by the Commission, Aug. 26, 2011). On September 2, 
2011, the ALJ terminated BDT-Solutions GmbH & Co. KG from the 
investigation upon a motion for summary determination of no violation 
(Order No. 31) (not reviewed by the Commission, Sept. 21, 2011). The 
ALJ also terminated IBM and Dell based on a license agreement (Order 
No. 35) (affirmed by the Commission, Jan. 27, 2012). Accordingly, BDT 
AG, BDT Automation Technology (Zhuhai FTZ) Co., Ltd., BDT de 
M[eacute]xico, S. de R.L. de C.V, and BDT Products, Inc. (collectively, 
``the BDT Respondents'') remain as respondents in this 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 patent claims. 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). On September 4,

[[Page 33107]]

2012, the parties filed written submissions on the issues under review, 
remedy, the public interest, and bonding. The Commission did not 
receive any non-party submissions.
    On October 25, 2012, the Commission affirmed, with modified 
reasoning, the ALJ's finding that the BDT Respondents did not 
contributorily infringe the asserted claims 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 35 U.S.C. 102, but 
affirmed the ALJ's finding that the IBM documents related to the IBM 
3575 tape library do not qualify as ``printed publications.'' With 
respect to the '581 patent, the Commission construed the limitation 
``linear array'' as recited in claims 1, 2, 5, 6, 7, 9, 10, 12, and 16 
to mean ``media element storage locations [or cells] arranged in one or 
more straight lines.'' The Commission affirmed, with modified 
reasoning, the ALJ's finding of noninfringement of the '581 patent. The 
Commission also affirmed, with modified reasoning, the ALJ's finding 
that the '581 patent was not shown to be invalid (except for claim 15). 
In addition, the Commission reversed the ALJ's finding that Overland 
had failed to satisfy the technical prong of the domestic industry 
requirement. Finally, the Commission affirmed, with modified reasoning, 
the ALJ's rejection of the BDT Respondents' patent exhaustion defense 
with respect to both asserted patents.
    The Commission also determined to remand the investigation to the 
ALJ with respect to certain issues regarding both asserted patents, and 
to extend the target date for completion of the investigation. 77 FR 
65907 (Oct. 31, 2012). Specifically, the Commission remanded 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. The Commission also 
remanded the investigation to the ALJ to consider whether Overland has 
satisfied the economic prong of the domestic industry requirement for 
the '581 patent.
    On November 8, 2012, Overland filed a petition for reconsideration 
of the Commission's determination that the BDT Respondents did not 
infringe claims 10, 12, and 16 of the '581 patent, which the BDT 
Respondents opposed. On December 11, 2012, the Commission granted 
Overland's petition for reconsideration in view of the Commission's 
determination that the accused products met its modified construction 
of the term ``linear array.'' A revised Commission Opinion issued on 
January 9, 2013 clarifying that the Commission affirms, with modified 
reasoning, the ALJ's finding of noninfringement of claims 1-2, 5-7 and 
9 of the '581 patent. In addition to the issues remanded to the ALJ in 
the Commission's Order dated October 25, 2012, the Commission further 
remanded the investigation to the ALJ to make all findings regarding 
infringement of claims 10, 12, and 16 based on the existing record.
    On November 13, 2012, the BDT Respondents filed a motion for leave 
to file out of time a petition for reconsideration of the Commission's 
determination that the BDT Respondents waived consideration of certain 
testimonies in support of a finding of invalidity of the '581 patent. 
The Commission found good and sufficient reason to waive the 14-day 
limit of rule 210.47 and granted the BDT Respondents' motion for leave 
to file out of time a petition for reconsideration. However, the 
Commission determined that the petition did not comply with 19 CFR 
210.47 because it was not confined to ``new questions'' raised by the 
Commission determination and for which the BDT Respondents had no 
opportunity to submit arguments.
    On remand, the ALJ extended the target date for completion of the 
investigation to June 25, 2013. The Commission determined not to review 
the ID setting the new target date. Notice (Jan. 9, 2013). On March 26, 
2013, the ALJ issued his RID in this investigation. The ALJ found no 
violation of section 337 by the BDT Respondents in connection with the 
asserted patents. Specifically, the ALJ found that the accused products 
do not directly infringe claims 10, 12 and 16 of the '581 patent 
because they do not meet the limitations: ``a linear array of media 
element cells in fixed position with respect to said housing''; ``a 
linear array of media element cells in fixed relative position;'' ``a 
moveable cell coupled to said end of said magazine adjacent to said 
opening''; and ``at least one movable cell coupled to one end of said 
linear array.'' Having found no direct infringement, the ALJ concluded 
that the BDT Respondents also do not induce or contributorily infringe 
claims 10, 12 and 16 of the '581 patent. The ALJ further found that the 
economic prong of the domestic industry requirement has been satisfied 
for the '581 patent under 19 U.S.C. 1337(a)(3)(A), (B), and (C). With 
respect to the '766 patent, the ALJ found that claims 1-3 and 7-9 are 
invalid under 35 U.S.C. 102 as anticipated by the 3494 Operator Guide, 
but that the claims are not invalid under 35 U.S.C. 103 for 
obviousness.
    On April 8, 2013, Overland petitioned for review of certain aspects 
of the RID. In particular, Overland requested that the Commission 
review and reverse the RID's finding of no infringement of claims 10, 
12 and 16 of the '581 patent and the RID's finding that the asserted 
claims of the '766 patent are invalid as anticipated by the 3494 
Operator Guide. The BDT Respondents did not file a petition for review, 
but did file a response to Overland's petition for review on April 15, 
2013.
    On May 10, 2013, the Commission determined to review in part the 
RID. Specifically, the Commission determined to review the RID's 
finding that Overland did not show by a preponderance of the evidence 
that the accused products infringe claim 16 of the '581 patent. The 
Commission also determined to review the RID's finding that the 
asserted claims of the '766 patent are invalid as anticipated by the 
3494 Operator Guide. The Commission determined not to review the 
remaining issues decided in the RID. Pursuant to the Commission Orders 
of October 25, 2012 and December 11, 2012, the ALJ's determinations on 
the unreviewed issues became the Commission's final determinations.
    On review, the Commission has determined to affirm, based on the 
Commission's construction of the limitation ``cells in fixed relative 
position,'' the RID's finding that Overland has not shown by a 
preponderance of the evidence that the accused products infringe claim 
16 of the '581 patent. The Commission has also determined to affirm the 
RID's finding that the BDT Respondents have shown by clear and 
convincing evidence that the 3494 Operator Guide anticipates the 
asserted claims of the '766 patent. A Commission opinion on remand will 
be issued concurrently with this notice.
    The Commission has terminated this investigation. 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 Part 210 of the 
Commission's Rules of Practice and Procedure (19 CFR Part 210).

     Issued: May 28, 2013.


[[Page 33108]]


    By order of the Commission.
William R. Bishop,
Supervisory Hearings and Meetings Officer.
[FR Doc. 2013-12980 Filed 5-31-13; 8:45 am]
BILLING CODE 7020-02-P