Takeaway: In a motion to amend, the patent owner must provide claim constructions for any newly added claim terms and must also provide written description support for the new claims as a whole, not just the newly added features.

In its Final Written Decision, the Board found that all challenged claims (1-11) of the ’766 Patent are unpatentable and denied Patent Owner’s Motion to Amend. The ’766 Patent relates to automated data storage and retrieval systems that comprise a library of media elements as well as one or more drives for reading from, and writing to, the media elements in the library.

The Board began with claim construction noting that the terms are interpreted according to their broadest reasonable construction in light of the specification. The Board adopted the constructions of the terms “unavailable” and “data manipulation commands” from its Decision to Institute.  The Board then examined the term “host computer.”  The Board adopted its construction from the Decision to Institute over the objection of Patent Owner.  The Board then found that contrary to Patent Owner’s assertion, the term “controller” does not need express construction.  Regarding the term “coupled,” the Board maintained its construction from the Decision to Institute over the objection of Patent Owner.  Finally, the Board adopted Petitioner’s construction of “queuing” and “sequentially performing.”

The Board then turned to the one ground of unpatentability – anticipation by 3494 GSP. The Board was persuaded by Petitioner’s contentions that every element of claims 1-11 are anticipated by 3494 GSP.  The Board dismissed Patent Owner’s argument that 3494 GSP does not disclose a “host computer” or a “controller” because Patent Owner’s arguments were based on improper constructions.  The Board also did not agree with Patent Owner that 3494 GSP does not disclose the requisite media elements readable in each media element drive, the queuing and sequentially performing commands, the network interface, or sending request for or responses containing resource information.

Next, the Board examined Patent Owner’s Motion to Amend. Patent Owner moved to substitute proposed claims 12-14 for challenged claims 3, 7, and 9.  The Board first noted that Patent Owner’s amendment included several new claim terms that distinguish the proposed claims from the prior art, but Patent Owner failed to provide any claim constructions for those claims.  Therefore, the Board found that the Motion to Amend does not provide adequate information for the Board to determine whether the proposed claims are patentable over the prior art generally.  The Board also found that the Motion to Amend failed to address written description support for the claimed subject matter as a whole (versus just the new claim features); therefore, it insufficiently set forth the requisite written description support.

Finally, the Board found that Patent Owner had not adequately addressed what was previously known in the prior art or the level of ordinary skill in the art. Patent Owner only discussed how the added feature that the controller is configured “in response to a command from one of the plurality of host computers over the network” is patentable over 3494 GSP.  However, the Board found that Patent Owner did not identify any support for that position.  The Board also noted that Patent Owner did not discuss a patent that was cited by the Examiner during the prosecution of the ’766 Patent and that Petitioner contended disclosed the newly added feature.  Patent Owner also asserted long felt need and commercial success, but the Board did not find Patent Owner’s evidence persuasive.

Spectra Logic Corporation v. Overland Storage Inc., IPR2013-00357
Paper 26: Final Written Decision
Dated: November 7, 2014
Patent: 6,328,766 B1
Before: Kevin F. Turner, James A. Tartal, and Matthew R. Clements
Written by: Clements
Related Proceedings: Overland Storage, Inc. v. BDT AG, No. 3:12-cv-1700-JLS-BLM (S.D. Cal.); In the Matter of Certain Automated Media Storage Libraries, Inv. No. 337-TA-746 (ITC); Overland Storage, Inc. v. Spectra Logic Corporation, No. 3:12-cv-1597-JLS-BLM (S.D. Cal.); Overland Storage, Inc. v. PivotStor, LLC, No. 3:12-cv-1598-JLS-BLM (S.D. Cal.); Overland Storage, Inc. v. Qualstar Corporation, No. 3:12-cv-1605-JLS-BLM (S.D. Cal.); Overland Storage, Inc. v. Quantum Corporation, No. 3:12-cv-1599-JLS-BLM (S.D. Cal.)