Spectra Logic Corporationv.Overland Storage Inc.

Patent Trial and Appeal Board

Jan 8, 2015

09104406 (P.T.A.B. Jan. 8, 2015)

Trials@uspto.gov Paper 28
571-272-7822 Entered: January 8, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SPECTRA LOGIC CORPORATION,
Petitioner,

v.

OVERLAND STORAGE INC.,
Patent Owner.

Case IPR2013-00357
Patent 6,328,766 B1

Before KEVIN F. TURNER, JAMES A. TARTAL, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

CLEMENTS, Administrative Patent Judge.

DECISISON
Request for Rehearing
37 C.F.R. § 42.71

IPR2013-00357
Patent 6,328,766 B1

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I. INTRODUCTION
On December 8, 2014, Overland Storage, Inc. (“Patent Owner”) filed
a request for rehearing of the final written decision (Paper 26, “Dec.”)
holding claims 1–11 unpatentable. Patent Owner seeks reconsiderations on
the grounds that:
1. Petitioner failed to meet its burden of proof because it offered no
expert testimony; and
2. 3494 GSP does not anticipate claims 10 and 11 because it does not
disclose the “sending” steps of claim 10.
The request for rehearing is denied.
II. ANALYSIS
In pertinent part, 37 C.F.R. § 42.71(d) states:
The burden of showing a decision should be modified lies with
the party challenging the decision. The request must
specifically identify all matters the party believes the Board
misapprehended or overlooked, and the place where each
matter was previously addressed in a motion, an opposition, or
a reply.
Patent Owner argues that Petitioner has not established the
unpatentability of claims 1–11 by a preponderance of the evidence because it
did not offer any expert testimony and, therefore, the testimony of Patent
Owner’s expert is unrebutted. Req. 2–3. Patent Owner does not identify
any particular limitations for which it believes expert testimony was
necessary to explain the disclosure of 3494 GSP. Patent Owner argues, in
effect, that the preponderance standard can never be met without expert
testimony. We disagree. A lack of expert testimony in support of the
Petition is not dispositive. We instituted inter partes review of claims 1–11
IPR2013-00357
Patent 6,328,766 B1

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as unpatentable under 35 U.S.C. § 102 as anticipated by 3494 GSP. Paper
11, 20. In the final written decision, we determined that Petitioner’s
citations to 3494 GSP established sufficiently, without the need for expert
testimony, that each and every element of the challenged claims was
disclosed. Dec. 13–27. While Patent Owner is correct that “‘arguments of
counsel cannot take the place of evidence,’” Patent Owner does not
appreciate that the disclosure of 3494 is itself evidence and we were not
persuaded by Patent Owner’s expert witness testimony with respect to that
evidence. Dec. 21. Accordingly, we are not persuaded that we overlooked
or misapprehended the lack of expert testimony in support of the petition.
Claims 10 and 11
Patent Owner argues that 3494 GSP does not anticipate claims 10 and
11 because the “status information” disclosed in 3494 GSP is not a
“response including only the number of media element storage locations”
(emphasis added) or a “response including only the number of media
element drives” (emphasis added), as recited in claim 10. Req. 3–7 (citing
Ex. 2005 (Declaration of Mr. Ian Jestice) ¶ 103). This argument, to which
Patent Owner devotes three and a half pages, is found in Patent Owner’s
Response in only a single, conclusory sentence with no citation to Mr.
Jestice’s testimony. Paper 15, 35 (“Page 8 of the 3494 GSP, although it does
disclose that ‘[t]he Library Manager receives requests from hosts for
automated operations and returns status information,’ it does not disclose . . .
sending a response that only includes the number of media elements and
drives within that particular partition as required by claim 10.”). Patent
Owner offered no analysis or evidence to support this assertion. Therefore,
IPR2013-00357
Patent 6,328,766 B1

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we could not have misapprehended or overlooked it in our final written
decision.
Conclusion
For the foregoing reasons, Patent Owner has not shown that the final
written decision should be modified.
ORDER
Accordingly, it is:
ORDERED that Patent Owner’s request for rehearing is denied.
IPR2013-00357
Patent 6,328,766 B1

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For PETITIONER:

Robert E. Purcell, Esq.
The Law Office of Robert E. Purcell, PLLC
rpurcell@repurcelllaw.com

and

Brett O. Huston, Esq.
Spectra Logic Corporation
bretth@spectralogic.com

For PATENT OWNER:

Brent Yamashita, Esq.
Robert Buergi, Esq.
DLA Piper LLP
brent.yamashita@dlapiper.com
robert.buergi@dlapiper.com