On August 15, 2011, ALJ Charles E. Bullock issued the public version of Order No. 19 (dated July 19, 2011) granting-in-part Respondent International Business Machine’s (“IBM”) motion for partial summary determination that U.S. Patent No. 6,328,766 (“the ‘766 patent”) is not entitled to priority to “related” U.S. Patent Application Serial No. 08/786,702 (“the ‘702 application”), and that certain IBM products and documents describing same qualify as prior art under 35 U.S.C § 102(a) and/or 102(b) in Certain Automated Media Library Devices (Inv. No. 337-TA-746).

According to the Order, IBM asserted in its motion that Complainant Overland Storage, Inc. (“Overland”), admitted in response to requests for admission that the ‘766 patent is not entitled to the filing date of the ‘702 application, and that it is undisputed that several prior art publications and products qualify as prior art under 102(a) and/or 102(b) based on Overland’s allegations regarding conception of the alleged inventions.  Overland did not contest that the ‘766 patent is not entitled to priority of the earlier filed application, but disputed that IBM’s asserted products and corresponding documents qualify as prior art under 102(a) and/or 102(b), arguing that IBM failed to offer corroborated proof that (1) its products were on sale before the critical date, and (2) its documents qualify as printed publications since “a print date on a document is legally insufficient to establish that a document qualifies as prior art under section 102.”

ALJ Bullock granted-in-part the motion, agreeing that there was no dispute that the asserted claims of the ‘766 patent are not entitled to priority of the filing date of the ‘702 application, but determining that genuine issues of fact remain as to whether the IBM products and corresponding documents qualify as prior art under 102(a) and/or 102(b).