Spectra Logic Prevails Against Overland Storage Patent

Spectra Logic prevailed in a patent infringement lawsuit brought in July 2012 by Overland Storage under a contingency agreement with the law firm of DLA Piper. The patent in question is U.S. Patent No. 6,328,766 (the ’766 patent) directed to storage library partitioning.

On November 7, 2014, the Patent Trial and Appeal Board in the Patent Office determined that all of the claims covered subject matter was identically disclosed by a prior art IBM 3494 library manual. The Board also disallowed Overland’s attempt to amend its patent claims.

The International Trade Commission had previously found the asserted claims of the ’766 patent to be invalid (announced May 28th, 2013), and now the Patent Office has reached the same conclusion.

“Spectra Logic never wavered in its staunch opposition to Overland’s deplorable patent litigation tactics,” said Spectra Logic CEO, Nathan Thompson. “The misuse of patents as a business tactic is abhorrent  and desecrates our industry and customers as a whole. Spectra Logic stands for principled commercial practices and will not shirk in defending against contrived charges of patent infringement, especially those based on illegitimate patents.”

Overland’s dismal history in trying to enforce the ’766 patent involves:

• Filing a patent infringement lawsuit against BDT, IBM and Dell in 2010 and then filing an ITC action immediately afterward in an effort to prevent them from importing products allegedly covered by the ’766 patent.
• Revealing during the ITC proceeding that an actual IBM 3494 library was physically in Overland’s engineering department before Overland allegedly came up with its invention and long before Overland filed its patent application.
• Receiving an unfavorable decision of the ITC in May 2013 to the effect that the asserted claims of the ’766 patent are invalid based on the prior art IBM 3494 library.
• Declining to appeal the adverse ITC decision, but instead, continuing its patent infringement lawsuit against BDT and pursuing newly filed patent infringement lawsuits against five other companies, including Spectra Logic.
• Receiving an unfavorable preliminary decision by the Patent Office Board on December 10, 2013 to the effect that all claims of the ’766 patent are identically disclosed by the prior art IBM 3494 library.
• Now receiving a final Board decision to the same effect.

Spectra Logic’s general counsel, Brett Huston, commented, “On multiple occasions Spectra Logic provided evidence showing that both IBM and Spectra had publically released information on library sharing and partitioning systems long prior to the initial Overland patent filing. They chose to ignore the evidence and prolong the lawsuit against our company for more than two years. We’re very pleased that the ITC, and now the Patent Office, has ruled that Overland’s ’766 patent improperly attempts to cover old technology and is worthless.”