We will be discussing three recent, relevant opinions in our weekly SoCal IP Institute meeting on Monday, April 4, 2011. The first case is a decision confirming that neither an examiner nor the Board of Patent Appeals and Interferences is required to perform claim construction in rejecting patent applications in view of prior art. The second case directs 9th Circuit district courts to use some flexibility in addressing the use of competitor trademarks as internet keywords. In the third case, the Federal Circuit grants another petition for writ of mandamus forcing the Eastern District of Texas to transfer a case that does not belong there. A brief synopsis of the cases is presented below.

In re Jung, 2010-1019 (Fed. Cir. March 28, 2011) (attached). Mr. Jung’s patent application was rejected twice in view of U.S. Pat. No. 6,380,571. Mr. Jung appealed the rejection to the Board of Patent Appeals and Interferences. On appeal, the BPAI affirmed the examiner’s rejection of claim 1, but reversed the rejection of claim 5. Mr. Jung requested a rehearing on the basis that the BPAI failed to set forth a prima facie rejection. The Board rejected Mr. Jung’s request and he appealed the decision to the Federal Circuit.

Mr. Jung argued that the examiner or the BPAI should be required to perform (and should have performed) claim construction in its initial prima facie rejection. The Federal Circuit affirmed that claim construction is not required and that the notice requirements of a prima facie rejection 35 U.S.C. § 132 do not require such detail.

Network Automation v. Advanced Systems Concepts, No. 10-55840 (9th Cir. Mar. 8, 2011) (attached). Network Automation filed a declaratory judgment suit in district court seeking confirmation that its purchase of the word “ActiveBatch” for search engine results did not infringe Advanced Systems Concepts’ trademark in the same term. The district court entered an injunction forbidding Network Automation from using the term. The 9th Circuit reversed and remanded.

In particular, the 9th Circuit though that the district court focused too extensively on the so-called “Brookfield Troika” of elements, namely, the similarity of the marks, the relatedness of the goods and services and the simultaneous use of the Web as a marketing tool. As a result, the 9th Circuit thought that the likelihood of confusion showing was inadequate because the strength of the mark was questionable, consumers searching for that exact term presumably already knew the exact product they were seeking, and because the degree of care of purchasing consumers was not adequately considered. In the 9th Circuit’s view, the fact that the two companies were direct competitors and the alleged intent of Network Automation were too heavily weighed by the district court. The 9th Circuit, generally, called for the district courts as a whole to utilize more flexibility in analysis of these types of cases.

Bonus Case: In re Verizion Business Network Services, Misc. No. 956, (Fed. Cir. March 22, 2011) (case attached) The Federal Circuit continues to strongly indicate that cases that have no relationship to the state of Texas should be transferred elsewhere.

All are invited to join us in our discussion of these cases during the SoCal IP Institute meeting on Monday, April 4, 2011 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.