Colby et al.v.Mantel et al.Download PDFPatent Trial and Appeal BoardDec 21, 201511892475 (P.T.A.B. Dec. 21, 2015) Copy Citation BoxInterferences@uspto.gov Paper No. 23 Tel: 571-272-4683 Entered: December 21, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Steven M. Colby Trust Junior Party (Application No. 12/978,868) (Inventors: Steven M. Colby and Tamara S. Colby) v. Sirius XM Radio Inc. Senior Party (US 7,822,381 B2) (Inventors: G. David Mantel and Paul D. Marko) ________________ Patent Interference 106,039 (HHB) (Technology Center 2600) ________________ Before RICHARD E. SCHAFER, SALLY GARDNER LANE, and HUNG H. BUI, Administrative Patent Judges. BUI, Administrative Patent Judge. JUDGMENT – REQUEST FOR ADVERSE 37 C.F.R. §41.127(b) Interference No. 106,039 2 On December 10, 2015, Junior Party Steven M. Colby Trust (“Colby”) 1 informed the Board that Colby concedes that the claims of Colby Application No. 2 12/978,868 that correspond to the Count were added to the application on October 3 20, 2011, that is more than one year after the February 26, 2009 publication date of 4 Senior Party Sirius XM Radio (“Sirius”) Patent No. 7,822,381 B2. Paper 22. 5 Colby acknowledges that as its claims are barred under 35 U.S.C. §135(b)(2), it 6 lacks standing in this interference under (Bd. R. 201) and, as such, wishes to 7 abandon the contest with respect to Count 1 set forth in the Declaration of 8 Interference entered on October 29, 2015. Id. 9 Under 37 C.F.R. §41.127(b)(4), an abandonment of the contest is construed 10 to be a Request for Adverse Judgment. Colby’s Request for Adverse Judgment is 11 GRANTED. 12 Accordingly, it is: 13 ORDERED that judgment on priority as to Count 1, the sole count of 14 the interference (Paper 1 at 4–5) be entered against Junior Party Colby; 15 FURTHER ORDERED that Claims 46–48 of Junior Party Colby’s 16 involved application, US Application No. 12/978,868, corresponding to Count 1 17 of the interference (Paper 1 at 4–5), are FINALLY REFUSED, 35 U.S.C. 18 § 135(a);1 19 FURTHER ORDERED that a copy of this judgment shall be 20 entered into the administrative record of (1) Junior Party Colby’s involved 21 1 “Patent interferences continue under the relevant statutes in effect on 15 March 2013. See Pub. L. 112-29, § 3(n), 125 Stat. 284, 293 (2011).” Interference No. 106,039 3 application, US Application No. 12/978,868, and (2) Senior Party Sirius’ involved 1 patent, US Patent No. 7,822,381 B2; and 2 FURTHER ORDERED that if there is any settlement agreement or 3 related documents which have not been filed, attention is directed to 35 U.S.C. 4 § 135(c) and 37 C.F.R. § 41.205. 5 cc: (via electronic mail): Attorney for Junior Party – Colby Steven M. Colby, Esq. Peters Verny, LLP 425 Sherman Ave., Suite 230 Palo Alto, CA 94306 Email: scolby@petersverny.com Attorney for Senior Party – Sirius Aaron S. Haleva, Esq. Richard L. Moss, Esq. Kramer Levin Naftalis & Frankel LLP Intellectual Property Department 1177 Avenue of the Americans New York, NY 10036 Email: ahaleva@kramerlevin.com Email: rmoss@kramerlevin.com Copy with citationCopy as parenthetical citation