Colby et al.v.Mantel et al.

Patent Trial and Appeal Board

Dec 21, 2015

11892475 (P.T.A.B. Dec. 21, 2015)

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