Spiegel et al.v.MARLIN et al.

Patent Trial and Appeal Board

Mar 3, 2016

13596041 (P.T.A.B. Mar. 3, 2016)

BoxInterferences@uspto.gov Paper No. 179
Tel: 571-272-4683 Entered: March 3, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Bigfoot Internet Ventures, Ltd.
Junior Party
(Application No. 13/596,041)
(Inventors: Richard E. Marlin, Michael J. Mathias &
Kristian D. Diakov)

v.

Snapchat, Inc.
Senior Party
(US 8,428,453 B1)
(Inventors: Evan Thomas Spiegel & Robert Cornelius Murphy)
________________

Patent Interference 106,005 (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. 106,005

2

On December 14, 2015, Snapchat informed the Board that: (1) Snapchat is
the owner of both the involved U.S. Patent 8,428,453 (“the ’453 patent”) and now
the involved U.S. Patent Application No. 13/596,041 (“the ’041 application1”); and
(2) Snapchat has determined that the ’453 patent is entitled to priority over the
’041 application and has conceded that the ’453 patent has priority over the ’041
application. Paper 176.
On December 28, 2015, Snapchat also provided notice that it has filed a
copy of the executed confidential settlement agreement between the parties on the
same date, along with a request to keep the settlement agreement separate from the
interference file in accordance with Bd. R. 205(c) and SO ¶ 205.1.1. Paper 177.
Snapchat Notice of Filing Settlement Agreement (Paper 177) was accepted by the
Board. Paper 178.
Under 37 C.F.R. §41.127(b)(3), Snapchat’s concession of priority is
construed to be a Request for Adverse Judgment. Snapchat’s Request for Adverse
Judgment is GRANTED.
Accordingly, it is:
ORDERED that judgment on priority as to Count 1, the sole count of
the interference (Paper 1 at 4–5) be entered against Junior Party (formerly
“Bigfoot”);

1 Junior Party (formerly “Bigfoot”) has recorded a new assignment with the PTO
on December 7, 2015 to assign all right, title, or interest in the involved U.S. Patent
Application No. 13/596,041 to Senior Party Snapchat. See Real/Frame
037224/0024.
Interference No. 106,005

3

FURTHER ORDERED that Claims 1–28 of Junior Party’s involved
application, US Application No. 13/596,041, which correspond to Count 1 of the
interference (Paper 1 at 4–5), are FINALLY REFUSED, 35 U.S.C. §135(a);2 and
FURTHER ORDERED that a copy of this judgment shall be entered
into the administrative record of (1) Junior Party’s involved application, U.S.
Patent Application No. 13/596,041, and (2) Senior Party’s involved patent, U.S.
Patent 8,428,453 B2.

2 “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. 106,005

4

cc (via email delivery):
Attorney for Junior Party – (formerly Bigfoot, now Snapchat)
Brenton R. Babcock, Esq.
Derek Bayles, Esq.
KNOBBE, MARTENS, OLSON & BEAR, LLP
BoxSnapchat@knobbe.com

Attorney for Senior Party – Snapchat, Inc.

Brenton R. Babcock, Esq.
Derek Bayles, Esq.
KNOBBE, MARTENS, OLSON & BEAR, LLP
BoxSnapchat@knobbe.com