Opinion
2020-1662
08-27-2021
VISA INC., VISA U.S.A. INC., APPLE INC., Appellants v. UNIVERSAL SECURE REGISTRY, LLC, Appellee
MATTHEW A. ARGENTI, Wilson, Sonsini, Goodrich & Rosati, PC, Palo Alto, CA, argued for all appellants. Appellants Visa Inc., Visa U.S.A. Inc. also represented by MICHAEL T. ROSATO, Seattle, WA. MARK D. SELWYN, Wilmer Cutler Pickering Hale and Dorr LLP, Palo Alto, CA, for appellant Apple Inc. Also represented by BRITTANY BLUEITT AMADI, Washington, DC; MARK CHRISTOPHER FLEMING, MONICA GREWAL, Boston, MA. CHRISTOPHER MATHEWS, Quinn Emanuel Urquhart & Sullivan, LLP, Los Angeles, CA, argued for appellee. Also represented by TIGRAN GULEDJIAN.
This disposition is nonprecedential.
Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2018-01350.
MATTHEW A. ARGENTI, Wilson, Sonsini, Goodrich & Rosati, PC, Palo Alto, CA, argued for all appellants. Appellants Visa Inc., Visa U.S.A. Inc. also represented by MICHAEL T. ROSATO, Seattle, WA.
MARK D. SELWYN, Wilmer Cutler Pickering Hale and Dorr LLP, Palo Alto, CA, for appellant Apple Inc. Also represented by BRITTANY BLUEITT AMADI, Washington, DC; MARK CHRISTOPHER FLEMING, MONICA GREWAL, Boston, MA.
CHRISTOPHER MATHEWS, Quinn Emanuel Urquhart & Sullivan, LLP, Los Angeles, CA, argued for appellee. Also represented by TIGRAN GULEDJIAN.
Before NEWMAN, PROST , and TARANTO, Circuit Judges.
Circuit Judge Sharon Prost vacated the position of Chief Judge on May 21, 2021.
PER CURIAM.
The patent at issue in this appeal is U.S. Patent No. 8, 856, 539, owned by Universal Secure Registry LLC (USR). Visa filed a petition for an inter partes review, challenging several claims of the '539 patent before the Patent Trial and Appeal Board, which instituted the requested review and eventually issued a final written decision that Visa had not shown the challenged claims to be unpatentable. In another case, we have affirmed a district court's judgment that all claims of the '539 patent are patent ineligible. Universal Secure Registry LLC v. Apple Inc., No. 20-2044 (Fed. Cir. Aug. 26, 2021). Therefore, as the parties agreed at oral argument, this appeal involving the '539 patent is now moot. Apple Inc. v. Voip-Pal.com, Inc., 976 F.3d 1316, 1321 (Fed. Cir. 2020); Oral Arg. at 12:10-12:50. We vacate the Board's final written decision and remand for the Board to dismiss Visa's petition. See Apple, 976 F.3d at 1321 (citing United States v. Munsingwear, Inc., 340 U.S. 36, 39-41 (1950)).
No costs.
VACATED AND REMANDED