Visa Inc. v. Universal Secure Registry, LLC

Opinion

Case: 20-1662 Document: 53 Page: 1 Filed: 08/27/2021

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

VISA INC., VISA U.S.A. INC., APPLE INC., Appellants

v.

UNIVERSAL SECURE REGISTRY, LLC, Appellee ______________________

2020-1662 ______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2018- 01350. ______________________

Decided: August 27, 2021 ______________________

MATTHEW A. ARGENTI, Wilson, Sonsini, Goodrich & Rosati, PC, Palo Alto, CA, argued for all appellants. Ap- pellants 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 rep- resented by BRITTANY BLUEITT AMADI, Washington, DC; MARK CHRISTOPHER FLEMING, MONICA GREWAL, Boston, MA. Case: 20-1662 Document: 53 Page: 2 Filed: 08/27/2021

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. 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. Uni- versal 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

*Circuit Judge Sharon Prost vacated the position of Chief Judge on May 21, 2021.