Case: 20-1223 Document: 66 Page: 1 Filed: 08/26/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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APPLE INC., VISA INC., VISA U.S.A., INC.,
Appellants
v.
UNIVERSAL SECURE REGISTRY LLC,
Appellee
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2020-1223, 2020-1243
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Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
00813.
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Decided: August 26, 2021
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MARK D. SELWYN, Wilmer Cutler Pickering Hale and
Dorr LLP, Palo Alto, CA, argued for all appellants. Apple
Inc. also represented by MONICA GREWAL, Boston, MA.
MATTHEW A. ARGENTI, Wilson, Sonsini, Goodrich &
Rosati, PC, Palo Alto, CA, for appellants Visa Inc., Visa
U.S.A., Inc. Also represented by MICHAEL T. ROSATO, Se-
attle, WA.
CHRISTOPHER MATHEWS, Quinn Emanuel Urquhart &
Case: 20-1223 Document: 66 Page: 2 Filed: 08/26/2021
2 APPLE INC. v. UNIVERSAL SECURE REGISTRY LLC
Sullivan, LLP, Los Angeles, CA, argued for appellee. Also
represented by TIGRAN GULEDJIAN.
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Before TARANTO, WALLACH, * and STOLL, Circuit Judges.
STOLL, Circuit Judge.
In our opinion in Universal Secure Registry LLC v. Ap-
ple, Inc., No. 20-2044 (Fed. Cir. Aug. 26, 2021), issued con-
comitantly with this opinion, we held claims 1–35 of
U.S.
Patent No. 9,100,826 at issue in this appeal ineligible un-
der
35 U.S.C. § 101. These thirty-five overlapping claims
were at issue in the underlying inter partes review proceed-
ing. Accordingly, for the reasons we explained in Apple Inc.
v. Voip-Pal.com, Inc.,
976 F.3d 1316, 1321 (Fed. Cir. 2020),
the appeal of these overlapping claims is rendered moot in
light of our decision in Universal Secure. We vacate the
Board’s final written decision and remand for the Board to
dismiss Apple’s petition as to the overlapping claims.
This leaves us with proposed substitute claim 50,
which depends from proposed substitute claim 45. The
Board held this claim eligible. We conclude that proposed
substitute claim 50 is ineligible under § 101 for the same
reasons we found representative claim 10 ineligible in Uni-
versal Secure. While proposed substitute claim 50 includes
more specific limitations not found in claim 10, our conclu-
sion under Alice steps one and two remains the same: pro-
posed substitute claim 50 is directed to an abstract idea
and does not recite an inventive concept that transforms
the abstract idea into a patent-eligible invention. Alice
Corp. v. CLS Bank Int’l,
573 U.S. 208, 217–21 (2014).
* Circuit Judge Evan J. Wallach assumed senior status
on May 31, 2021.
Case: 20-1223 Document: 66 Page: 3 Filed: 08/26/2021
APPLE INC. v. UNIVERSAL SECURE REGISTRY LLC 3
Accordingly, we reverse the Board’s eligibility determina-
tion as to substitute claim 50.
REVERSED IN PART, VACATED IN PART, AND
REMANDED
COSTS
Costs to Appellants.
