`Case 1:20-cv-00907-CFC Document 18 Filed 12/07/20 Page 1 of 4 PageID #: 446
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`APPLE INC.,
`
`Plaintiff,
`
`vs.
`
`Civil Action No. 20-907-CFC
`
`UNIVERSAL SECURE REGISTRY, LLC,
`
`Defendant.
`
`
`STIPULATION ANDWER STAYING
`
`LITIGATION PENDING A DECISION
`
`BY THE FEDERAL CIRCUIT IN RELATED CASE
`
`WHEREAS, on May 21, 2017, Universal Secure Registry, LLC (“USR”) filed
`
`a complaint for patent infiingement against Apple Inc. (“Apple”), Visa Inc., and Visa
`
`USA. Inc. (collectively, “Visa”) styled Universal Secure Registry LLC v. Apple
`
`Inc., et al., Case No. 17—585-CFC-SRF (“17-585 Case”);
`
`WHEREAS, USR asserted four patents in the 17-785 Case: US. Patent Nos.
`
`8,577,813 (“”813 patent”), 8,856,539 (“’539 patent”), 9,100,826 (“’826 patent”), and
`
`9,530,137 (“’ 137 patent”) (collectively, the “17-585 Case Patents”);
`
`WHEREAS, on August 25, 2017, Apple and Visa moved to dismiss the 17-
`
`585 Case under Fed. R. Civ. P. 12(b)(6), see 17—585 Case, D.I. 16;
`
`
`
`Case 1:20-cv-00907-CFC Document 18 Filed 12/07/20 Page 2 of 4 PageID #: 447
`Case 1:20-cv-00907-CFC Document 18 Filed 12/07/20 Page 2 of 4 PageID #: 447
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`WHEREAS, Apple and Visa’s motion argued that the 17-585 Case Patents
`
`were invalid for failure to claim patent-eligible subject matter under 35 U.S.C.
`
`§ 101;
`
`WHEREAS, on June 30, 2020, the Court issued a Memorandum Opinion and
`
`accompanying Order granting Apple and Visa’s motion to dismiss the complaint in
`
`the 17-585 Case under Fed. R. Civ. P. 12(b)(6) (“101 Decision,” 17-585 Case, D.I.
`
`168);
`
`WHEREAS, the 101 Decision ruled that the 17-585 Case Patents are invalid
`
`under 35 U.S.C. § 101, dismissed the complaint in the 17-585 Case with prejudice,
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`and directed the case to be closed;
`
`WHEREAS, on July 17, 2020, USR noticed its appeal of the Court’s 101
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`Decision to the Federal Circuit (“17-585 Appeal,” 17-585 Case, D.I. 170);
`
`WHEREAS, on July 2, 2020, Apple filed a declaratory judgment complaint
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`for non-infringement against USR, which requested the Court find that Apple does
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`not infringe US. Patent Nos. 9,947,000 (“’000 patent”), 9,928,495 (“’495 patent”),
`
`and 10,163,103 (“’103 paten ”), see DJ. 1; and
`
`WHEREAS, on December 4, 2020, Apple filed an amended complaint for
`
`non-infringement against USR, which requested the Court find that Apple does not
`
`infringe the ’ 103 patent;
`
`
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`Case 1:20-cv-00907-CFC Document 18 Filed 12/07/20 Page 3 of 4 PagelD #: 448
`Case 1:20-cv-00907-CFC Document 18 Filed 12/07/20 Page 3 of 4 PageID #: 448
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`NOW, THEREFORE, IT IS HEREBY STIPULATED AND AGREED, by
`
`the parties, and subject to the approval of the Court, as follows:
`
`1. This case is stayed until the issuance of the mandate from the Federal
`
`Circuit with respect to the 17-5 85 Appeal.
`
`2. If the Federal Circuit affirms the 101 Decision or if USR withdraws its
`
`appeal to the Federal Circuit of the 101 Decision with respect to any of
`
`the 17-585 Case Patents, then, based on this Court’s reasoning in the
`
`101 Decision, the ’103 patent would be invalid for failure to claim
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`patent-eligible subject matter under 35 U.S.C. § 101. If such occurs,
`
`then, within 7 days of the mandate issuing or 7 days of USR
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`withdrawing its appeal with respect to any of the 17-5 85 Case Patents,
`
`the parties will submit a proposed order to the Court declaring the ’ 103
`
`patent is invalid for failure to claim patent-eligible subject matter under
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`35 U.S.C. § 101. The proposed order will include a statement that USR
`
`waives any right to appeal the order.
`
`
`
`Case 1:20-cv-00907-CFC Document 18 Filed 12/07/20 Page 4 of 4 PageID #: 449
`Case 1:20-cv-00907-CFC Document 18 Filed 12/07/20 Page 4 of 4 PageID #: 449
`
`RICHARDS, LAYTON & FINGER, P.A.:
`
`MORRIS, NICHOLS, ARSHT & TUNNELL
`LLP
`
`/s/ Jason J. Rawnsley
`Fredrick L. Cottrell, III (#2555)
`Jason J. Rawnsley (#5379)
`920 North King Street
`Wilmington, DE 19801
`(302) 651-7700
`cottrell@rlf.com
`rawnsley@rlf.com
`
`Attorneys for Plaintifi’Apple Inc.
`
`December 4, 2020
`
`/s/ Jeremy A. Tigan
`Jack B. Blumenfeld (#1014)
`Jeremy A. Tigan (#5239)
`1201 North Market Street
`PO. Box 1347
`Wilmington, DE 19899-1347
`(302) 658-9200
`jblumenfeld@mnat.com
`jtigan@mnat.com
`
`Attorneysfor Defendant Universal
`Secure Registry, LLC
`
`so ORDERED this fl“day of Dated-{f ,2020
`
`United States District CofiJudge
`
`
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