`571-272-7822
`
`
`
`
`
`
`Paper 51
`Entered: June 1, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`VISA INC., and VISA U.S.A. INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-008131
`Patent 9,100,826 B2
`____________
`
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`
`
`TERMINATION
`Dismissal on Remand
`35 U.S.C. § 144; 37 C.F.R. § 42.72
`
`
`1 Visa Inc. and Visa U.S.A. Inc., which filed a petition in IPR2019-00176,
`have been joined as parties to this proceeding.
`
`
`
`IPR2018-00813
`Patent 9,100,826 B2
`
`
`I. BACKGROUND
`Apple Inc. filed a Petition (Paper 3) requesting an inter partes review
`of claims 1, 2, 7, 8, 10, 11, 14, 15, 21, 22, 24, 26, 27, 30, 31, and 34 of U.S.
`Patent No. 9,100,826 B2 (Ex. 1101, “the ’826 patent”). After institution of
`trial, Visa Inc. and Visa U.S.A. Inc. filed a petition and a Motion for Joinder
`to this proceeding. Case IPR2019-00176, Papers 2, 3. We granted the
`Motion for Joinder, and IPR2019-00176 was joined with this proceeding and
`dismissed. Paper 33, 5–6. Consequently, Apple Inc., Visa Inc., and Visa
`U.S.A. Inc. (collectively, “Petitioner”) are joined in this proceeding.
`The parties filed various papers after institution of trial. Of note here,
`Universal Secure Registry, LLC (“Patent Owner”) Patent Owner filed a
`Conditional Motion to Amend (Paper 19, “Mot. Amend”). In its Conditional
`Motion to Amend, Patent Owner requested that we substitute claims 1–20
`and 30–35 of the ’826 patent with proposed claims 36–61 “should any of
`claims 1, 2, 7, 8, 10, 11, 14, 15, 21, 22, 24, 26, 27, 30, 31, and 34 be found
`unpatentable.” Mot. Amend 1.
`On October 8, 2019, the Board issued a Final Written Decision in this
`proceeding. Paper 46; see also Paper 47 (errata). In the Final Written
`Decision, we determined that claims 1, 2, 10, 11, 15, 21, 22, 24, 27, 30, and
`31 of the ’826 patent had been shown to be unpatentable, but that claims 7,
`8, 14, 26, and 34 had not been shown to be unpatentable. Paper 47, 2.
`Regarding the Conditional Motion to Amend, we granted the Motion with
`respect to substitute claim 50, denied the Motion with respect to substitute
`claims 36, 37, 45, 46, 56, and 57, and did not consider substitute claims 42,
`43, 49, and 60. Paper 46, 2.
`
`
`
`2
`
`
`
`IPR2018-00813
`Patent 9,100,826 B2
`
`
`On appeal, the U.S. Court of Appeals for the Federal Circuit
`determined that, because claims 1–35 of the ’826 patent were deemed
`ineligible under 35 U.S.C. § 101 in Universal Secure Registry LLC v. Apple
`Inc., 10 F.4th 1342 (Fed. Cir. 2021), the appeal of the overlapping claims in
`this proceeding was rendered moot. Apple Inc. v. Universal Secure Registry,
`LLC, 857 F. App’x 658 (Fed. Cir. 2021) (citing Apple Inc. v. Voip-Pal.com,
`Inc., 976 F.3d 1316, 1321 (Fed. Cir. 2020)). Thus, the Court vacated our
`Final Written Decision and instructed us to dismiss Apple’s petition as to the
`overlapping claims. Id.
`The Court further concluded that substitute claim 50 also is ineligible
`under 35 U.S.C. § 101 and reversed our determination as to substitute claim
`50. Id.
`
`II. ANALYSIS
`As directed by the Federal Circuit, we dismiss the Petition in
`IPR2018-00813. 37 C.F.R. § 42.72.
`
`III. ORDER
`
`It is hereby:
`ORDERED that the Petition in IPR2018-00813 is dismissed.
`
`
`
`3
`
`
`
`IPR2018-00813
`Patent 9,100,826 B2
`
`PETITIONER:
`Monica Grewal
`Benjamin Fernandez
`Kelvin Chan
`Mark Selwyn
`WILMER CUTLER PICKERING HALE AND DORR LLP
`monica.grewal@wilmerhale.com
`ben.fernandez@wilmerhale.com
`kelvin.chan@wilmerhale.com
`mark.selwyn@wilmerhale.com
`
`Matthew Argenti
`Michael Rosato
`WILSON SONSINI GOODRICH & ROSATI
`margenti@wsgr.com
`mrosato@wsgr.com
`
`
`PATENT OWNER:
`
`James Glass
`Tigran Guledjian
`Christopher Mathews
`Nima Hefazi
`Richard Lowry
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`jimglass@quinnemanuel.com
`tigranguledjian@quinnemanuel.com
`chrismathews@quinnemanuel.com
`nimahefazi@quinnemanuel.com
`
`
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
