`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`APPLE INC., VISA INC., VISA U.S.A., INC.,
`Appellants
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC,
`Appellee
`______________________
`
`2020-1223, 2020-1243
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2018-
`00813.
`
`______________________
`
`Decided: August 26, 2021
`______________________
`
`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.
` ______________________
`
`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.
`
`
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