EXHIBIT 2

Case 6:20-cv-00269-ADA Document 25-3 Filed 07/31/20 Page 1 of 25
Nos. 18-1456, -1457 

IN THE UNITED STATES COURT OF APPEALS 

FOR THE FEDERAL CIRCUIT 

APPLE INC., 

 Appellant, 

v. 

VOIP-PAL.COM, INC., 

 Appellee, 

ANDREI IANCU, Director, U.S. Patent and Trademark Office, 

Intervenor. 

On Appeal from the United States Patent and Trademark Office, 

Patent Trial and Appeal Board, in Case Nos. IPR2016-01198, IPR2016-01201 

SUGGESTION OF MOOTNESS 

Adam P. Seitz 

Eric A. Buresh 

ERISE IP, P.A. 

7015 College Blvd., Suite 700 

Overland Park, KS 66211 

Phone: 913.777.5600 

Paul R. Hart 

ERISE IP, P.A. 

5600 Greenwood Plaza Blvd., Suite 200 

Greenwood Village, CO 80111 

Phone: 913.777.5600

Mark A. Perry 

 Principal Attorney

Brian M. Buroker 

Andrew J. Wilhelm

GIBSON, DUNN & CRUTCHER LLP 

1050 Connecticut Avenue, N.W. 

Washington, D.C. 20036-5306 

Phone: 202.887.3667 

Ryan Iwahashi 

GIBSON, DUNN & CRUTCHER LLP 

1881 Page Mill Road 

Palo Alto, CA 94304-1211 

Phone: 650.849.5300 

Counsel for Apple Inc. 

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CERTIFICATE OF INTEREST

Counsel for appellee Apple Inc. certifies the following: 

1. Full Name of Party Represented by me: 

Apple Inc. 

2. Name of Real Party in interest (Please only include any real party in 

interest NOT identified in Question 3) represented by me is: 

N/A 

3. Parent corporations and publicly held companies that own 10% or more 

of stock in the party: 

N/A 

4. The names of all law firms and the partners or associates that appeared 

for the party or amicus now represented by me in the trial court or agency or are 

expected to appear in this court (and who have not or will not enter an appearance 

in this case) are: 

Erise IP, P.A.: Adam P. Seitz, Eric A. Buresh, Paul R. Hart 

 5. The title and number of any case known to counsel to be pending in this 

or any other court or agency that will directly affect or be directly affected by this 

court’s decision in the pending appeal are: 

Voip-Pal.com, Inc. v. Twitter, Inc., No. 19-1808 (Fed. Cir.); 

Voip-Pal.com, Inc. v. Cellco Partnership, No. 19-1812 (Fed. Cir.); 

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Voip-Pal.com, Inc. v. AT&T Corp., No. 19-1813 (Fed. Cir.); 

Voip-Pal.com, Inc. v. Apple Inc., No. 19-1814 (Fed. Cir.); 

Apple Inc. v. Voip-Pal.com, Inc., No. 18-1456 (Fed. Cir.);

Apple Inc. v. Voip-Pal.com, Inc., No. 18-1457 (Fed. Cir.); 

Voip-Pal.com, Inc. v. Amazon.com, Inc., No. 5:18-cv-7020 (N.D. Cal.); 

Voip-Pal.com, Inc. v. Apple Inc., No. 5:18-cv-6216 (N.D. Cal.); 

Apple Inc. v. Voip-Pal.com, Inc., No. IPR2016-00198 (P.T.A.B.); 

Apple Inc. v. Voip-Pal.com, Inc., No. IPR2016-01201 (P.T.A.B.). 

Dated: June 4, 2020 /s/ Mark A. Perry 

 Mark A. Perry 

 

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TABLE OF CONTENTS 

INTRODUCTION ..................................................................................................... 1

BACKGROUND ....................................................................................................... 2

ARGUMENT ............................................................................................................. 6

I. The Court Lacks Article III Jurisdiction To Decide 

Obviousness ........................................................................................... 7

A. As To The Overlapping Claims, The Question Of 

Obviousness Is Clearly Moot ...................................................... 9

B. The Question Of Obviousness As To The NonOverlapping Claims Also Appears To Be Moot ....................... 11

II. Lack Of Jurisdiction To Decide Obviousness Requires 

Vacatur Of The FWDs And Related Sanctions Orders ....................... 14

CONCLUSION ........................................................................................................ 16

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TABLE OF AUTHORITIES 

Page(s) 

Cases 

A.L. Mechling Barge Lines, Inc. v. United States, 

368 U.S. 324 (1961) ............................................................................................ 14 

Bd. of License Comm’rs of Town of Tiverton v. Pastore, 

469 U.S. 238 (1985) .............................................................................................. 1 

Berkheimer v. HP Inc., 

890 F.3d 1369 (Fed. Cir. 2018) ............................................................................ 9 

Bilski v. Kappos, 

561 U.S. 593 (2010) .............................................................................................. 9 

Calderon v. Moore, 

518 U.S. 149 (1996) .............................................................................................. 7 

CyberSource Corp. v. Retail Decisions, Inc., 

620 F. Supp. 2d 1068 (N.D. Cal. 2009) .............................................................. 10 

Exergen Corp. v. Thermomedics, Inc., 

132 F. Supp. 3d 200 (D. Mass. 2015) ................................................................. 10 

FEC v. Wis. Right To Life, Inc., 

551 U.S. 449 (2007) ........................................................................................ 7, 16 

In re Katz Interactive Call Processing Patent Litig., 

639 F.3d 1303 (Fed. Cir. 2011) .......................................................................... 11 

Lewis v. Cont’l Bank Corp., 

494 U.S. 472 (1990) .............................................................................................. 7 

Momenta Pharm., Inc. v. Bristol-Myers Squibb Co., 

915 F.3d 764 (Fed. Cir. 2019) .......................................................................... 7, 9 

Preiser v. Newkirk, 

422 U.S. 395 (1975) ............................................................................................ 10 

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TABLE OF AUTHORITIES 

(continued)

Page(s) 

v 

Return Mail, Inc. v. U.S. Postal Serv., 

868 F.3d 1350 (Fed. Cir. 2017) ............................................................................ 9 

SimpleAir, Inc. v. Google LLC, 

884 F.3d 1160 (Fed. Cir. 2018) .......................................................................... 11 

Smartflash LLC v. Apple Inc., 

680 F. App’x 977 (Fed. Cir. 2017) ..................................................................... 10 

Stone v. FDIC, 

179 F.3d 1368 (Fed. Cir. 1999) ............................................................................ 4 

Synopsys, Inc. v. Lee, 

812 F.3d 1076 (Fed. Cir. 2016) ...................................................................... 7, 14 

United States v. Munsingwear, Inc., 

340 U.S. 36 (1950) .......................................................................................... 2, 14 

Valspar Sourcing, Inc. v. PPG Indus., Inc., 

780 F. App’x 917 (Fed. Cir. 2019) ............................................................... 14, 15 

Voip-Pal.com, Inc. v. Apple Inc., 

375 F. Supp. 3d 1110 (N.D. Cal. 2019) ............................................................ 1, 5 

Voip-Pal.com, Inc. v. Twitter, Inc., 

798 F. App’x 644 (Fed. Cir. 2020) ............................................................... 5, 6, 9 

Regulations 

37 C.F.R. § 42.12(b) .................................................................................................. 4 

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INTRODUCTION 

A recent decision in a related appeal deprives the Court of Article III 

jurisdiction to decide these consolidated appeals, which are scheduled for argument 

on July 8, 2020. See Bd. of License Comm’rs of Town of Tiverton v. Pastore, 469 

U.S. 238, 240 (1985) (“When a development . . . could have the effect of depriving 

the Court of jurisdiction due to the absence of a continuing case or controversy, that 

development should be called to the attention of the Court without delay.”) 

(emphasis omitted). 

In these appeals, Apple Inc. challenges the Patent Trial and Appeal Board’s 

final written decisions concluding that certain claims of two patents owned by VoipPal.com, Inc. are not invalid as obvious, as well as related orders regarding sanctions 

for Voip-Pal’s misconduct during the Board proceedings. Separately, this Court 

recently affirmed a district court’s determination that representative claims of the 

same patents are ineligible for patenting under 35 U.S.C. § 101. See Voip-Pal.com, 

Inc. v. Apple Inc., 375 F. Supp. 3d 1110 (N.D. Cal. 2019), aff’d sub nom. VoipPal.com, Inc. v. Twitter, Inc., 798 F. App’x 644 (Fed. Cir. 2020). Voip-Pal’s petition 

for rehearing was denied on May 18, 2020. 

As Apple predicted in its merits briefing, this Court’s affirmance of the 

ineligibility determination in the parallel litigation renders moot these appeals from 

the PTAB’s patentability and sanctions determinations. See BB44 n.4; YB1 n.1. 

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Because the claims asserted by Voip-Pal against Apple are not drawn to patenteligible subject matter, deciding whether the purported invention is also invalid as 

obvious would require this Court to issue an advisory opinion in derogation of 

Article III. Accordingly, the final written decisions and associated sanctions orders 

should be vacated because appellate review has been precluded by intervening 

events. See United States v. Munsingwear, Inc., 340 U.S. 36 (1950). 

BACKGROUND 

Voip-Pal owns U.S. Patent Nos. 8,542,815 and 9,179,005 (“the Asserted 

Patents”), both of which are titled “Producing Routing Messages For Voice Over IP 

Communications.” The ’005 patent issued from a continuation of the application 

that issued as the ’815 patent, and both patents share a common specification. The 

Asserted Patents describe the field of the invention as “voice over IP 

communications and methods and apparatus for routing and billing” (Appx124 at 

1:12–13), and the purported invention involves routing communications between 

two different types of networks—i.e., public and private networks—based on 

information about the participants. Id. at 1:15–21. 

In February 2016, Voip-Pal sued Apple in Nevada district court for allegedly 

infringing 34 claims of the Asserted Patents. Voip-Pal.com, Inc. v. Apple Inc., 

No. 2:16-cv-260 (D. Nev.). In June 2016, Apple petitioned for inter partes review 

of those claims, and the Nevada litigation was stayed. 

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In its inter partes review (“IPR”) petition, Apple argued that all claims 

asserted by Voip-Pal in litigation were unpatentable under 35 U.S.C. § 103(a) as 

obvious over the combination of two prior-art references: U.S. Patent 

Nos. 7,486,684 B2 (“Chu ’684”) and 8,036,366 B2 (“Chu ’366”). The Board 

instituted IPR, finding that it was more likely than not that all challenged claims 

were unpatentable as obvious. Appx274–338. The Board also determined that claim 

1 of the ’005 patent and claim 1 of the ’815 patent were “illustrative” of the 

challenged claims. Appx6, Appx35. 

In November 2017, a different panel of the Board issued final written 

decisions (“FWDs”) finding that Apple had not met its burden of proving that the 

challenged claims are unpatentable. Appx2, Appx31. First, the Board concluded 

that a skilled artisan would not have “regarded Chu ’684 as deficient and ripe for 

improvement.” Appx20. Second, the Board concluded that, even if Chu ’684 were 

deficient, a skilled artisan would not combine it with Chu ’366—invoking a stepordering theory that the previous panel had rejected and even Voip-Pal had 

abandoned by that point in the proceedings. Appx21–24. 

After the Board issued its FWDs, Apple discovered that Voip-Pal had sent at 

least six ex parte letters to the Board and other government officials accusing the 

Board of bias and seeking judgment in Voip-Pal’s favor. Appx1610. As an 

authorized sanction for this misconduct, Apple sought entry of judgment. 

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Appx1616; see 37 C.F.R. § 42.12(b). Apple moved in the alternative for new,

constitutionally correct proceedings pursuant to this Court’s decision in Stone v. 

FDIC, 179 F.3d 1368 (Fed. Cir. 1999). Appx1616.

In December 2018, the Board issued an order finding that Voip-Pal had 

engaged in “troublesome,” sanctionable conduct. Appx65, Appx68. But instead of 

granting Apple its requested sanction (or any other sanction authorized by 

regulation), the Board allowed Apple to petition for rehearing of the FWDs. 

Appx73–74. A third panel of the Board, applying deferential review, then 

determined that the panel that entered the FWDs had not “misapprehended or 

overlooked” any matters. Appx81, Appx85, Appx86. 

Apple appealed the Board’s FWDs and associated sanctions-related orders, 

and the Patent and Trademark Office (“PTO”) intervened in support of the Board. 

These consolidated appeals are now fully briefed and are scheduled for oral 

argument on July 8, 2020. 

Following the FWDs, the parties agreed that the stay of the Nevada litigation 

regarding the Asserted Patents should be lifted. Voip-Pal.com, Inc. v. Apple Inc., 

No. 2:16-cv-260, Dkt. 37 (D. Nev. Jan. 26, 2018). In October 2018, that litigation 

was transferred to the Northern District of California and related to three other cases 

where Voip-Pal had filed similar complaints alleging infringement of the Asserted 

Patents. Voip-Pal.com, Inc. v. Apple Inc., No. 5:18-cv-6217 (N.D. Cal.); see VoipCase 6:20-cv-00269-ADA Document 25-3 Filed 07/31/20 Page 11 of 25 Case: 18-1456 Document: 79 Page: 10 Filed: 06/08/2020
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Pal.com, Inc. v. Twitter, Inc., 5:18-cv-4523 (N.D. Cal.); Voip-Pal.com, Inc. 

v. Verizon Wireless Servs., LLC, No. 5:18-cv-6054 (N.D. Cal.); and Voip-Pal.com, 

Inc. v. AT&T Corp., No. 5:18-cv-6177 (N.D. Cal.). 

In January 2019, after Voip-Pal had narrowed to 20 the claims asserted against 

all parties in the district court litigation (No. 5:18-cv-6217, Dkt. 68), Apple and the 

other defendants filed a consolidated motion to dismiss, arguing that the asserted 

claims were not eligible for patenting under 35 U.S.C. § 101. In March 2019, the 

district court identified two representative claims (claim 1 of the ’815 patent and 

claim 74 of the ’005 patent) and granted the motion to dismiss because it found each 

claim to be patent-ineligible. See Voip-Pal.com, Inc. v. Apple Inc., 375 F. Supp. 3d 

1110, 1118 (N.D. Cal. 2019). In March 2020, this Court affirmed the district court’s 

judgment that the asserted claims are patent-ineligible. Voip-Pal.com, Inc. 

v. Twitter, Inc., 798 F. App’x 644 (Fed. Cir. 2020). Voip-Pal’s rehearing request 

was denied on May 18, 2020. 

The following timeline shows significant events across the Board and district 

court proceedings: 

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ARGUMENT 

In its principal brief in these consolidated appeals, Apple put the Court and 

Voip-Pal on notice of the potential mootness issue presented by the then-pending 

parallel appeal involving patent-eligibility: “If . . . the Court affirms the district 

court’s ineligibility decision in the related Twitter appeal, [then] . . . this appeal 

would become moot.” BB44 n.4. Voip-Pal did not dispute this point in its 

responsive brief. Nor did the PTO, which filed a brief as an intervenor. Apple 

pointed this out in its reply brief: “Neither Voip-Pal nor the government disputes 

that this appeal would become moot if the Court affirms the district court’s 

determination that the claims at issue are patent-ineligible in [Twitter].” YB1 n.1. 

The course of events foreseen in Apple’s merits briefing has now come to 

pass: This Court affirmed the district court’s determination that the representative 

claims are ineligible (Twitter, 798 F. App’x 644), rendering this appeal moot. 

Because Article III precludes appellate review, the Board’s decisions and orders 

should be vacated. 

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I. The Court Lacks Article III Jurisdiction To Decide Obviousness 

“Under Article III of the Constitution, federal courts may adjudicate only 

actual, ongoing cases or controversies.” Lewis v. Cont’l Bank Corp., 494 U.S. 472, 

477 (1990). “It is well settled that the ‘case-or-controversy requirement,’ including 

mootness, ‘subsists through all stages of federal judicial proceedings, trial and 

appellate.’” Synopsys, Inc. v. Lee, 812 F.3d 1076, 1078 (mem.) (Fed. Cir. 2016) 

(quoting FEC v. Wis. Right To Life, Inc., 551 U.S. 449, 461 (2007)). The Court 

should dismiss an appeal “when, by virtue of an intervening event, [it] cannot grant 

‘any effectual relief whatever’ in favor of the appellant” (id.), because “federal 

courts may not give opinions upon moot questions or abstract propositions” 

(Calderon v. Moore, 518 U.S. 149, 150 (1996) (per curiam) (quotation marks 

omitted)); see also Momenta Pharm., Inc. v. Bristol-Myers Squibb Co., 915 F.3d 

764, 770 (Fed. Cir. 2019) (“[W]hen the potential for injury has been mooted by 

events, the federal courts are deprived of jurisdiction.”). 

The Board and district court proceedings involved largely but not entirely 

overlapping claims: 

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Board Proceedings 

(Obviousness Under § 103) 

N.D. Cal. Proceedings 

(Ineligibility Under § 101) 

’815 Patent ’005 Patent ’815 Patent ’005 Patent 

1, 7, 27–28, 34, 54, 

72–74, 92–93, 111 

1, 24–26, 49–50, 

73–79, 83–84, 88–

89, 92, 94–96, 98, 

99 

1, 7, 12, 27, 28, 72, 

73, 92, 111 

49, 73, 74, 75, 77, 

78, 83, 84, 94, 96, 

99 

The procedural history explains the minor difference in challenged claims. 

Apple requested (and the Board instituted) IPR on the 34 claims that Voip-Pal 

initially asserted against Apple in the Nevada district court. After the Board ruled 

against Apple in the IPRs and the case was transferred to the Northern District of 

California, that court required Voip-Pal to narrow its asserted claims to 20 as to all 

four defendants. Apple requested (and received) dismissal on the grounds that each 

of the 20 asserted claims was ineligible under Section 101. Every step of the way, 

Apple has challenged every claim asserted against it. 

The question of obviousness is clearly moot as to the 19 “overlapping” claims 

that were actually declared ineligible in the district court litigation and were also 

considered by the Board. The 14 “non-overlapping” claims present a closer 

question; but because Voip-Pal can no longer assert them against Apple in judicial 

proceedings, the obviousness question appears to be moot. Apple addresses both 

categories of claims below. 

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A. As To The Overlapping Claims, The Question Of Obviousness Is 

Clearly Moot 

The following claims were asserted in both the district court litigation and 

before the Board: claims 1, 7, 27, 28, 72, 73, 92, and 111 of the ’815 patent and 

claims 49, 73, 74, 75, 77, 78, 83, 84, 94, 96, and 99 of the ’005 patent. As to these 

overlapping claims, there is no longer a case or controversy for this Court to 

adjudicate regarding obviousness because this Court has affirmed the district court’s 

determination that the representative claims of the Asserted Patents are ineligible for 

patenting under Section 101. Twitter, 798 F. App’x 644. Section 101 presents a 

“‘threshold test’ that typically precedes the novelty or obviousness inquiry.” Return 

Mail, Inc. v. U.S. Postal Serv., 868 F.3d 1350, 1370 (Fed. Cir. 2017) (quoting Bilski 

v. Kappos, 561 U.S. 593, 602 (2010)), rev’d on other grounds, 139 S. Ct. 1853 

(2019); accord Berkheimer v. HP Inc., 890 F.3d 1369, 1378 (mem.) (Fed. Cir. 2018) 

(Reyna, J., dissenting from denial of reh’g en banc) (“The Supreme Court has 

characterized the § 101 patent-eligibility inquiry as a threshold test that precedes the 

requirements described in §§ 102, 103, and 112.”). 

Because this Court has already held that the claims asserted in the district 

court litigation fail at the threshold Section 101 inquiry, it makes no matter whether 

they satisfy the non-obviousness requirement of Section 103. In other words, Apple 

“no longer has the potential for injury, thereby mooting the [obviousness] inquiry.” 

Momenta, 915 F.3d at 770. Courts regularly recognize that dismissal of an 

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infringement suit based on ineligibility grounds moots any overlapping obviousness 

challenge. See, e.g., Smartflash LLC v. Apple Inc., 680 F. App’x 977, 984 (Fed. Cir. 

2017) (holding asserted claims to be ineligible and thus not considering obviousness 

issues on appeal); Exergen Corp. v. Thermomedics, Inc., 132 F. Supp. 3d 200, 201–

02 (D. Mass. 2015) (granting summary judgment on ineligibility and thus “den[ying] 

as moot Defendants’ remaining arguments for invalidity under 35 U.S.C. § 102 

and/or § 103” (emphasis omitted)); CyberSource Corp. v. Retail Decisions, Inc., 620 

F. Supp. 2d 1068, 1080 n.14 (N.D. Cal. 2009) (“Defendant’s motions pertaining to 

novelty and non-obviousness under sections 102 and 103 are mooted by the 

disposition of this motion [regarding ineligibility].”). 

Indeed, any opinion from this Court regarding whether claims adjudicated as 

ineligible also are invalid as obvious would be impermissibly advisory in nature. 

See Preiser v. Newkirk, 422 U.S. 395, 401 (1975) (“[A] federal court has neither the 

power to render advisory opinions nor to decide questions that cannot affect the 

rights of litigants in the case before them.” (internal citation and quotation marks 

omitted)). Having already ruled that the claims asserted in the district court litigation 

are not drawn to eligible subject matter, the Court has no authority under Article III 

to determine whether or not those claims would have been obvious to a person of 

skill in the art at the time of the application. 

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B. The Question Of Obviousness As To The Non-Overlapping Claims 

Also Appears To Be Moot 

As noted above, there is not perfect overlap between the 20 claims asserted 

by Voip-Pal in the district court litigation and the 34 claims on which the Board 

instituted IPR. The following claims were determined to be non-obvious by the 

Board but were not ruled ineligible in the parallel litigation: claims 34, 54, 74, and 

93 of the ’815 patent and claims 1, 24–26, 50, 76, 79, 88–89, 95, and 98 of the ’005 

patent. But Apple faces no liability for infringing those claims because, although 

Voip-Pal initially asserted them in litigation against Apple, Voip-Pal dropped them 

when required by the district court to narrow its set of asserted claims. See In re 

Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1311 (Fed. Cir. 2011) 

(affirming authority of district courts to require patentees to limit asserted claims). 

Basic principles of claim preclusion (res judicata) preclude Voip-Pal from 

accusing Apple of infringing patent claims that it abandoned during the nowconcluded district court litigation, particularly since all the claims are essentially the 

same. See SimpleAir, Inc. v. Google LLC, 884 F.3d 1160, 1166 (Fed. Cir. 2018) 

(reinforcing “transactional approach” to application of claim preclusion to groups of 

related patents). Certainly, Voip-Pal has never argued that the 14 non-overlapping 

claims differ from the 19 overlapping claims in any way that would make a 

difference for patent-eligibility. The question of obviousness as to those claims thus 

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appears to be moot, and Voip-Pal did not argue otherwise in its responsive brief even 

after Apple raised the specter of mootness. 

Moreover, both the Board and the district court identified certain claims as 

representative. With respect to the ’815 patent, both the district court and the Board 

selected claim 1 as representative. As to the ’005 patent, the district court selected 

claim 74 while the Board selected claim 1, but there is no substantive difference 

between these two claims: 

’005 patent claim 1 ’005 patent claim 74 

1. A process for producing a 

routing message for routing 

communications between a caller and a 

callee in a communication system, the 

process comprising: 

using a caller identifier 

associated with the caller to locate a 

caller dialing profile comprising a 

plurality of calling attributes associated 

with the caller; 

when at least one of said calling 

attributes and at least a portion of a 

callee identifier associated with the 

callee meet private network 

classification criteria, producing a 

private network routing message for 

receipt by a call controller, said private 

74. A method of routing 

communications in a packet switched 

network in which a first participant 

identifier is associated with a first 

participant and a second participant 

identifier is associated with a second 

participant in a communication, the 

method comprising: 

after the first participant has 

accessed the packet switched network to 

initiate the communication, using the 

first participant identifier to locate a first 

participant profile comprising a 

plurality of attributes associated with 

the first participant; 

when at least one of the first 

participant attributes and at least a 

portion of the second participant 

identifier meet a first network 

classification criterion, producing a first 

network routing message for receipt by 

a controller, the first network routing 

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network routing message identifying an 

address, on the private network, 

associated with the callee; and 

when at least one of said calling 

attributes and at least a portion of said 

callee identifier meet a public network 

classification criterion, producing a 

public network routing message for 

receipt by the call controller, said public 

network routing message identifying a 

gateway to the public network. 

message identifying an address in a first 

portion of the packet switched network, 

the address being associated with the 

second participant, the first portion 

being controlled by an entity; and 

when at least one of the first 

participant attributes and at least a 

portion of the second participant 

identifier meet a second network 

classification criterion, producing a 

second network routing message for 

receipt by the controller, the second 

network routing message identifying an 

address in a second portion of the packet 

switched network, the second portion 

not controlled by the entity. 

Given this Court’s affirmance of the district court’s conclusion that the 

representative claims are ineligible, the question of obviousness as to all claims—

including the non-overlapping claims—appears to be moot. To avoid mootness, 

Voip-Pal would have to show that there is some material difference between those 

claims and the claims resolved by the Board but not the district court, such that the 

latter could be patentable even though the former have been adjudicated ineligible. 

Apple respectfully submits that Voip-Pal will be unable to establish any such 

difference; if so, then the ineligibility determination moots the question of 

obviousness for all claims asserted by Voip-Pal against Apple at any stage of the 

litigation. 

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II. Lack Of Jurisdiction To Decide Obviousness Requires Vacatur Of The 

FWDs And Related Sanctions Orders 

The Supreme Court’s decision in United States v. Munsingwear, Inc., 340 

U.S. 36 (1950), “set forth the proper protocol for dealing with cases that are mooted 

while on appeal.” Valspar Sourcing, Inc. v. PPG Indus., Inc., 780 F. App’x 917, 

920 (Fed. Cir. 2019). Munsingwear held that “‘the duty of the appellate court’ is to 

‘reverse or vacate the judgment below and remand with a direction to dismiss’ when 

a civil case becomes moot while pending appellate review of the merits.” Id.

(quoting Munsingwear, 340 U.S. at 39–40). 

“The Supreme Court has confirmed that the Munsingwear approach also 

applies to unreviewed administrative orders.” Valspar, 780 F. App’x at 921. In A.L. 

Mechling Barge Lines, Inc. v. United States, 368 U.S. 324, 328–31 (1961), for 

example, the Supreme Court modified the district court’s dismissal to include a 

remand to the agency with instructions to vacate the challenged order where changed 

circumstances deprived the challenged order of any practical effect. “The Supreme 

Court has since repeatedly vacated decisions of appellate courts and given 

instructions for vacatur of the underlying administrative action.” Valspar, 780 F. 

App’x at 921 (collecting cases). 

The propriety of vacatur is clear with respect to the Board’s obviousness 

determinations. See Synopsys, 812 F.3d at 1078 (“Where a party challenges agency 

action alternatively in two separate suits, and a decision in one case resolves the 

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15 

issues presented in the companion case, the companion case becomes moot”). As 

Apple explained in its merits briefing, the Board committed legal errors in its FWDs 

regarding obviousness. Apple is confident that it would prevail on the merits of its 

challenges to those orders, but it is precluded from doing so because this Court lacks 

Article III jurisdiction to decide the question of obviousness. It would be unfair to 

allow the Board’s unchallenged decisions to stand and be cited in the future by VoipPal, other litigants, or the Board itself. 

That is why “Munsingwear and its progeny instruct [courts] to prevent 

appellants from being forced to acquiesce in a judgment that they can no longer 

challenge on the merits,” and “to protect all parties from the collateral effects of a 

case that is mooted before an appellate determination on the merits.” Valspar, 780 

F. App’x at 921. This Court has a “duty” to “use [its] vacatur powers to dispose of 

the whole case, wiping the slate clean for future relitigation of the issues without 

prejudice to either party.” Id. It should exercise that duty here by vacating the 

Board’s FWDs. 

Under the same principles, the Board’s orders regarding the sanctions for 

Voip-Pal’s misconduct should also be vacated. Although the Twitter appeal did not 

involve the sanctions issues presented in this appeal, those issues are inextricably 

intertwined with the obviousness issues. Voip-Pal’s improper submission of several 

ex parte letters to the Board and other officials prejudiced Apple because the Board 

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16 

failed to provide an adequate and authorized sanction for Voip-Pal’s misconduct by 

either rendering judgment in Apple’s favor or ordering a new, constitutionally 

correct proceeding under Stone. Either procedure would result in a de novo 

determination of obviousness. 

If this Court agrees that the question of obviousness is moot, however, Apple 

could receive no “effectual relief” from this Court’s review of the sanctions orders. 

Wisconsin Right To Life, 551 U.S. at 461. Even if the Court were to reverse the 

Board’s sanctions orders, Apple already would have received (in the Twitter appeal) 

the relief it previously sought—a judgment that the asserted claims of the Asserted 

Patents cannot form the basis of an infringement action. On the issue of mootness, 

the sanctions orders rise and fall together with the obviousness issues. 

CONCLUSION 

The Court should vacate the Board’s final written decisions and sanctions 

orders in Case Nos. IPR2016-01198, -01201. 

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17 

Dated: June 4, 2020 Respectfully submitted, 

 /s/ Mark A. Perry 

Adam P. Seitz 

Eric A. Buresh 

ERISE IP, P.A. 

7015 College Blvd., Suite 700 

Overland Park, KS 66211 

Phone: 913.777.5600 

Paul R. Hart 

ERISE IP, P.A. 

5600 Greenwood Plaza Blvd., Suite 200 

Greenwood Village, CO 80111 

Phone: 913.777.5600 

Mark A. Perry 

 Principal Attorney

Brian M. Buroker 

Andrew J. Wilhelm

GIBSON, DUNN & CRUTCHER LLP 

1050 Connecticut Avenue, N.W. 

Washington, DC 20036-5306 

Phone: 202.887.3667 

Ryan Iwahashi 

GIBSON, DUNN & CRUTCHER LLP 

1881 Page Mill Road 

Palo Alto, CA 94304-1211 

Phone: 650.849.5300 

Counsel for Apple Inc. 

Case 6:20-cv-00269-ADA Document 25-3 Filed 07/31/20 Page 24 of 25 Case: 18-1456 Document: 79 Page: 23 Filed: 06/08/2020
CERTIFICATE OF SERVICE 

I hereby certify that on June 4, 2020, I caused the foregoing to be filed with 

the Clerk of the Court and served on all counsel of record via this Court’s CM/ECF 

system. 

Dated: June 4, 2020 /s/ Mark A. Perry 

 Mark A. Perry 

GIBSON, DUNN & CRUTCHER LLP 

1050 Connecticut Avenue, N.W. 

Washington, DC 20036-5306 

Phone: 202.887.3667 

Case 6:20-cv-00269-ADA Document 25-3 Filed 07/31/20 Page 25 of 25 Case: 18-1456 Document: 79 Page: 24 Filed: 06/08/2020