Memoryweb, LLC v. Samsung Electronics Co., Ltd.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
MEMORYWEB, LLC,
Appellant
v.
SAMSUNG ELECTRONICS CO., LTD.,
Appellee
______________________
2024-1315, 2024-1316
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2022-
00221, IPR2022-00222.
______________________
Decided: December 5, 2025
______________________
J ENNIFER H AYES , Nixon Peabody LLP, Los Angeles,
CA, argued for appellant. Also represented by ANGELO
CHRISTOPHER, D ANIEL J. SCHWARTZ, MATTHEW A. WERBER ,
Chicago, IL.
CHRISTOPHER D RYER , Fish & Richardson PC, Washing-
ton, DC, argued for appellee. Also represented by L AUREN
ANN D EGNAN, I RENE HWANG, MICHAEL J. MCK EON;
T IMOTHY RAWSON, San Diego, CA.
______________________
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MEMORYWEB, LLC v. SAMSUNG ELECTRONICS CO ., LTD. 2
Before T ARANTO, SCHALL , and STARK, Circuit Judges.
T ARANTO, Circuit Judge.
MemoryWeb, LLC, owns U.S. Patent Nos. 10,423,658
and 10,621,228, both relating to methods for organizing
and displaying digital imagery. Samsung Electronics Co.,
Ltd., successfully petitioned the Patent Trial and Appeal
Board (Board) to institute two inter partes reviews (IPRs)
of those patents and the Board held unpatentable various
claims of each. MemoryWeb appeals, but its appeal has
become moot because (a) as to many patent claims pre-
sented in this appeal, it failed to appeal unfavorable pa-
tentability determinations in other IPR decisions that are
now final and (b) as to all other patent claims presented in
this appeal, we today affirm their unpatentability in a com-
panion appeal. We therefore dismiss in part and vacate in
part.
I
In these consolidated appeals, MemoryWeb challenges
the Board’s determination, in two final written decisions in
a pair of Samsung-requested IPRs, that claims 1–13 of the
’658 patent and claims 1–17 of the ’228 patent are un-
patentable for obviousness. See Samsung Electronics Co.
v. MemoryWeb, LLC, No. IPR2022-00221, 2023 WL
5166827 (P.T.A.B. July 31, 2023) (reviewing ’658 patent),
J.A. 105–187; Samsung Electronics Co. v. MemoryWeb,
LLC, No. IPR2022-00222 (P.T.A.B. Dec. 8, 2023) (review-
ing ’228 patent), J.A. 9–104. The Board also held all those
claims unpatentable in final written decisions in a second,
contemporaneous pair of IPRs requested by Apple Inc.
MemoryWeb appealed the decisions in the Apple-requested
IPRs; those appeals (consolidated with others) were heard
by the present panel in tandem with the present appeals;
and in the appeals from the Apple-requested IPRs, we to-
day affirm the unpatentability decisions as to the only
claims of the ’228 and ’658 patents MemoryWeb appealed
there, namely, claim 15 of the ’228 patent and claims 3–4
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MEMORYWEB, LLC v. SAMSUNG ELECTRONICS CO ., LTD. 3
and 8–12 of the ’658 patent. See Apple Inc. v. MemoryWeb,
LLC, No. 23-2361, slip op. 20–32 (Fed. Cir. Dec. 5, 2025)
(Apple v. MemoryWeb).
II
The present appeal has become moot in two ways.
First, MemoryWeb failed to brief any challenge, in Apple
v. MemoryWeb, to the Board’s holdings of unpatentability
concerning claims 1–2, 5–7, and 13 of the ’658 patent and
claims 1–14 and 16–17 of the ’228 patent. Consequently,
those determinations have become final and unreviewable,
depriving MemoryWeb of an interest in reversal of the cor-
responding holdings on review in the present appeals. See
Odetics, Inc. v. Storage Technology Corp., 185 F.3d 1259,
1275 (Fed. Cir. 1999) (holding that a party’s choice not to
appeal an issue “preclud[es] further consideration of the is-
sue”); see also Salazar v. Buono, 559 U.S. 700, 711–12
(2010) (observing that failure to seek review rendered a
judgment “final and unreviewable”) (plurality opinion).
MemoryWeb conceded at the Apple v. MemoryWeb oral ar-
gument that those claims were no longer live. See
No. 23-2361, Oral Arg. 23:54–24:55, https://www.cafc.
uscourts.gov/oral-arguments/23-2361_11032025.mp3.
Second, our affirmance today in Apple of the unpatent-
ability of the ’658 patent’s claims 3–4 and 8–12 and the ’228
patent’s claim 15 moots MemoryWeb’s appeal as to those
claims. See Apple Inc. v. Voip-Pal.com, Inc., 976 F.3d 1316,
1321 (Fed. Cir. 2020) (holding that the separate affirmance
of ineligibility of certain claims rendered the issue of obvi-
ousness of those same claims moot). MemoryWeb agreed
at oral argument that affirmance in Apple would moot the
remaining issues in this appeal. Oral Arg. 0:43–1:25,
https://www.cafc.uscourts.gov/oral-arguments/24-1315_11
032025.mp3.
MemoryWeb also requested that we at least vacate the
relevant portions of the Board’s decisions. Id. The “princi-
pal condition” in determining whether the equitable
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MEMORYWEB, LLC v. SAMSUNG ELECTRONICS CO ., LTD. 4
remedy of vacatur is not warranted when a case becomes
moot “is whether the party seeking relief from the judg-
ment below caused the mootness by voluntary action.” U.S.
Bancorp Mortgage Co. v. Bonner Mall Partnership, 513
U.S. 18, 24 (1994) (discussing United States v. Mun-
singwear, Inc., 340 U.S. 36, 39–41 (1950)). “A party who
seeks review of the merits of an adverse ruling, but is frus-
trated by the vagaries of circumstance, ought not in fair-
ness to be forced to acquiesce in the judgment.” Id. at 25.
But where a party “voluntarily forfeited his legal remedy
by the ordinary process[ ] of appeal” he has “surrender[ed]
his claim to the equitable remedy of vacatur.” Id.; see Mun-
singwear, 340 U.S. at 39.
The circumstances giving rise to mootness in this case
counsel different results under Bancorp for the relevant
claims. The voluntary and unilateral decision by
MemoryWeb to not brief a challenge in Apple relevant to
claims 1–2, 5–7, and 13 of the ’658 patent and claims 1–14
and 16–17 of the ’228 patent makes vacatur inappropri-
ate—to hold otherwise would risk enabling the use of vaca-
tur “as a refined form of collateral attack” warned against
by the Supreme Court in Bancorp. 513 U.S. at 27; see id.
at 25–28; Munsingwear, 340 U.S. at 39. Accordingly, as to
those claims, we do not disturb the Board’s decisions, and
we dismiss this appeal as moot.
For claims 3–4 and 8–12 of the ’658 patent and claim
15 of the ’228 patent, vacatur is warranted. While it is not
quite “happenstance” that MemoryWeb brought and lost a
different appeal, neither does this situation present the
same risk of litigation gamesmanship that can justify devi-
ating from the “established practice” of vacating the deci-
sions under review when an appeal becomes moot. See
Munsingwear, 340 U.S. at 39–40. Further, partial vacatur
is appropriate. The Supreme Court, in a case where a party
sought review of only one aspect of a lower court decision
and the case then became moot, saw fit to vacate “the part
of the . . . opinion that decided the [appealed] issue.” See
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MEMORYWEB, LLC v. SAMSUNG ELECTRONICS CO ., LTD. 5
Camreta v. Greene, 563 U.S. 692, 698 (2011). We have done
similarly, in a case like this one, where our affirmance of
the Board in a different appeal mooted the issue of un-
patentability of several claims. See Voip-Pal, 976 F.3d at
1320–21. In the present case, we see no need, in order to
avoid improper collateral effects (about which MemoryWeb
voiced concern), to go further and order the Board to dis-
miss the petitions insofar as they challenged claims 3–4
and 8–12 of the ’658 patent and claim 15 of the ’228 patent.
III
For the foregoing reasons, we dismiss the appeal from
the Board’s final written decisions as to claims 1–2, 5–7,
and 13 of the ’658 patent and claims 1–14 and 16–17 of the
’228 patent. We vacate the Board’s decisions that claims
3–4 and 8–12 of the ’658 patent and claim 15 of the ’228
patent are unpatentable.
The parties shall bear their own costs.
DISMISSED IN PART AND VACATED IN PART
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