Federal Express Corporation v. Qualcomm Incorporated

Federal Express Corporation, a global transportation and logistics operating company, was the patent owner in this dispute, while Qualcomm Incorporated, a major operating company known for its semiconductor products and extensive patent licensing in wireless technology, initiated the challenge. The case centered around U.S. Patent No. 8,766,797, titled "Sensor Based Logistics System," which describes systems and methods for tracking shipments using sensors that collect location and environmental data and transmit it to a tracking center, allowing for customized access and control over shipment information.

The procedural background originates from an inter partes review (IPR2022-00585) filed by Qualcomm against Federal Express's patent at the Patent Trial and Appeal Board (PTAB). This IPR was notably filed on the statutory deadline for IPRs after Federal Express had sued Roambee Corporation (now Decklar) for infringing six patents, including the '797 patent, in the District of Delaware. Qualcomm, though not a defendant in the underlying infringement suit, did not identify Roambee as a real party in interest in its IPR petition, leading Federal Express to challenge the institution of the IPR. The PTAB, however, instituted the review on October 11, 2022, and subsequently denied Federal Express's motion to terminate, eventually issuing a final written decision on October 6, 2023, finding all challenged claims of the '797 patent unpatentable as obvious.

Federal Express appealed the PTAB's decisions to the U.S. Court of Appeals for the Federal Circuit (CAFC), case number 24-1236. On April 29, 2026, the CAFC declined to review the PTAB's institution decision regarding the real party in interest issue, citing 35 U.S.C. § 314(d) which bars appeals of institution decisions. However, the Federal Circuit vacated the PTAB's obviousness determination concerning the challenged claims and remanded the case for further proceedings consistent with its opinion, giving Federal Express another opportunity to defend its patent's validity at the PTAB. This case is particularly notable for its intersection of IPR practice with ongoing district court litigation, highlighting the strategic use of IPRs by third parties, and for the Federal Circuit's reaffirmation of the unreviewability of PTAB institution decisions, including those pertaining to real party in interest issues.

The case Federal Express Corporation v. Qualcomm Incorporated (CAFC Case No. 24-1236) is an appeal from an inter partes review (IPR) decision by the Patent Trial and Appeal Board (PTAB) concerning U.S. Patent No. 8,766,797, not an initial patent infringement litigation in a district court. Federal Express (FedEx) owned the patent, titled "Sensor Based Logistics System," which describes systems for providing access to shipment information from sensors.

Here are the key legal developments and outcome:

1. Related District Court Litigation & PTAB IPR Proceedings (Pre-Appeal):

• February 2021: FedEx Corporate Services, Inc. filed a patent infringement complaint against Roambee Corporation in the U.S. District Court for the District of Delaware, asserting six patents, including the '797 patent.
• IPR Petition Filing: On the statutory deadline for Roambee to file its own IPR petition (one year from being served with the complaint), Qualcomm Incorporated, a non-party to the district court litigation, filed IPR petitions challenging four of the six patents asserted by FedEx against Roambee, including the '797 patent. Qualcomm identified the Roambee litigation as a related matter but did not list Roambee as a real party in interest in its petition.
• Opposition to Institution: FedEx opposed the institution of the IPR, arguing that Qualcomm's failure to identify all real parties in interest (specifically Roambee) precluded the PTAB from considering the petition under 35 U.S.C. § 312(a)(2).
• IPR Institution: The PTAB disagreed with FedEx's argument and instituted the IPR for U.S. Patent No. 8,766,797 on October 11, 2022. The IPR case number for patent 8,766,797 was IPR2022-00585.
• Motion to Terminate: After additional discovery, FedEx moved to terminate the IPR proceedings, reiterating its real-party-in-interest argument. The PTAB denied this motion, stating it did not need to determine the real party in interest issue if it wasn't necessary to resolve the proceeding, especially since Qualcomm's petition was filed within the time bar for Roambee.
• PTAB Final Written Decision: The PTAB issued a final written decision, finding all challenged claims of the '797 patent unpatentable as obvious over the asserted prior art. The decision was based on a combination of two prior art references, Lau and Buford, and the Board mistakenly believed FedEx had not contested one of the obviousness grounds.

2. Federal Circuit Appeal (Case No. 24-1236):

• Appeal Filing: Federal Express appealed the PTAB's decisions to the U.S. Court of Appeals for the Federal Circuit (CAFC), challenging both the PTAB's refusal to consider the real-party-in-interest issue and its obviousness determination.
• USPTO Intervention & Change in Stance: The Director of the USPTO, John A. Squires (confirmed in September 2025), intervened in the appeal. While initially defending the PTAB's approach to the real-party-in-interest issue, the USPTO later withdrew its defense on those grounds, adopting a stricter approach to RPI questions. However, the USPTO maintained that FedEx's challenges related to RPI were barred from appellate review under 35 U.S.C. § 314(d).
• Oral Argument: Oral arguments were held on November 4, 2025.
• CAFC Decision and Outcome (April 29, 2026): The Federal Circuit issued its precedential decision on April 29, 2026.
  • Real-Party-in-Interest Issue: The CAFC declined to review FedEx's challenge to the PTAB's decision denying the request to terminate the IPR proceedings based on the real-party-in-interest issue. The court held that such challenges, being "closely tied" to the institution decision, are barred from judicial review by 35 U.S.C. § 314(d), which states that the determination to institute an IPR is final and nonappealable.
  • Obviousness Determination: The CAFC vacated the PTAB's obviousness determination as to claims 6, 17, and 28 of the '797 patent. The court found that the PTAB had erred by concluding that FedEx had not contested Qualcomm's showing that these claims were unpatentable as obvious based on the combination of Lau and Buford. Both parties agreed that FedEx had indeed contested this ground.
  • Remand: The case was remanded to the PTAB for further proceedings consistent with the CAFC's opinion, specifically for the Board to properly consider the parties' arguments regarding the patentability of claims 6, 17, and 28.

Federal Express Corporation, as the appellant in this Federal Circuit appeal (Case No. 24-1236), was represented by the following counsel:

Lead Counsel:

• Joseph Michael Schaffner
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Office Location: Reston, VA
  • Note: Schaffner argued for Federal Express Corporation before the Federal Circuit. Finnegan has previously represented FedEx in successful patent challenges before the PTAB.

Also Represented by (Of Counsel / Supporting Counsel):

• Christopher B. Anderson
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Office Location: (Likely a Finnegan office, but specific location not listed in this source)
• Jeffrey A. Berkowitz
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Office Location: (Likely a Finnegan office, but specific location not listed in this source)
• Luke Hampton Macdonald
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Office Location: (Likely a Finnegan office, but specific location not listed in this source)
• Daniel C. Tucker
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Office Location: (Likely a Finnegan office, but specific location not listed in this source)
• Michael Vincent Young, Sr.
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Office Location: (Likely a Finnegan office, but specific location not listed in this source)

Qualcomm Incorporated, as the appellee in this Federal Circuit appeal (Case No. 24-1236), was represented by the following counsel from Norton Rose Fulbright US LLP:

Lead Counsel:

• Jonathan S. Franklin
  • Firm: Norton Rose Fulbright US LLP
  • Office Location: Washington, D.C.
  • Note: Franklin argued for Qualcomm Incorporated before the Federal Circuit. He has extensive experience in patent litigation and appeals.

Also Represented by (Of Counsel / Supporting Counsel):

• Stephanie Debrow
  • Firm: Norton Rose Fulbright US LLP
  • Office Location: Austin, TX
  • Note: Debrow also argued for Qualcomm in a related appeal (Case No. 24-1235) on the same day.
• Mark T. Garrett
  • Firm: Norton Rose Fulbright US LLP
  • Office Location: Austin, TX
• Eagle Howard Robinson
  • Firm: Norton Rose Fulbright US LLP
  • Office Location: Austin, TX
• Daniel Leventhal
  • Firm: Norton Rose Fulbright US LLP
  • Office Location: Houston, TX
• Richard Stephen Zembek
  • Firm: Norton Rose Fulbright US LLP
  • Office Location: Houston, TX