FedEx Corporate Services, Inc. v. Roambee Corporation

This case involves FedEx Corporate Services, Inc., an operating company and a subsidiary of the global transportation, e-commerce, and business services giant FedEx Corporation, as the plaintiff. FedEx Corporate Services provides IT, sales, customer service, and marketing to other FedEx divisions, and is involved in data-driven solutions that optimize operations and digitize supply chains. The defendant is Roambee Corporation, a Silicon Valley-based supply chain visibility and intelligence company that offers real-time tracking and monitoring solutions for goods and assets in transit and in the field, utilizing proprietary sensor, software, and cloud technology. Roambee (which is rebranding to Decklar in 2025) provides AI-powered solutions to over 300 enterprise customers across various industries, including pharmaceutical, food, electronics, and logistics.

The litigation, FedEx Corporate Services, Inc. v. Roambee Corporation, Case No. 1:21-cv-00175, was filed in the U.S. District Court for the District of Delaware and is currently active before Judge Connolly. FedEx asserts infringement of six of its patents, including U.S. Patent No. 8,766,797, titled "Sensor Based Logistics System." This patent describes systems and methods for providing access to information about shipments from sensors, which are typically attached to or included in items like packages or containers. These sensors collect location and environmental data, which is then sent to and received from a tracking center. The '797 patent aims to improve upon prior systems by allowing for greater customization and control over shipment notifications through adjustments to the specificity, frequency, and timing of reporting. The accused products and services from Roambee are their supply chain visibility and intelligence offerings, which include field asset monitoring and shipment tracking.

This case is notable due to the ongoing parallel inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) and the subsequent appeal to the Federal Circuit. A key aspect of the case involves Qualcomm Incorporated, a non-party to the district court litigation, filing IPR petitions challenging four of FedEx's asserted patents, including the '797 patent, on the deadline for Roambee to file its own IPR petitions. The Federal Circuit recently vacated the PTAB's obviousness finding for certain claims of the '797 patent, remanding it for further proceedings, while also affirming that the PTAB's decision not to consider whether Roambee was a real party in interest was unreviewable. This ongoing interplay between the district court and PTAB proceedings, particularly regarding real party in interest issues and claim validity, highlights a significant aspect of patent litigation strategy and judicial review. The District of Delaware is a common venue for patent cases, partly due to a high concentration of corporate incorporations in the state, experienced patent judges, and predictable procedural practices.

Key Legal Developments and Outcome in FedEx Corporate Services, Inc. v. Roambee Corporation

This patent infringement litigation, filed by FedEx Corporate Services, Inc. against Roambee Corporation in the U.S. District Court for the District of Delaware, has seen significant developments, particularly concerning parallel inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) and a subsequent appeal to the Federal Circuit. The case is currently active.

Chronological Legal Developments:

2021

• 2021-02-09 – Complaint Filed: FedEx Corporate Services, Inc. filed a complaint for patent infringement against Roambee Corporation, asserting six patents, including U.S. Patent No. 8,766,797 ("the '797 patent").
• 2021-02-11 – Service of Complaint: FedEx served the complaint on Roambee Corporation.

2022

• 2022-02-11 – Qualcomm Files IPR Petitions: On the statutory deadline for Roambee to file an IPR petition, 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 did not list Roambee as a real party in interest in its petitions.
• 2022-02-17 – Motion to Stay Filed: Roambee filed a motion to stay the district court litigation pending the outcome of Qualcomm's IPR petitions. At this stage, the parties had engaged in written discovery, exchanged infringement, non-infringement, and invalidity contentions, and proposed terms for claim construction. However, claim construction briefing had not yet begun, and no depositions had been scheduled. A claim construction hearing was several months away, and trial was set for September 2023. Roambee argued that a stay would simplify issues for trial due to the substantial overlap between the IPRs and the infringement action, as Qualcomm's petitions challenged all claims in four of the six asserted patents.
• 2022-10-11 – IPRs Instituted: The PTAB instituted review of Qualcomm's IPR petitions, including for the '797 patent. FedEx had opposed institution, arguing that Qualcomm's failure to list Roambee as a real party in interest precluded the PTAB from considering the petition under 35 U.S.C. § 312(a)(2). The Board disagreed.

2023

• 2023-11-03 – PTAB Final Written Decision (IPR2022-00934 for Patent 10,990,922): While not the '797 patent, one of the related IPRs, IPR2022-00934 concerning U.S. Patent No. 10,990,922, reached a Final Written Decision on this date.
• PTAB Final Written Decision (for '797 patent): The PTAB issued a final written decision finding claims 6, 17, and 28 of the '797 patent, among other challenged claims, unpatentable as obvious over the asserted prior art, specifically a combination of the Lau and Buford prior art references. FedEx subsequently moved to terminate the IPR proceedings, which the Board denied.

2026

• 2026-04-29 – Federal Circuit Ruling: FedEx appealed the PTAB's final written decision regarding the '797 patent. On this date, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Federal Express Corporation v. Qualcomm Incorporated, vacating the PTAB's determination that claims 6, 17, and 28 of the '797 patent were unpatentable as obvious. The Federal Circuit found that the PTAB had failed to consider FedEx's arguments regarding obviousness. Additionally, the Federal Circuit held that the PTAB's decision not to consider whether Roambee was a real party in interest in the IPR petitions was unreviewable under 35 U.S.C. § 314(d).

Outcome and Present Posture:

The district court case remains active. While the initial search results did not explicitly state the outcome of Roambee's motion to stay, it is implied that the district court litigation was likely stayed pending the IPR proceedings, given the significant overlap and the Federal Circuit's recent ruling.

The Federal Circuit's vacatur of the PTAB's obviousness finding for key claims of the '797 patent means that the validity of those claims is no longer definitively resolved by the PTAB decision. The case will now proceed back to the PTAB for further proceedings consistent with the Federal Circuit's opinion, or potentially impact the district court litigation if the stay is lifted or modified. The district court will eventually need to address the '797 patent claims, taking into account the Federal Circuit's decision and any subsequent PTAB actions.

FedEx Corporate Services, Inc. is represented by attorneys from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. The identified counsel of record for the plaintiff include:

• Kelly S. Horn

  • Role: Counsel (likely lead or senior counsel in the patent litigation team).
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC.
  • Experience Note: A registered patent attorney with extensive knowledge of Patent Office practice and experience as a patent litigator, she represents FedEx Corporate Services in this six-patent infringement lawsuit and has secured decisive victories for clients in patent disputes at the ITC.

• Joseph M. Schaffner

  • Role: Counsel (likely lead or senior counsel in the patent litigation team).
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Reston, VA.
  • Experience Note: Represents FedEx Corporate Services in this patent infringement lawsuit and has experience with utility and design patents, including successfully cancelling patent claims at the PTAB.

• Luke H. MacDonald, Ph.D.

  • Role: Counsel (likely lead or senior counsel in the patent litigation team).
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, (specific office location not explicitly stated in snippets, but Finnegan has offices in Reston and Washington D.C. where the other attorneys are based).
  • Experience Note: Represents FedEx Corporate Services in this patent infringement lawsuit and has a strong record in patent litigation, including winning four-patent cases for clients and achieving favorable settlements prior to trial.

No information indicating sealed filings or lack of appearance for plaintiff's counsel was found in the search results.

Here is the counsel of record representing Roambee Corporation in FedEx Corporate Services, Inc. v. Roambee Corporation, Case No. 1:21-cv-00175 (D. Del.):

• Name: Stephen B. Brauerman
• Role: Local Counsel
• Firm: Bayard, P.A.
• Office Location: Wilmington, Delaware
• Experience Note: Stephen B. Brauerman is a director at Bayard and co-chairs the firm's litigation group, focusing on corporate, commercial, and intellectual property litigation, including patent infringement cases, in Delaware's state and federal courts. He is recognized by IAM Patent 1000 as a top Delaware patent practitioner and by Benchmark Litigation as a Litigation Star for intellectual property litigation.

Despite aggressive web searches against PACER-referenced documents, firm websites, and legal news outlets, specific names for lead counsel or additional local counsel for Roambee Corporation beyond Stephen B. Brauerman were not definitively identified as appearing on the docket in publicly accessible information. While various court documents mention "counsel for Roambee Corp.," they do not consistently list the individual names of attorneys or their primary firms for roles beyond local counsel. Information found regarding other attorneys (e.g., David A. Bilodeau, Christopher M. McHugh, Mark K. Schonfeld, Christine D. Embury) did not directly link them as defense counsel for Roambee in this specific patent litigation. Attorneys such as Christopher B. Anderson, Kelly S. Horn, Daniel M. Jordan, and Michael V. Young, Sr., are consistently identified as representing the plaintiff, FedEx Corporate Services, Inc., from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.