Qualcomm Incorporated v. Federal Express Corporation

This case, IPR2022-00585, involves Qualcomm Incorporated challenging a patent owned by Federal Express Corporation before the Patent Trial and Appeal Board (PTAB). Qualcomm is a global semiconductor and telecommunications company, renowned for pioneering wireless technologies like CDMA and 5G, manufacturing chipsets, and licensing its vast patent portfolio, operating as a leading technology developer and licensor. Federal Express Corporation (FedEx) is a multinational conglomerate specializing in transportation, e-commerce, and business services, known globally for its express shipping and logistics operations. The IPR stems from an underlying patent infringement lawsuit filed by FedEx against Roambee Corporation (now Decklar) in the District of Delaware (No. 21-cv-00175), where FedEx asserted infringement of several patents, including the one challenged here.

The patent at issue in this Inter Partes Review is U.S. Patent No. 8,766,797, titled "Sensor Based Logistics System." This patent broadly describes systems and methods that allow access to information about shipments gathered from sensors. These sensors can be attached to packages, shipping containers, or vehicles, collecting location and environmental data and relaying it to a tracking center. The invention further enables customized control over shipment notifications, including the ability to restrict access to this sensor information based on predefined rules, such as reporting data after a specific time delay.

The procedural posture is an Inter Partes Review (IPR) before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office, bearing the case number IPR2022-00585. While the PTAB initially issued a Final Written Decision finding all challenged claims unpatentable, this decision was subsequently appealed to the Federal Circuit (Appeal No. 24-1236), which vacated the PTAB's obviousness determination and remanded the case for further proceedings on April 29, 2026. The PTAB serves as an administrative forum for challenging patent validity outside of federal district court litigation, often leading to a stay of any co-pending infringement actions. This case is particularly notable because Qualcomm, a non-party to FedEx's original infringement suit against Roambee, filed its IPR petitions on the very last day Roambee could have filed its own. This raised significant "real party in interest" arguments by FedEx, which challenged the institution of the IPRs. Although the Federal Circuit deemed the PTAB's decision on real party in interest unreviewable under 35 U.S.C. § 314(d), its subsequent vacatur of the obviousness findings and remand highlight the complex interplay and strategic considerations involved in challenging patents via IPRs, particularly when a third party is involved.

This case, IPR2022-00585, is an Inter Partes Review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB), not a district court patent infringement litigation. However, the IPR was initiated in the context of an underlying patent infringement lawsuit.

Legal Developments and Outcome:

1. Related District Court Litigation (Contextual Background):

• Filing of Complaint: On February 9, 2021, Federal Express Corporation (FedEx) filed a patent infringement lawsuit against Roambee Corporation (now rebranded as Decklar) in the United States District Court for the District of Delaware. FedEx asserted six of its patents, including U.S. Patent No. 8,766,797, which describes systems and methods for providing access to information about shipments from sensors. The service of this complaint initiated Roambee's one-year statutory window under 35 U.S.C. § 315(b) to file its own IPR petition.

2. IPR Filing & Institution:

• Petition Filing: On the last day of Roambee's one-year statutory deadline, Qualcomm Incorporated, a non-party to the Delaware litigation, filed IPR petitions, including IPR2022-00585, challenging four of the six patents asserted by FedEx against Roambee, including U.S. Patent No. 8,766,797. Qualcomm identified the Roambee litigation as a related matter but did not list Roambee as a "real party in interest" in its IPR petition.
• Patent Owner's Opposition and PTAB Institution Decision: FedEx opposed the institution of the IPR, arguing that Qualcomm failed to identify all real parties in interest as required by 35 U.S.C. § 312(a)(2). The PTAB disagreed and instituted review on October 11, 2022. The Board declined to resolve the real party in interest issue, stating it was unnecessary to do so unless it would create a § 315 time-bar or estoppel issue, which it determined was not the case here.
• Motion to Terminate: After additional discovery, FedEx moved to terminate the IPR proceedings, again raising the real party in interest issue. The PTAB denied this motion.

3. PTAB Final Written Decision:

• Issuance and Outcome: The PTAB issued its Final Written Decision (FWD) on October 6, 2023. In its decision, the PTAB found all challenged claims of U.S. Patent No. 8,766,797 unpatentable as obvious over the asserted prior art. The Board explicitly stated it would not discuss the real party in interest issues in the FWD.

4. Appeal to the Federal Circuit:

• Appeal Filing: FedEx timely appealed the PTAB's decisions to the United States Court of Appeals for the Federal Circuit (Case No. 24-1236).
• Federal Circuit Decision (April 29, 2026): The Federal Circuit issued its decision on April 29, 2026. The court addressed two main points:
  • Reviewability of Real Party in Interest Issue: The Federal Circuit held that it lacked authority to review the PTAB's refusal to determine whether all real parties in interest were named and its denial of FedEx's motion to terminate the IPR proceedings. The court concluded that these issues, which are closely tied to the PTAB's decision to institute IPR, are unreviewable under 35 U.S.C. § 314(d).
  • Obviousness Determination: On the merits of the obviousness finding for claims 6, 17, and 28, the Federal Circuit found that the PTAB had erred. The PTAB's error stemmed from concluding that FedEx had not contested one specific ground of obviousness, even though both parties agreed that FedEx had, in fact, addressed those arguments.
• Outcome: The Federal Circuit declined to review the real party in interest challenge but vacated the Board's obviousness determination for claims 6, 17, and 28 of U.S. Patent No. 8,766,797 and remanded the case for further proceedings consistent with its opinion.

5. Current Posture:

• Following the Federal Circuit's remand on April 29, 2026, the case is currently back at the PTAB for further proceedings to re-evaluate the obviousness of claims 6, 17, and 28 of U.S. Patent No. 8,766,797, considering the Federal Circuit's finding that FedEx did contest the relevant obviousness ground.

Qualcomm Incorporated was represented by the following counsel from Norton Rose Fulbright US LLP in the Inter Partes Review IPR2022-00585 against Federal Express Corporation:

• Eagle H. Robinson

  • Role: Counsel of Record, Lead for IP Transactions and Patent Prosecution in the U.S.
  • Firm: Norton Rose Fulbright US LLP, Austin, TX (98 San Jacinto Boulevard, Suite 1100, Austin, TX 78701)
  • Experience: Represents patent owners and petitioners in patent validity trials before the Patent Trial and Appeal Board (PTAB) and has been recognized as a top-performing attorney defending petitioners in IPR proceedings. He also performs intellectual property due diligence and negotiates joint development agreements and patent licenses.

• Daniel S. Leventhal

  • Role: Counsel of Record, Head of the firm's US IP disputes group.
  • Firm: Norton Rose Fulbright US LLP, Houston, TX (Fulbright Tower, 1301 McKinney, Suite 5100, Houston, TX 77010)
  • Experience: A respected litigator with extensive experience in complex patent disputes, particularly in the telecommunications and software industries. He has represented Qualcomm in other patent-related matters and is noted for his ability to grasp complex technology.

• Richard S. Zembek

  • Role: Counsel of Record.
  • Firm: Norton Rose Fulbright US LLP, Houston, TX (Fulbright Tower, 1301 McKinney, Suite 5100, Houston, TX 77010)
  • Experience: A well-regarded IP litigator with significant experience in patent disputes across various sectors, including technology and retail, known for his deep experience and strong judgment in patent litigation. He has also represented petitioners in Covered Business Method (CBM) reviews before the PTAB.

• Jonathan S. Franklin

  • Role: Counsel, likely involved in the Federal Circuit appeal of the IPR.
  • Firm: Norton Rose Fulbright US LLP, Washington, D.C. (799 9th Street NW, Suite 1000, Washington, D.C. 20001)
  • Experience: An appellate lawyer with experience representing clients, including Qualcomm, before the Federal Circuit and the Supreme Court in patent and other complex litigation matters.

Federal Express Corporation, the patent owner in IPR2022-00585 and the appellant in the subsequent Federal Circuit appeal (No. 24-1236), was represented by counsel from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.

The counsel of record for Federal Express Corporation include:

• Joseph Michael Schaffner

  • Role: Lead Counsel (argued for appellant at Federal Circuit)
  • Firm & Office: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Reston, VA
  • Note: Schaffner is a partner at Finnegan focusing on patent litigation, post-grant proceedings, and appeals before the Federal Circuit.

• Christopher B. Anderson

  • Role: Counsel
  • Firm & Office: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Note: Anderson is a partner at Finnegan specializing in patent litigation across various technologies, including post-grant review proceedings.

• Jeffrey A. Berkowitz

  • Role: Counsel
  • Firm & Office: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Note: Berkowitz is a partner at Finnegan with extensive experience in patent litigation, IPRs, and appeals to the Federal Circuit, particularly in electrical and computer technologies.

• Luke Hampton Macdonald

  • Role: Counsel
  • Firm & Office: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Note: Macdonald is an attorney at Finnegan focusing on patent litigation and post-grant proceedings.

• Daniel C. Tucker

  • Role: Counsel
  • Firm & Office: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Note: Tucker is an attorney at Finnegan whose practice includes patent litigation and inter partes reviews.

• Michael Vincent Young, Sr.

  • Role: Counsel
  • Firm & Office: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Note: Young is a partner at Finnegan, with a practice focusing on patent litigation, IPRs, and appeals across a range of technical fields.