Federal Express Corporation v. Qualcomm Incorporated

Federal Express Corporation v. Qualcomm Incorporated The court affirmed the Board's constructions of "short range communication path" (any path shorter than the claimed "longer range" path, including WLAN) and "unable to" (not limited to permanent physical incapacity), and so affirmed the unpatentability of claim 26. It vacated and remanded as to claims 9 and 23-25 because the Board failed to address FedEx's argument that a single power management instruction must alter both the master node and the ID node. The decision is a reminder that the Board must expressly address a patent owner's claim-scope argument under the APA, and that comparative claim language ("short" versus "longer") can be construed relationally. Substantial-evidence findings that were affirmed are foreclosed on remand. Affirmed-in-part, vacated-in-part, and remanded-in-part. Qualcomm's IPR challenged FedEx's '231 patent (hierarchical package sensor network) as obvious over Lau alone or with Benson. The Board found claims 1-15 and 26-30 unpatentable; FedEx appealed only as to claims 9 and 23-26 and the real-party-in-interest issue. Claim construction (de novo): the court held that, given the claim's use of "short" and "longer" and the specification's interchangeable use of "short range" and "shorter range" and its comparative descriptions, a "short range communication path" includes any path, including WLAN, that is shorter than the "longer range" path. A single specification sentence calling WLAN "medium range" was neither lexicography nor clear disclaimer. The court held that "unable to" is not limited to permanent physical incapacity. The specification treats "not operative to" and "unable to" alike, including a smartphone embodiment that could be reprogrammed. Benson's remote sensors not communicating directly with the server therefore met the limitation, and claim 26 was affirmed. For claims 9 and 23-25, the Board did not address FedEx's argument that one power management instruction must alter both the master node and the ID node. That failure violated the APA, and the court declined to infer that the Board adopted Qualcomm's position, so it vacated and remanded. The court held that substantial evidence supports the Board's finding that Benson's activation request alters a master node operation (waking it from hibernation), and that finding may not be disputed on remand. It rejected FedEx's real-party-in-interest challenge by reference to a companion appeal (No. 2024-1236). Judge Cunningham dissented in part, arguing that "short" is a positive adjective that excludes WLAN, and would have reversed as to claim 26. § 103 claim construction remand waiver / forfeiture non-precedential