Federal Express Corporation v. Qualcomm Incorporated

Federal Express Corporation v. Qualcomm Incorporated The Federal Circuit held that "programming change" in claim 7 of the '033 patent requires a change in function, so the Board's broader construction was wrong. Because substantial evidence did not support the Board's alternative finding that Hashimoto discloses such a change, the court reversed the Board's obviousness determination as to claim 7. The decision shows the court construing a term narrowly from consistent specification usage over a broader plain-meaning reading, and refusing to uphold an alternative obviousness finding that is not supported by substantial evidence under the corrected construction. Reversed. Qualcomm's IPR resulted in a Board finding that claims 1-25 of the '033 patent (item tracking with beacon devices) were unpatentable as obvious. On appeal FedEx challenged only the claim construction and the determination as to claim 7, which requires that transmitted sensor data trigger a "programming change" for the tracking or beacon device. The Board rejected FedEx's "change in function" construction and gave the term its plain meaning, which it found could include storing new or modified instructions even where function does not change. The court held that, read in light of the specification, the plain meaning of "programming change" is limited to a change in function. The specification consistently describes programming as governing device function, and the claim and specification distinguish a programming change from the transmitted sensor data that triggers it, so a mere change in data is not enough. The court did not reach the extrinsic evidence. Applying that construction, substantial evidence did not support the Board's alternative finding on Hashimoto. Changing a stored freshness date merely updates one variable and, on this record, is not shown to lead to any change in function. The court also noted the Board had mischaracterized FedEx's construction in its alternative analysis. The court rejected FedEx's real-party-in-interest challenge by reference to a companion appeal (No. 2024-1236) decided the same day. It reversed the unpatentability determination for claim 7 and awarded costs to FedEx. claim construction § 103 standing / jurisdiction non-precedential