Federal Express Corporation v. Qualcomm Incorporated

Federal Express Corporation v. Qualcomm Incorporated The court held that FedEx's challenges based on 35 U.S.C. § 312(a)(2) (real-party-in-interest), including the Board's refusal to decide the issue and its denial of the motion to terminate, are unreviewable under § 314(d). It vacated the Board's obviousness determination for claims 6, 17, and 28 of the '797 patent because the Board wrongly found the Lau-Buford ground uncontested, and remanded rather than reversing. RPI challenges under § 312(a)(2) remain unreviewable on appeal even when framed as attacks on the Board's refusal to decide the issue after institution, so patent owners must win them at institution; the decision also shows the Board must address contested arguments or face vacatur. Vacated and remanded. Qualcomm petitioned for IPR of the '797 patent (sensor-based logistics) on the deadline for Roambee, the district court defendant, and did not name Roambee as a real party in interest. FedEx opposed institution and later moved to terminate; the Board denied termination, declining to decide RPI absent a time-bar or estoppel issue. Section 314(d) bar: § 312(a)(2) is closely tied to institution and a prerequisite for it. Under Cuozzo, Thryv, and circuit precedent (ESIP, Ethanol), FedEx's challenges are unreviewable even though framed as attacking the Board's post-institution conduct. The court distinguished SAS: FedEx's challenge, despite its framing as the manner of proceeding, ultimately targets whether institution should have occurred, which is the relief FedEx would seek on remand. Its challenge to the Board's RPI approach is likewise barred. The USPTO intervened, then withdrew its defense of the Board's RPI approach after the Director determined RPI disputes must be resolved before considering a petition, but still argued the issues are unreviewable under § 314(d). The court accepted that argument. On the merits, the Board found claims 6, 17, and 28 obvious over Lau and Buford on the premise that FedEx had not contested that ground, which both parties agreed was wrong. Reversal was improper because factual disputes remained, including whether Buford meets the claim limitations, so the court vacated and remanded. Whether to consider the Lau-alone ground is left to the Board. § 103 standing / jurisdiction remand waiver / forfeiture precedential