Federal Express Corp. v. Qualcomm, Inc., Appeal No. 2024-1236 (Fed. Cir. Apr. 29, 2026)

In our Case of the Week, the Federal Circuit considered, as a matter of first impression, whether a party can appeal the Patent Trial and Appeal Board’s failure to consider whether a party has satisfied the real party in interest requirements under 35 U.S.C. § 312(a)(2).  The Court concluded that the failure to consider whether the real party in interest requirement is satisfied is not appealable pursuant to 35 U.S.C. § 314(d).

Federal Express owns certain patents relating to shipping logistics.  On February 9, 2021, it filed a complaint against Roambee Corporation.  Roambee did not pursue an inter partes review of FedEx’s patents.  On the statutory deadline for Roambee to file a petition for inter partes review, Qualcomm filed a petition for inter partes review.  It did not identify Roambee as a real party in interest in the IPR petition.  FedEx argued that IPR should not be initiated.  That request was declined, and the PTAB initiated IPR.

After discovery, FedEx moved to terminate the IPR proceedings.  The PTAB denied the motion, finding that it did not need to determine the real party in interest issue because the petition was filed within the one-year statutory deadline under § 315.  The Board then issued its final written decision finding all asserted FedEx patent claims invalid as obvious over the prior art.  FedEx appealed both the Board’s decision not to consider the real party in interest issue and also its obviousness determination with respect to three patent claims.  As FedEx argued it, the Board was statutorily required to consider whether all real parties in interest had been named in the petition.

The Federal Circuit declined to reach the real party in interest issue.  Pursuant to 35 U.S.C. § 314(d), determinations whether to institute IPR are not appealable.  The Supreme Court has had the opportunity to consider the import of § 314(d) on multiple occasions.  As summarized by the Federal Circuit, decisions to institute are reviewable when the PTAB acts “outside its statutory limits by, for example, canceling a patent claim for ‘indefiniteness,’” which is outside the PTAB’s statutory authority in an IPR proceeding.  But decisions are otherwise unreviewable.  For example, time bar decisions under § 315 are not reviewable, but a decision to institute review on only certain grounds listed in a petition, rather than the whole petition, is reviewable.

Against this backdrop, the Court held that FedEx’s challenges grounded in § 312(a)(2) fall within § 314(d)’s scope and are thus unreviewable.  The Court was uncompelled by FedEx’s argument that the issue concerned the Board’s conduct both during and after institution.

As to the merits, the only issue was whether the Board erred in finding three claims of one patent unpatentable based on what appears to be an error by the Board in finding that FedEx had not challenged a particular theory of invalidity based on two prior art references.  But it was agreed by both parties that FedEx had addressed those arguments.  But, rather than consider the issue on appeal for the first time, the Court remanded for further consideration.

The opinion can be found here.

By Nika Aldrich

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Constellation Designs, LLC v. LG Electronics, Inc., Appeal No. 2024-1822 (Fed. Cir. Apr. 28, 2026)

In an appeal from final judgment following a jury trial, the Federal Circuit reversed in part and remanded for further consideration.  The patents in suit concerned techniques for processing television signals, which apparently tracked the ATSC 3.0 and A/322 standards.  The district court had ruled on summary judgment that none of the claims were ineligible under 35 U.S.C. § 101.  The district court also refused to exclude Constellation’s damages expert based on LG’s theory that the expert relied on licenses that were not sufficiently comparable to support a built-in apportionment approach.  At trial, the jury found all claims infringed based on a comparison between the ATSC 3.0 standard and the accused products, found willful infringement, and awarded damages.  On appeal, the Federal Circuit found one type of claim to be ineligible under Section 101, finding that it generally covered all possible ways of achieving a desired goal, rather than a specific solution.  Other claims, however, it found to be eligible.  The Court affirmed that it was acceptable to compare the accused products to the ATSC 3.0 standard after establishing that the claims covered the ATSC 3.0 standard, and it affirmed the damages award, finding that there were sufficient facts to support the comparability of the other licenses.  And, because LG did not appeal the damages determination on the basis that some of the patents were invalid, the Court held that a retrial on damages based on the ineligibility finding was not necessary.

The opinion can be found here.

By Nika Aldrich

This article summarizes aspects of the law and does not constitute legal advice. For legal advice with regard to your situation, you should contact an attorney.