Background
Federal Express Corporation owns a patent for a sensor-based logistics system. Qualcomm filed an inter partes review challenging the patent’s obviousness. The Patent Trial and Appeal Board denied Federal Express’s motion to terminate the proceedings and ultimately found the challenged claims unpatentable as obvious. Federal Express appealed, arguing the Board failed to determine if Qualcomm identified all real parties in interest and erred in its obviousness analysis.
The court’s reasoning
The court concluded that challenges regarding the Board’s failure to determine real parties in interest under Section thirty-five U.S.C. Section three hundred twelve subsection a two are closely tied to the institution decision and thus barred from judicial review under Section thirty-five U.S.C. Section three hundred fourteen subsection d. Regarding the merits, the court found the Board erred by stating it would not discuss real party in interest issues and by determining the claims were obvious based on the belief that Federal Express had not contested the specific prior art combination. The court held that the Board must present a full and reasoned explanation and cannot rely on a misunderstanding of the record.
What it means going forward
The decision reinforces the finality of the Board’s real party in interest determinations at the institution stage while ensuring the Board provides a complete factual record when making obviousness findings. It requires the Board to address all contested arguments rather than assuming a lack of contest.
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