FedEx can fight another day in Qualcomm dispute, as Federal Circuit considers IPR real-parties-in-interest

Context: Federal Express (FedEx) sued Roambee¹ at the United States District Court for the District of Delaware in February 2021, alleging infringement of six patents. Roambee had a one-year window in which to petition the United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) to review the patents-in-suit. On deadline day, Qualcomm filed petitions for inter partes review (IPR) of four of the patents, identifying the district court case as relevant but not identifying Roambee as a real-party-in-interest (RPI). FedEx’s opposition to institution of the IPRs on the basis that Qualcomm had failed to name an RPI was rejected by the PTAB, as was its subsequent motion to terminate proceedings.

What’s new and direct impact: The United States Court of Appeals for the Federal Circuit has declined FedEx’s request that it review the PTAB’s institution decision over the RPI issue, while also vacating and remanding several PTAB determinations that claims in FedEx’s patents were ineligible.

Wider ramifications:

• The Federal Circuit has again held that USPTO institution decisions—including the issue of ensuring all RPIs are identified prior to institution—are statutorily outside of its jurisdiction; however, the way in which those instituted reviews are subsequently conducted by the USPTO can fall within its ambit.
• Of particular note, however, is the nature of the USPTO’s intervention in this case. After initially defending the PTAB’s rejection of FedEx’s arguments regarding RPIs, the USPTO withdrew its defense on those grounds after the confirmation of new Director John A. Squires in September 2025. Since his confirmation, Director Squires has adopted a strict approach to the question of RPIs.