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FedEx v. Qualcomm: Fed Cir Rules PTAB Real-Party-in-Interest Challenges Unreviewable

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14

Why it matters

The Federal Circuit issued a precedential decision on April 29, 2026, in Federal Express Corporation v. Qualcomm Incorporated that significantly narrows appellate review of Patent Trial and Appeal Board decisions. The court held that challenges to the PTAB's handling of real-party-in-interest disputes under 35 U.S.C. § 312(a)(2) cannot be appealed. The ruling treats RPI objections as integral to the institution decision itself, placing them beyond the scope of review under 35 U.S.C. § 314(d), which makes all institution rulings final and unreviewable absent constitutional violations or actions outside the agency's statutory authority.

FedEx petitioned for inter partes review of Qualcomm patents but the PTAB instituted review while declining to fully resolve Qualcomm's RPI objections. FedEx appealed the final written decision, arguing the PTAB committed post-institution procedural errors and seeking vacatur. The Federal Circuit distinguished between reviewable statutory deviations that occur after institution and threshold challenges to whether institution should have happened at all. The court aligned its reasoning with prior precedent limiting exceptions to § 314(d)'s bar to constitutional claims and actions plainly outside the agency's delegated authority.

Patent practitioners should recalibrate IPR strategy around this ruling. Petitioners cannot use appellate review to challenge RPI determinations made during the institution phase, eliminating a potential avenue to overturn unfavorable decisions. Patent owners relying on RPI arguments must press them forcefully before institution, knowing the PTAB's handling of such objections will not be subject to appellate correction. The decision closes what some viewed as a procedural workaround to challenge institution decisions and reinforces the finality of the PTAB's threshold determinations.

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