Federal Express Corporation v. Qualcomm Incorporated

Case: 24-1235 Document: 100 Page: 1 Filed: 04/29/2026

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________ FEDERAL EXPRESS CORPORATION, Appellant v. QUALCOMM INCORPORATED, Appellee JOHN A. SQUIRES, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Intervenor ______________________ 2024-1235 ______________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2022- 00584. ______________________ Decided: April 29, 2026 ______________________ DANIEL C. TUCKER, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Reston, VA, argued for appellant.

Also represented by CHRISTOPHER B. ANDERSON, JEFFREY A. BERKOWITZ, LUKE HAMPTON MACDONALD, JOSEPH Case: 24-1235 Document: 100 Page: 2 Filed: 04/29/2026

2 FEDERAL EXPRESS CORPORATION v. QUALCOMM INCORPORATED

MICHAEL SCHAFFNER, MICHAEL VINCENT YOUNG, SR. STEPHANIE DEBROW, Norton Rose Fulbright US LLP, Austin, TX, argued for appellee. Also represented by MARK T. GARRETT, EAGLE HOWARD ROBINSON; JONATHAN S.

FRANKLIN, Washington, DC; DANIEL LEVENTHAL, RICHARD STEPHEN ZEMBEK, Houston, TX.

STEVEN A. MYERS, Appellate Staff, Civil Division, United States Department of Justice, for intervenor. Also represented by BRIAN M. BOYNTON, BRADLEY HINSHELWOOD; PETER J. AYERS, MICHAEL S. FORMAN, AMY J. NELSON, FARHEENA YASMEEN RASHEED, Office of the So- licitor, United States Patent and Trademark Office, Alex- andria, VA. ______________________ Before HUGHES, CUNNINGHAM, and STARK, Circuit Judges.

CUNNINGHAM, Circuit Judge.

Federal Express Corporation (“FedEx”) appeals a final written decision by the Patent Trial and Appeal Board (“Board”) in an inter partes review brought by Qualcomm Incorporated (“Qualcomm”). The Board determined that claims 1 through 25 of U.S. Patent No. 7,623,033 (“the ’033 patent”) are unpatentable as obvious. Qualcomm Inc. v. FedEx Corp. Servs., Inc., No. IPR2022-00584, at 102 (P.T.A.B. Oct. 6, 2023) (“Decision”). 1 On appeal, FedEx only challenges the Board’s claim construction and

Case: 24-1235 Document: 100 Page: 3 Filed: 04/29/2026

FEDERAL EXPRESS CORPORATION v. 3 QUALCOMM INCORPORATED determination as to claim 7. Appellant’s Br. 22–23. For the reasons discussed below, we reverse.

I. BACKGROUND The ’033 patent claims methods and systems for track- ing items. ’033 patent col. 16 ll. 2–16, 33–35, col. 16 l. 62 to col. 17 l. 11. Claims 1 and 7 recite: 1. A method for tracking items, comprising: storing, in memory, first association data re- flecting an association between an item track- ing device and a beacon device when the item tracking device is within a predetermined range of the beacon device, wherein the item tracking device corresponds to a first item, and the beacon device corresponds to an area that contains multiple items including the first item; detecting sensor data about an environment of the beacon device; associating the sensor data with a group of items, of the multiple items, that are within the predetermined range of the beacon device; and periodically transmitting the associated sensor data from the beacon device to a database.

7. The method of claim 1, wherein the transmitted sensor data triggers a programming change for at least one of the item tracking device and the beacon device. Id. col. 16 ll. 2–16, 33–35.

In its final written decision, the Board determined that claim 7 was unpatentable as obvious over the combination Case: 24-1235 Document: 100 Page: 4 Filed: 04/29/2026

Additionally, the Board found that, even applying FedEx’s construction, Hashimoto “discloses a change in processing . . . as well as a change in storing and delivering information.” Id. at 87. Specifically, Hashimoto dis- closes: (1) using Radio Frequency Identification (“RFID”) tags to store freshness dates and altering those freshness dates based on temperature data, J.A. 1648 ¶¶ 115–17; and (2) using a temperature sensor to detect that tempera- ture has exceeded a threshold and writing that tempera- ture in a RFID tag, J.A. 1628 at Fig. 2; J.A. 1645 ¶ 48; J.A. 1647 ¶¶ 85, 91. The Board determined that the first disclosure constituted a “change in processing,” and the second disclosure constituted a “change in storing and de- livering information.” Decision at 87. Accordingly, the Board determined that Qualcomm “established by a pre- ponderance of the evidence that claim 7 is unpatentable

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FEDERAL EXPRESS CORPORATION v. 5 QUALCOMM INCORPORATED under 35 U.S.C. § 103(a) as obvious over the combination of Hashimoto and Bhuptani.” Id. at 87–88.

FedEx timely appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

II. STANDARD OF REVIEW “We review the Board’s legal conclusions de novo and its fact findings for substantial evidence.” Game & Tech.

Co. v. Wargaming Grp. Ltd., 942 F.3d 1343, 1348 (Fed. Cir. 2019). “Whether a claimed invention is unpatentable as obvious is a question of law that is reviewed de novo, based on underlying findings of fact reviewed for substantial evi- dence.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449 (Fed. Cir. 2015).

“Substantial evidence means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” FanDuel, Inc. v. Interactive Games LLC, 966 F.3d 1334, 1343 (Fed. Cir. 2020) (internal quotation marks and citation omitted). “The substantial evidence standard . . . involves examination of the record as a whole, taking into account evidence that both justifies and de- tracts from an agency’s decision.” OSI Pharms., LLC v. Apotex Inc., 939 F.3d 1375, 1381 (Fed. Cir. 2019) (inter- nal quotation marks and citation omitted).

III. DISCUSSION FedEx argues that the Board erred in its construction of “programming change.” Appellant’s Br. 46–54. Addi- tionally, FedEx argues that the Board’s finding that Hash- imoto discloses a “programming change” would not be supported by substantial evidence under a correct Case: 24-1235 Document: 100 Page: 6 Filed: 04/29/2026

A.

FedEx argues that the intrinsic and extrinsic evidence show that a “programming change” is a “change in func- tion,” consistent with the phrase’s ordinary meaning. Ap- pellant’s Br. 47–51. FedEx also argues that the Board misread the specification and incorrectly concluded that the specification included instructions in addition to those that change the function of the device. Id. at 52–53 (citing Decision at 34). Qualcomm argues that the Board’s con- struction of “programming change” is correct because FedEx’s reading would improperly limit claim 7 to the ex- amples in the specification and that the examples of pro- gramming changes described in the specification are not limited to changes that alter the function of a device. Ap- pellee’s Br. 36–43. Qualcomm also argues that the extrin- sic evidence confirms that the plain and ordinary meaning of “programming change” is broader than a “change in function.” Id. at 43–47. We agree with FedEx.

Here, claim 7 requires that “the transmitted sensor data triggers a programming change for at least one of the item tracking device and the beacon device.” ’033 patent

4 FedEx also argues that the Board erred by failing to adjudicate whether Qualcomm was required, under 35 U.S.C. § 312(a)(2), to name Roambee Corporation as a real party in interest in its petition. Appellant’s Br. 29; see also id. at 24–46. FedEx pressed this same argument in a related appeal, which has been resolved by a separate opin- ion issued this same date. See Fed. Express Corp. v. Qual- comm Inc., No. 2024-1236, __ F.4th __ (Fed. Cir. Apr. 29, 2026). Accordingly, as in that case, we reject the part of FedEx’s appeal challenging the Board’s real party-in-inter- est determination.

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FEDERAL EXPRESS CORPORATION v. 7 QUALCOMM INCORPORATED

col. 16 ll. 33–35 (emphasis added). “Claim terms are gen- erally given their plain and ordinary meaning, which is the meaning one of ordinary skill in the art would ascribe to a term when read in the context of the claim, specification, and prosecution history.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1378 (Fed. Cir. 2022) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1313–14 (Fed. Cir. 2005) (en banc)). Read in the context of the spec- ification, the plain and ordinary meaning of “programming change” is correctly understood to be limited to a change to the function of the program. Although the patent acknowl- edges that “the specification and examples be considered as exemplary only,” the specification is nonetheless instruc- tive in understanding the disputed term. ’033 patent col. 15 ll. 64–65; Wis. Alumni Rsch. Found. v. Apple Inc., 905 F.3d 1341, 1351 (Fed. Cir. 2018) (internal quotation marks and citation omitted) (“Where . . . a patent repeat- edly and consistently characterizes a claim term in a par- ticular way, it is proper to construe the claim term in accordance with that characterization.”).

The specification’s discussion of “programming” identi- fies instructions that “dictat[e], for example, the manner in which a device detects environmental conditions,” ’033 pa- tent col. 8 ll. 27–29; id. col. 5 ll. 60–62, and altering pro- gramming to “check the temperature more frequently,” id. col. 6 ll. 5–7; id. col. 10 ll. 7–9. In addition to detected en- vironmental conditions, such as temperature above a cer- tain level, see id. col. 10 ll. 5–9, “other parameters can be used as the basis for altering programming” and “program- ming may be altered for reasons other than the detection of predetermined conditions.” Id. col. 10 ll. 9–13. The spec- ification also describes that one method of altering pro- gramming is “storing new or modified instructions in a memory . . . located at the respective device.” Id. col. 5 ll. 62–65 (emphasis added). These descriptions consist- ently characterize programming as it relates to the Case: 24-1235 Document: 100 Page: 8 Filed: 04/29/2026

While the Board and Qualcomm have implied that there can be a change in “instruction” that is not a change in “function,” J.A. 34; Appellee’s Br. 44, a programming change cannot be a mere change in data. Specifically, the claim language and specification distinguish between “pro- gramming change” and “transmitted sensor data,” in that the data later triggers a change in “programming.” ’033 patent col. 16 ll. 33–35; see id. col. 8, ll. 8–14 (describing the receipt of “sensor data” and the later alteration of “pro- gramming”). See also Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1376 (Fed. Cir. 2014) (explaining the “dis- tinction between ‘instructions’ and ‘data’ is widely recog- nized in the field of” computing). Moreover, the parties also point to extrinsic evidence in the form of dictionary defini- tions and expert testimony as alleged claim construction support, but we do not reach this extrinsic evidence. Ap- pellant’s Br. 53–54; Appellee’s Br. 43–47; see also Decision at 34 (giving “little, if any, weight” to the extrinsic evidence “in light of the clear disclosure of the intrinsic evidence”).

Where the intrinsic evidence “resolves any ambiguity in a disputed claim term, it is improper to rely on extrinsic evi- dence to contradict the meaning so ascertained.” Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1367 (Fed. Cir. 2003). Accordingly, we disagree with the Board’s construc- tion of “programming change” and hold that a “program- ming change” requires a change in function.

B.

FedEx argues that substantial evidence does not sup- port the Board’s finding that Hashimoto discloses a “pro- gramming change” because Hashimoto does not disclose a change in function. Appellant’s Br. 54–62. Qualcomm ar- gues that the Board did not err in its finding that Hash- imoto’s disclosure of changing the freshness date stored on Case: 24-1235 Document: 100 Page: 9 Filed: 04/29/2026

FEDERAL EXPRESS CORPORATION v. 9 QUALCOMM INCORPORATED a RFID tag meets claim 7, even under FedEx’s proposed construction. Appellee’s Br. 47–50. We agree with FedEx.

Substantial evidence does not support the Board’s al- ternative finding that Hashimoto discloses a “program- ming change” under FedEx’s proposed claim construction. 5 We analyze the Board’s finding under the claim construc- tion we articulated above, where a “programming change” requires a change in function. Hashimoto’s alteration of the freshness dates does not alter the programming of the system, but merely updates one stored variable value.

Both cited paragraphs discuss “reduc[ing] a freshness date by three days” after a temperature is detected to have reached a certain value. J.A. 1648 ¶¶ 116–17. But Hash- imoto does not disclose any programming change; it only discloses that the freshness dates are used “to perform shipment management,” with no further explanation re- garding what resulting change could occur based on changed freshness dates. J.A. 1648 ¶ 106. Thus, this change in freshness date does not lead to a change in func- tion and is not a programming change as recited in claim 7. Accordingly, substantial evidence does not support the Board’s finding that the combination of Hashimoto and Bhuptani teaches the claim limitations of claim 7.

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10 FEDERAL EXPRESS CORPORATION v. QUALCOMM INCORPORATED

III. CONCLUSION We have considered the parties’ remaining arguments and find them unpersuasive. We reverse the Board’s un- patentability determination for claim 7 based on its erro- neous claim construction of “programming change.”

REVERSED COSTS Costs to FedEx.