Fresh From the Bench: Latest Precedential Patent Cases

CASE OF THE WEEK

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.

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ALSO THIS WEEK

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.

Editors:

Nika Aldrich, IP Litigation Group Leader, Schwabe

Jason A. Wrubleski, Shareholder