Federal Express Corporation v. Qualcomm Incorporated

N OTE: This disposition is nonprecedential.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
______________________
D ANIEL C. T UCKER, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, Reston, VA, argued for appellant.
Also represented by CHRISTOPHER B. A NDERSON, J EFFREY
A. BERKOWITZ, L UKE HAMPTON M AC D ONALD, J OSEPH
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MICHAEL SCHAFFNER , MICHAEL VINCENT Y OUNG, SR.
STEPHANIE D EB ROW , Norton Rose Fulbright US LLP,
Austin, TX, argued for appellee. Also represented by MARK
T. G ARRETT , EAGLE HOWARD ROBINSON; J ONATHAN S.
F RANKLIN, Washington, DC; D ANIEL L EVENTHAL , 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; P ETER J. AYERS , MICHAEL S. F ORMAN, AMY
J. N ELSON, F ARHEENA YASMEEN RASHEED, Office of the So-
licitor, United States Patent and Trademark Office, Alex-
andria, VA.
______________________
Before H UGHES , C UNNINGHAM , 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
1 Citations to the Board’s decision in this opinion are
to the version included in the joint appendix. For example,
Decision at 1 is found at J.A. 1. FedEx substituted for
FedEx Corporate Services, Inc. in this appeal after a mer-
ger. ECF No. 35; ECF No. 36.
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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
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of Hashimoto2 and Bhuptani.3 Decision at 87–88. The
Board first declined to adopt FedEx’s construction of “pro-
gramming change,” which required a “change in function.”
Id. at 33. Instead, the Board determined that “program-
ming change” is not limited to a “change in function,” and
could instead include “storing new or modified instructions
in a memory . . . located at the respective device,” which
“more broadly includes instructions in addition to those
that change the function of the device.” Id. at 34. Accord-
ingly, the Board determined that “programming change”
should be given its plain and ordinary meaning and no sep-
arate construction of the term was necessary. Id. at 35.
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
2 U.S. Patent Application Publication
No. 2006/0006987 (filed Nov. 12, 2004; published Jan. 12,
2006), J.A. 1626–52 (“Hashimoto”).
3 Manish Bhuptani & Shahram Moradpour, RFID
Field Guide: Deploying Radio Frequency Identification
Systems (2005) (“Bhuptani”).
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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. D ISCUSSION
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
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construction of “programming change.”4 Id. at 54–62. We
address each argument in turn.
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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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
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function of the device and a programming change as an al-
teration of that function.
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
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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.
5 The Board erred in its explanation of FedEx’s con-
struction. The Board stated that FedEx improperly argued
for a narrower construction than a change in function, “i.e.,
requir[ing] a change in how a computer receives, stores,
processes, and/or delivers information.” Decision at 87 (in-
ternal quotation and citation omitted). The Board then an-
alyzed Hashimoto under this construction. Id. However,
as both parties note, FedEx never argued for this narrower
construction. Appellant’s Br. 58–59; Appellee’s Br. 47–48
& n.15.
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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.
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