Federal Express Corporation v. Qualcomm Incorporated

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
______________________
2024-1236
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2022-
00585.
______________________
Decided: April 29, 2026
______________________
J OSEPH MICHAEL SCHAFFNER, Finnegan, Henderson,
Farabow, Garrett & Dunner, LLP, Reston, VA, argued for
appellant. Also represented by CHRISTOPHER B.
ANDERSON, J EFFREY A. BERKOWITZ, L UKE HAMPTON
MAC D ONALD, D ANIEL C. T UCKER, M ICHAEL VINCENT
YOUNG, SR.
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J ONATHAN S. F RANKLIN, Norton Rose Fulbright US
LLP, Washington, DC, argued for appellee. Also repre-
sented by STEPHANIE D EBROW , MARK T. G ARRETT , EAGLE
HOWARD ROBINSON, Austin, TX; D ANIEL L EVENTHAL ,
RICHARD STEPHEN ZEMBEK, Houston, TX.
STEVEN A. MYERS , Appellate Staff, Civil Division,
United States Department of Justice, Washington, DC, ar-
gued 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 Solicitor, United States Patent and
Trademark Office, Alexandria, VA.
______________________
Before H UGHES , C UNNINGHAM , and STARK, Circuit Judges.
HUGHES , Circuit Judge.
Federal Express Corporation appeals two decisions of
the Patent Trial and Appeal Board: first, a decision deny-
ing its motion to terminate inter partes review proceedings,
and second, a decision finding that all challenged claims of
U.S. Patent No. 8,766,797 are unpatentable as obvious. For
the reasons outlined below, we decline to review the chal-
lenge to the Board’s decision denying the request to termi-
nate the IPR proceedings, and we vacate the Board’s
obviousness determination as to the challenged claims and
remand for further proceedings consistent with this opin-
ion.
I
A
Federal Express Corporation (FedEx) owns U.S. Patent
No. 8,766,797, titled “Sensor Based Logistics System,”
which describes systems and methods for providing access
to information about shipments from sensors. J.A. 54; see
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ECF No. 31, at 1. Generally, the system features sensors
attached to or included in items to be tracked—such as
packages, shipping containers, or vehicles—that can be as-
sociated with a tracking number. These sensors collect lo-
cation and environmental data and send information to,
and receive information from, a tracking center. The
’797 patent purports to improve upon prior systems by en-
abling greater customization and control over shipment no-
tifications through adjustments to the specificity,
frequency, and timing of reporting.
The independent claims describe receiving sensor in-
formation at a tracking center for one or more shipments,
analyzing access rules for a party to determine the party’s
authorization, and restricting access based on these rules.
See, e.g., J.A. 73, 25:5–12. Dependent claims 6, 17, and 28,
which are at issue on appeal, describe a particular method
of restricting access. See J.A. 73, 25:40–44, 26:47–51;
J.A. 74, 28:9–13. Claim 6, reproduced below, is representa-
tive:
6. The method of claim 1, wherein restricting the
party from accessing the received sensor infor-
mation further comprises the step of:
reporting the received sensor information to
the party after a predetermined time delay.
J.A. 73, 25:40–44 (emphasis added).
B
On February 9, 2021, FedEx1 filed a complaint in the
United States District Court of the District of Delaware
1 The complaint was originally filed by FedEx Cor-
porate Services, Inc., which later merged “with and into”
Federal Express Corporation and ceased to exist. ECF
No. 31 at 1. For ease of reference, both are referred to as
FedEx.
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against Roambee Corporation (Roambee),2 asserting in-
fringement of six of FedEx’s patents, including the ’797 pa-
tent (Roambee Litigation). See Compl. ¶ 1, FedEx Corp.
Servs., Inc. v. Roambee Corp., No. 21-cv-00175 (D. Del.
Feb. 9, 2021), ECF No. 1. FedEx served Roambee the com-
plaint on February 11, 2021, beginning the one-year win-
dow during which Roambee could petition the Patent Trial
and Appeal Board for inter partes review of the patents as-
serted against it in the Roambee Litigation. See FedEx
Corp. Servs., Inc. v. Roambee Corp., No. 21-cv-00175
(D. Del. Feb. 11, 2021), ECF No. 4; 35 U.S.C. § 315(b).
On Roambee’s IPR filing deadline, another entity,
Qualcomm Incorporated (Qualcomm), filed IPR petitions
challenging on obviousness grounds four of the six patents
FedEx asserted in the Roambee Litigation, including the
’797 patent.3 See J.A. 139, 292. Despite challenging the pa-
tents asserted against Roambee, Qualcomm was not a
party in the Roambee Litigation. In its petition, Qualcomm
identified the Roambee Litigation as a related matter but
did not list Roambee as a real party in interest. See
J.A. 144. FedEx opposed institution, arguing Qualcomm’s
failure to list Roambee as a real party in interest meant
2 Roambee has since rebranded to Decklar. See San-
jay Sharma, Roambee Has Rebranded to Decklar – Cus-
tomer Newsletter – September 10, 2025 (Sep. 10, 2025),
https://www.decklar.com/resources/newsletter/roambee-
has-rebranded-to-decklar-customer-newsletter-september-
10-2025 [https://perma.cc/AMQ9-7ASZ]. This opinion re-
fers to the entity as “Roambee.”
3 IPR2022-00585 underlies this appeal. Two of Qual-
comm’s other IPRs, IPR2022-00584 and IPR2022-00586,
are at issue in two related appeals before this court, Fed-
eral Express Corp. v. Qualcomm Inc., No. 24-1235, and Fed-
eral Express Corp. v. Qualcomm Inc., No. 24-1237,
respectively.
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that the Board was precluded from considering the petition
under 35 U.S.C. § 312(a)(2). The Board disagreed and in-
stituted review on October 11, 2022.
After additional discovery, FedEx moved to terminate
the proceedings. The Board denied FedEx’s motion, stating
that, under SharkNinja Operating LLC v. iRobot Corp.,
No. IPR2020-00734, Paper No. 11 at 18 (P.T.A.B. Oct. 6,
2020), and Unified Patents, LLC v. MemoryWeb, LLC,
No. IPR2021-01413, Paper No. 74 at 5 (P.T.A.B. May 16,
2023),4 it “should not determine whether an unnamed
party is a real party in interest in a proceeding if [that] de-
termination is ‘not necessary to resolve the proceeding.’”
J.A. 1076, 1092 (quotation omitted). The Board explained
that such a determination was warranted only when add-
ing the unnamed party would create a § 315 time-bar or
estoppel issue. Because Qualcomm filed its petitions within
the deadline for Roambee to file a petition, the Board held
that no time bar would apply absent bad faith, gamesman-
ship, or prejudice that would prevent amendment. And it
was unconvinced that Qualcomm would be barred from
amending its mandatory notices to ameliorate any possible
issues. Thus, the Board concluded that it “should not make
a determination as to whether Roambee is a real party in
interest in these proceedings.” J.A. 1092.
The Board then issued its final written decision on Oc-
tober 6, 2023. Qualcomm Inc. v. FedEx Corp. Servs.,
No. IPR2022-00585, 2023 WL 6605258 (P.T.A.B. Oct. 6,
2023) (FWD). It stressed that it would not discuss any real
party in interest issues in the final written decision, deem-
ing them sufficiently resolved in denying FedEx’s motion
4 The Director Decision relied upon by the Board and
cited by the parties is not publicly available. The public ver-
sion, however, is Unified Patents, LLC v. MemoryWeb,
LLC, No. IPR2021-01413, Paper No. 76 (P.T.A.B. May 22,
2023).
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to terminate proceedings. The Board then determined all
claims were unpatentable as obvious over the asserted
prior art. FedEx timely appealed. We have jurisdiction un-
der 28 U.S.C. § 1295(a)(4)(A).
II
“We decide legal issues de novo, including whether a
statute precludes judicial review and whether challenged
agency action is ‘not in accordance with the law or without
observance of procedure required by law.’” IGT v. Zynga
Inc., 144 F.4th 1357, 1365 (Fed. Cir. 2025) (citation omit-
ted).
Obviousness is a question of law that is based on un-
derlying factual findings. Graham v. John Deere Co. of
Kansas City, 383 U.S. 1, 17–18 (1966). We thus review the
Board’s ultimate obviousness determination de novo and
associated findings of fact for substantial evidence. Uber
Techs., Inc. v. X One, Inc., 957 F.3d 1334, 1337 (Fed. Cir.
2020) (citation omitted). Substantial evidence is “such rel-
evant evidence as a reasonable mind might accept as ade-
quate to support a conclusion.” Consol. Edison Co. of N.Y.
v. NLRB, 305 U.S. 197, 229 (1938).
III
FedEx raises several issues on appeal. First, FedEx ar-
gues the Board violated 35 U.S.C. § 312(a)(2) throughout
the proceedings by refusing to determine whether Qual-
comm’s petition identified “all real parties in interest,” as
FedEx argues the Board was statutorily required to do,
based on “wrongly decided and irrelevant PTAB decisions.”
Appellant’s Br. 27–29. Second, FedEx argues the Board
erred in denying its motion to terminate by failing to con-
duct a complete real party in interest analysis, by not en-
forcing Qualcomm’s burden to justify its real party in
interest identification, and by rejecting four other bases for
termination. Finally, FedEx challenges the Board’s obvi-
ousness analysis for claims 6, 17, and 28 of the ’797 patent.
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A
We begin with the parties’ arguments over the Board’s
real party in interest analysis. FedEx argues the Board ex-
ceeded its statutory authority by issuing a final written de-
cision without ever determining whether Qualcomm’s
petition met § 312(a)(2)’s real party in interest require-
ment. According to FedEx, § 312(a)(2) lays out an unam-
biguous statutory requirement that the Board consider a
petition “only if” it identifies all real parties in interest. Ap-
pellant’s Br. 28 (quoting 35 U.S.C. § 312(a)(2)). FedEx con-
tends the Board cannot make this requirement “optional,”
nor can it “refuse to decide whether a petition satisfies that
mandatory condition,” yet the Board did so when it issued
its final written decision without ever conducting any real
party in interest analysis. Id.; see also Reply Br. 7. FedEx
separately argues the Board improperly denied its motion
to terminate the proceedings without making a real party
in interest determination.
Qualcomm and Intervenor United States Patent and
Trademark Office, however, argue that FedEx’s challenges
to the Board’s handling of the real party in interest issues
and the denial of FedEx’s motion to terminate are barred
from judicial review.5 They cite 35 U.S.C. § 314(d), which
states “[t]he determination by the Director whether to
5 Although the USPTO initially intervened to also
defend the Board’s refusal to resolve the real party in in-
terest issue on the merits, it later notified this court that
the Director has determined that real party in interest dis-
putes must be resolved before considering a petition. Cita-
tion of Suppl. Auth. at 1, Fed. Express Corp. v. Qualcomm
Inc., No. 24-1236 (Oct. 28, 2025), ECF No. 100. The
USPTO accordingly withdrew its defense of the Board’s ap-
proach but maintained that FedEx’s real party in interest-
related challenges are barred from appellate review under
§ 314(d). Id. at 1–2.
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institute an inter partes review under this section shall be
final and nonappealable.” They assert that “FedEx cannot
avoid that statutory review bar merely because it re-raised
its § 312(a)(2) challenge in a motion to terminate or at the
merits stage.” Appellee’s Br. 12–13; see also Intervenor’s
Br. 15–19.
1
After receiving a petitioner’s initial petition and the pa-
tent owner’s preliminary response, the Director, or the
Board exercising its delegated authority,6 decides whether
to institute the requested inter partes review based on
whether it finds the petitioner has a reasonable likelihood
of success with respect to at least one of the challenged
claims. See 35 U.S.C. § 314(a). Congress specified that the
choice of whether to institute is judicially unreviewable. Id.
§ 314(d); see also Cuozzo Speed Techs., LLC v. Lee, 579 U.S.
261, 274–76 (2016). And so we begin with a review of the
relevant case law on the scope of 35 U.S.C. § 314(d).
The Supreme Court first addressed the contours of the
§ 314(d) reviewability bar in Cuozzo. There, the petitioner
argued that institution was improper because the petition
failed to satisfy 35 U.S.C. § 312(a)(3)’s particularity re-
quirement. Cuozzo, 579 U.S. at 270–72. The Court held
that § 314(d) bars review of matters “closely tied to the
6 Historically, the Director has delegated institution
decisions to the Board. See 37 C.F.R. § 42.4; Ethicon Endo-
Surgery, Inc. v. Covidien LP, 812 F.3d 1023, 1028 (Fed. Cir.
2016). On October 17, 2025, the Director announced that
he would no longer delegate those determinations. See
John A. Squires, An Open Letter from America’s Innova-
tion Agency and Memorandum (Oct. 17, 2025),
https://www.uspto.gov/sites/default/files/documents/open-
letter-and-memo_20251017.pdf [https://perma.cc/94K4-
48E8].
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application and interpretation of statutes related to” the
institution decision, and because the challenge was effec-
tively an attack on the agency’s § 314(a) determination
that the petition warranted review, it was unreviewable.
Id. at 274–76. The Court noted, however, that judicial re-
view remains available where the agency acts “outside its
statutory limits by, for example, canceling a patent claim
for ‘indefiniteness.’” Id. at 275 (citation omitted).
One such reviewable challenge was the subject of SAS
Institute, Inc. v. Iancu, 584 U.S. 357 (2018). There, the pe-
titioner challenged the agency’s decision to institute review
of only some of the challenged claims. SAS, 584 U.S.
at 361–62. The Court found § 314(d) did not apply because
the petitioner was not challenging the agency’s conclusion
that the petitioner “showed a ‘reasonable likelihood’ of suc-
cess sufficient to warrant ‘institut[ing] an inter partes re-
view.’” Id. at 371 (alteration in original) (quoting 35 U.S.C.
§ 314(a), (d)). Rather, the petitioner was challenging the
decision to limit inter partes review to fewer than all the
challenged claims as outside the agency’s authority be-
cause the statute commands the agency to perform a pre-
scribed task it failed to do. Id. at 363–68, 371.
The Court further clarified § 314(d)’s reach in Thryv,
Inc. v. Click-to-Call Technologies, LP, holding that time-
bar determinations under § 315(b) were unreviewable.
590 U.S. 45, 52–54 (2020). The Court explained that
§ 315(b)’s time-bar “is integral to, indeed a condition on, in-
stitution,” since it “sets forth a circumstance in which an
inter partes review may not be instituted.” Id. at 53–54
(cleaned up). So, under Cuozzo, the § 315(b) challenge
raised “‘an ordinary dispute about the application of’ an in-
stitution-related statute,” and was unreviewable under
§ 314(d). Id. at 54 (quoting Cuozzo, 579 U.S. at 271).
Our court has repeatedly held other challenges to be
barred from review by § 314(d), including those framed as
directed to a later agency action. See, e.g., Ethanol Boosting
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Sys., LLC v. Ford Motor Co., 162 F.4th 1151, 1157–58
(Fed. Cir. 2025); Medtronic, Inc. v. Robert Bosch Healthcare
Sys., Inc., 839 F.3d 1382, 1384 (Fed. Cir. 2016); IGT,
144 F.4th at 1366–67. For example, in ESIP Series 2, LLC
v. Puzhen Life USA, LLC, we held that “the Board’s
§ 312(a)(2) real-party-in-interest determination is final
and non-appealable.” 958 F.3d 1378, 1386 (Fed. Cir. 2020).
This was because, despite the appellant’s framing, the
challenge was a contention that the agency should have re-
fused to institute inter partes review. Id.; see also Ethanol,
162 F.4th at 1159.
2
Here, too, we conclude that FedEx’s challenges
grounded in § 312(a)(2) fall within § 314(d)’s scope and are
thus unreviewable. Section 312(a)(2) of title 35 is “closely
tied” to institution. See Cuozzo, 579 U.S. at 275; see also
ESIP, 958 F.3d at 1386. Section 312(a) describes the re-
quirements for a petition to be considered for institution.
And a petition for inter partes review “may be considered
only if . . . the petition identifies all real parties in interest.”
35 U.S.C. § 312(a)(2) (emphases added). Section 312(a)(2)’s
real party in interest requirement clearly serves as a pre-
requisite for and is “integral to” institution. Thryv,
590 U.S. at 53. And while FedEx attempts to cast doubt on
whether § 312(a)(2) is related to the decision to institute by
emphasizing the absence of language expressly referencing
“institution,” this fails in light of our precedent. We have
already held that challenges to the Board’s § 312(a)(2) de-
terminations are unreviewable because § 312(a)(2) is “an
institution-related statute,” notwithstanding the absence
of any express reference to institution. ESIP, 958 F.3d
at 1385–86 (quoting Thryv, 590 U.S. at 54). FedEx’s
§ 312(a)(2)-focused challenges “necessarily target[ ]” the
decision to institute and are beyond our review. See Etha-
nol, 162 F.4th at 1159.
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FedEx argues its appeal remains reviewable because it
challenges the Board’s authority to refuse to determine
whether all real parties in interest have been identified,
especially when that disclosure is disputed. So, as in SAS,
FedEx contends that while its argument involves institu-
tion, it is directed to the Board’s conduct during and after
institution and should not be barred by § 314(d). See SAS,
584 U.S. at 371. As such, FedEx contends its appeal differs
from those barred in prior cases because it is not seeking
review of whether the Board did its real party in interest
analysis correctly, but whether the Board must perform a
real party in interest analysis at all when disclosures are
disputed. FedEx’s attempted distinction fails. The chal-
lenge in SAS concerned how the Board’s review would pro-
ceed after institution and not whether the choice to grant
institution was correct. See id. In other words, the peti-
tioner in SAS was not challenging the fact that the agency
instituted, but rather the manner of execution—that it did
not institute review of all the asserted claims, which the
statutory scheme mandated the agency do. Id.; see also
Thryv, 590 U.S. at 58 (distinguishing the challenge in SAS
as being rooted in “the manner in which the agency’s re-
view ‘proceeds’ once instituted,” whereas the challenge in
Thryv was over “whether the agency should have instituted
review at all” (emphasis added)). And we have held that
“allegations of acting in excess of statutory jurisdiction
‘closely tied to the application and interpretation of stat-
utes related to the [agency’s] decision to initiate’ IPR, with-
out more, do not overcome § 314(d)’s bar.” Ethanol,
162 F.4th at 1159 (quoting Cuozzo, 579 U.S. at 275); see
also SIPCO, LLC v. Emerson Elec. Co., 980 F.3d 865, 869
(Fed. Cir. 2020). FedEx’s challenge that the Board
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exceeded its authority resembles these previously rejected
challenges.7
Ultimately, we look “to the role of the purportedly vio-
lated [statutory] prerequisite . . . in order to better under-
stand the precise target of the appellant’s challenge: if the
challenge [is] focused on a statute which has force only in
the institution context, i.e., a prerequisite for institution,
then the appellant’s challenge necessarily target[s] the in-
stitution decision.” Ethanol, 162 F.4th at 1159. FedEx’s
challenge, although framed to be a challenge over the
“manner” in which the Board’s review proceeded—i.e., con-
ducting the proceeding without making a real party in in-
terest determination, thus exceeding its authority under
§ 312(a)—ultimately still boils down to a challenge over
whether there should have been institution at all.8 And a
conclusion that there should not have been institution is
precisely what FedEx would likely seek on remand if we
were to hear and agree with its § 312(a)(2) arguments.
7 Like those prior challenges, we do not find that
there is something more here that warrants finding
FedEx’s challenges exempted from § 314(d). See, e.g., Eth-
anol, 162 F.4th at 1159–60 (finding challenge barred by
§ 314(d) when the party “merely asserts the Board’s issu-
ance of a ‘stay’ exceeded its statutory authority in the con-
text of the Board’s reconsideration of an institution
decision” without more).
8 FedEx also challenges the lawfulness of the real
party in interest approach articulated in prior Board deci-
sions. Even if we were to agree that the Board had miscon-
strued § 312(a)(2), we cannot review this challenge, absent
exceptions inapplicable here, if it is grounded in a statute
closely tied to institution, which we find § 312(a)(2) is. See
35 U.S.C. § 314(d).
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We therefore conclude that FedEx’s real party in inter-
est-related challenges are unreviewable under 35 U.S.C.
§ 314(d).
B
Turning to the merits of the final written decision, the
parties agree that the only issue on appeal is whether the
Board erred by finding claims 6, 17, and 28 of the ’797 pa-
tent unpatentable based on a combination of two pieces of
prior art, Lau and Buford. In its IPR petition, Qualcomm
challenged the ’797 patent claims asserted against
Roambee, including that claims 6, 17, and 28 would have
been obvious (i) in view of Lau and (ii) in view of Lau and
Buford.9 Lau describes a sensor-based shipment monitor-
ing system that sends notifications to authorized users,
while excluding unauthorized users, and allows them to
control when those notifications are delivered. J.A. 1536,
2:40–42; J.A. 1540, 9:23–30, 10:28–47. Buford describes a
method for configuring privacy settings for location-based
services, allowing users to control when their real-time lo-
cation information is shared and with whom. J.A. 1556
¶ [0012]; J.A. 1559 ¶¶ [0073]–[0077].
1
The Board based its obviousness determination for
claims 6, 17, and 28 on its belief that FedEx had not con-
tested Qualcomm’s challenge on the Lau-Buford grounds.
FWD, 2023 WL 6605258, at *17 (“Having considered the
uncontested evidence, we determine that Qualcomm has
shown by a preponderance of the evidence that claims 6,
17, and 28 are unpatentable as obvious over Lau in view of
9 U.S. Patent No. 7,212,829 (Lau); U.S. Patent Pub.
No. 2010/0151885 (Buford). Other claims of the ’797 patent
were challenged as obvious in view of Ainsworth, U.S. Pa-
tent Pub. No. 2007/0290836, which is not at issue on ap-
peal.
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Buford.” (emphasis added)). But both parties agree that
FedEx had contested Qualcomm’s challenge. Appellant’s
Br. 51–52; Appellee’s Br. 29. As such, it is undisputed that
the Board’s obviousness finding for claims 6, 17, and 28
should at least be vacated, and we agree. See In re Sang-
Su Lee, 277 F.3d 1338, 1342 (Fed. Cir. 2002) (noting agen-
cies are required to “present a full and reasoned explana-
tion of [their] decision[s]” so reviewing courts can perform
“meaningful review”); Provisur Techs., Inc. v. Weber, Inc.,
50 F.4th 117, 124 (Fed. Cir. 2022) (holding the Board vio-
lated the Administrative Procedure Act when it had par-
tially based its obviousness finding on a misunderstanding
that the patent owner had “not dispute[d]” the petitioner’s
unpatentability arguments for some claims).
2
Although both parties agree that the Board’s error
should at least result in vacatur, they disagree on whether
more is warranted. FedEx argues reversal is appropriate
because Qualcomm never responded to or disputed FedEx’s
argument about the Lau-Buford combination. And since
Qualcomm never disputed FedEx’s arguments, FedEx con-
tends that the record supports only the conclusion that
Lau-Buford fails to render claims 6, 17, and 28 obvious.
Qualcomm disagrees, arguing there are unresolved factual
disputes that cannot be decided on appeal in the first in-
stance. Qualcomm also denies that its lack of a “direct[ ]”
response was a concession as to obviousness, and argues
that regardless, its lack of a response “does not negate the
existence of a factual dispute.” Appellee’s Br. 34.
Reversal may be appropriate where the record “sup-
ports only the conclusion that the challenged claims are un-
patentable, where no properly raised issues still need to be
decided” to resolve the patentability challenge. ABS Glob.,
Inc. v. Cytonome/St, LLC, 84 F.4th 1034, 1042 (Fed. Cir.
2023). Here, reversal is improper because there are unre-
solved factual disputes. The Board did not consider FedEx’s
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arguments against unpatentability in light of Lau-Buford,
and it did not determine whether Buford meets the rele-
vant claim limitations. Thus, we vacate and remand for
consideration in the first instance.10
IV
We have considered the parties’ remaining arguments
and find them unpersuasive. For the foregoing reasons, we
conclude that FedEx’s challenges related to § 312(a)(2) and
real parties in interest are barred from review under
§ 314(d). And we conclude that the Board erred in deter-
mining FedEx had not contested Qualcomm’s showing that
claims 6, 17, and 28 of the ’797 patent are unpatentable as
obvious. Thus, we vacate the Board’s finding of obviousness
and remand for the Board to consider the parties’ argu-
ments on the patentability of claims 6, 17, and 28.
VACATED AND REMANDED
COSTS
No costs.
10 FedEx requested that, if we reverse the Board’s de-
termination on Lau-Buford, we remand to the Board to con-
sider obviousness based on Lau alone for claims 6, 17, and
28—an issue the Board did not reach. See Appellant’s
Br. 56; Appellant’s Reply Br. 22–23; FWD, 2023 WL
6605258, at *17 n.10. We leave it to the Board’s discretion
whether to consider the Lau ground on remand.
Case: 24-1236 Document: 104 Page: 15 Filed: 04/29/2026

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