In Federal Express Corp. v. Qualcomm Inc., the Federal Circuit addressed an important threshold question in inter partes review practice: whether a patent owner may obtain appellate review of the Patent Trial and Appeal Board’s refusal to decide a disputed real-party-in-interest issue under 35 U.S.C. § 312(a)(2). The court held that it could not review the challenge because it was barred by 35 U.S.C. § 314(d), which makes institution decisions “final and nonappealable.”
RPI Dispute Before the Board
The dispute arose from Qualcomm’s IPR petition challenging a FedEx patent that FedEx had asserted in separate district court litigation against Roambee. Qualcomm was not a party to that litigation. FedEx argued before the Board that Qualcomm had failed to identify Roambee as a real party in interest, as required by § 312(a)(2). FedEx contended that this omission meant the Board could not properly consider the petition.
The Board instituted review and later denied FedEx’s motion to terminate. Rather than decide whether Roambee was in fact a real party in interest, the Board relied on PTAB precedent under which it may decline to resolve an RPI dispute when the determination is unnecessary to the proceeding. The Board reasoned that even if Roambee were added, no time-bar problem would arise because Qualcomm filed the petition within the one-year period applicable to Roambee. The Board therefore declined to decide the RPI question.
The Federal Circuit’s Institution-Stage Analysis
On appeal, FedEx argued that § 312(a)(2) imposes a mandatory statutory requirement: a petition may be considered only if it identifies all real parties in interest. FedEx framed the issue not as a mere disagreement with institution, but as a challenge to the Board’s authority to proceed without making a required statutory determination.
The Federal Circuit rejected that framing. Relying on Cuozzo, Thryv, SAS, and its own precedent, including ESIP Series 2, the court held that § 312(a)(2) is closely tied to institution. In the court’s view, the real-party-in-interest requirement functions as a prerequisite to institution, and a challenge based on that requirement necessarily targets the decision to institute review. That remains true even when the patent owner characterizes the issue as a challenge to later Board conduct or to the Board’s refusal to perform a required analysis.
The court distinguished SAS, where the challenge concerned how an instituted review must proceed after institution. By contrast, FedEx’s challenge ultimately went to whether the IPR should have been instituted at all. Because § 314(d) bars appellate review of such institution-related determinations, the Federal Circuit declined to review FedEx’s RPI-based challenge.
Although the Federal Circuit declined to review FedEx’s institution-related challenge, it did reach the merits of the Board’s obviousness determination. The court vacated and remanded because the Board had treated Qualcomm’s Lau-Buford obviousness ground as uncontested, even though both parties agreed on appeal that FedEx had in fact disputed it; as a result, the Board had not meaningfully addressed FedEx’s arguments or resolved the relevant factual disputes in the first instance.
Practical Takeaways for IPR Counsel
For counsel, the practical takeaway is that real-party-in-interest disputes should be treated as institution-stage battles. They are not issues that can reliably be preserved for appellate correction after a final written decision. Patent owners should raise RPI challenges early, support them with as much concrete evidence as possible, and consider targeted discovery where the record suggests coordination, control, funding, or other facts tying the petitioner to an unnamed party.
Petitioners, meanwhile, should not read the decision as permission to be casual about RPI disclosures. Although appellate review may be unavailable in many cases, an incomplete disclosure can still create risk before the Board, particularly where adding the omitted party would implicate a time bar, estoppel, gamesmanship, bad faith, or prejudice.
In short, both sides should assume that the Board may be the first and last meaningful forum for litigating RPI compliance.
For patent owners and petitioners navigating real-party-in-interest issues in IPR proceedings, careful attention to petition requirements, timing, and the evidentiary record can be critical. Contact Conley Rose to discuss how your organization can develop an effective PTAB strategy and manage institution-stage challenges.