The Federal Circuit has vacated a determination by the United States Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB or Board) that certain claims of a FedEx patent were unpatentable as obvious.
FedEx owns US Patent No. 8,766,797, titled “Sensor Based Logistics System,” which describes systems and methods for providing access to information about shipments from sensors.
As the court explains,
Generally, the system features sensors attached to or included in items to be tracked—such as packages, shipping containers, or vehicles—that can be associated with a tracking number. These sensors collect location and environmental data and send information to, and receive information from, a tracking center. The ’797 patent purports to improve upon prior systems by enabling greater customization and control over shipment notifications through adjustments to the specificity, frequency, and timing of reporting.
Claim 6 is representative:
6. The method of claim 1, wherein restricting the party from accessing the received sensor information further comprises the step of:
reporting the received sensor information to the party after a predetermined time delay.
(Emphasis added by court.)
In 2021, FedEx sued Roambee Corporation, asserting infringement of six of FedEx’s patents, including the ’797 patent.
On Roambee’s IPR filing deadline, Qualcomm filed inter partes review (IPR) petitions challenging on obviousness grounds four of the six patents FedEx asserted in the Roambee litigation, including the ’797 patent.
FedEx opposed institution of the IPR, arguing Qualcomm’s failure to list Roambee as a real party in interest meant that the PTAB was precluded from considering the petition under 35 U.S.C. § 312(a)(2).
The Board disagreed and instituted review on October 11, 2022.
The Board then determined that all of the FedEx patent claims were unpatentable as obvious over the asserted prior art.
FedEx appealed.
The court noted that “Obviousness is a question of law that is based on underlying factual findings.”
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 prior art reference Lau and (ii) in view of Lau and prior art reference Buford.
As the court explained,
Lau describes a sensor-based shipment monitoring system that sends notifications to authorized users, while excluding unauthorized users, and allows them to control when those notifications are delivered. … Buford describes a method for configuring privacy settings for location-based services, allowing users to control when their real-time location information is shared and with whom.
The court noted that the Board had based its obviousness determination for claims 6, 17, and 28 on its belief that FedEx had not contested Qualcomm’s challenge on the Lau-Buford grounds.
The Board had stated that
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 Buford.
(Emphasis added by court.)
In fact, said the court, both parties agreed that FedEx had contested Qualcomm’s challenge. Thus, said the court, it was undisputed that the Board’s obviousness finding for claims 6, 17, and 28 should be vacated.
FedEx argued that reversal was appropriate because Qualcomm never responded to or disputed FedEx’s argument about the Lau-Buford combination.
The court disagreed, saying that reversal was improper because there were unresolved factual disputes.
Said the court,
The Board did not consider FedEx’s arguments against unpatentability in light of Lau-Buford, and it did not determine whether Buford meets the relevant claim limitations.
Thus, the court vacated and remanded.
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