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A recent precedential Federal Circuit decision further clarifies the limited scope of judicial review over PTAB institution-related rulings, holding that refusal by the Patent Trial and Appeal Board to resolve a disputed real-party-in-interest issue under 35 U.S.C. § 312(a)(2) is unreviewable on appeal. The April 29, 2026, decision in Federal Express Corporation v. Qualcomm Incorporated, No. 24-1236, provides important considerations for both petitioners and patent owners on institution-stage challenges and what remains open on appeal.   

Background

The case arises from inter partes review (IPR) petitions filed by Qualcomm Incorporated challenging four of Federal Express Corporation’s patents, including U.S. Patent No. 8,766,797 (the ’797 patent) related to systems and methods for accessing sensor-derived shipment information.

In February 2021, FedEx sued Roambee Corporation (since rebranded as Decklar) in the District of Delaware, asserting six FedEx patents, including the ’797 patent. Service of the complaint started Roambee’s one-year window under 35 U.S.C. § 315(b) to file its own IPR. On the very last day of that window, Qualcomm — a non-party to the Delaware litigation — filed IPR petitions targeting four of the six asserted patents. Qualcomm identified the Roambee litigation as a related matter but did not list Roambee as a real party in interest.

FedEx opposed institution under § 312(a)(2), which provides that an IPR petition may be considered only if it identifies all real parties in interest. The board declined to resolve the issue. Instead, the board held that it need not determine whether an unnamed party is a real party in interest where doing so is unnecessary to resolve the proceeding. The board instituted IPR, denied a later motion to terminate, and issued a final written decision finding all challenged claims unpatentable. FedEx appealed.

The Primary Issue on Appeal

Under 35 U.S.C. § 314(a), the director (or the board exercising delegated authority) decides whether to institute the requested inter partes review, and under 35 U.S.C. § 314(d), institution decisions are final and generally unreviewable. The Supreme Court held in Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261 (2016), that § 314(d) bars review of matters “closely tied to the application and interpretation of statutes related to” the institution decision. Challenges aimed at whether the agency properly instituted review fall squarely within that bar. The Federal Circuit extended the same framework to § 312(a)(2) real-party-in-interest determinations in ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378 (Fed. Cir. 2020).

The Supreme Court has carved out a narrow exception where the agency acts outside its statutory authority after institution. In SAS Institute, Inc. v. Iancu, 584 U.S. 357 (2018), the petitioner did not challenge whether review should have been instituted, but rather how the board conducted the review after institution.

The question for the Federal Circuit was therefore whether FedEx’s challenge fit within the SAS exception or, instead, was an institution challenge.

The Federal Circuit’s Analysis

The Federal Circuit concluded that FedEx’s challenges “grounded in § 312(a)(2)” were not reviewable. The court viewed the real-party-in-interest requirement of § 312(a) as a threshold condition for institution and “integral to” that decision. Because the requirement has force only at the institution stage, any defect in the board’s handling of it necessarily targets the institution decision, regardless of how the challenge is framed. FedEx’s argument was an attack on whether institution should have occurred at all, and § 314(d) forecloses that attack on appeal.

The court rejected FedEx’s effort to invoke SAS. The challenge in SAS addressed a post-institution failure to follow a clear statutory guideline — the duty to decide all challenged claims — and did not seek to undo institution. By contrast, the relief FedEx ultimately sought — vacatur of the final written decision based on a § 312(a)(2) defect — would, in substance, mean the board should not have instituted at all. Reaffirming its prior holdings in ESIP and Ethanol Boosting Systems, LLC v. Ford Motor Co., 162 F.4th 1151 (Fed. Cir. 2025), the court emphasized that allegations of acting in excess of statutory jurisdiction “closely tied to the application and interpretation of statutes related to” the agency’s decision to initiate IPR, without more, do not overcome § 314(d)’s bar.

FedEx fared better on the merits, where the Federal Circuit vacated the board’s obviousness determination as to claims 6, 17, and 28 of the ’797 patent and remanded the case.

Key Takeaways

This decision reinforces several important principles for IPR practice:

  • § 312(a)(2) is not a procedural “gotcha.” Alleged defects in identifying real-parties-in-interest are unlikely to create appealable issues.
  • “Manner of proceeding” framing will not revive institution-tied challenges. The court rejected FedEx’s attempt to recast a § 312(a)(2) objection as a post-institution procedural error. Genuine SAS-style review remains limited to deviations from a clear statutory guideline after a valid institution.
  • Focus on the PTAB. The Federal Circuit’s ability to revisit PTAB decisions on appeal is significantly constrained, particularly for threshold and institution-stage determinations, so clients must focus on winning the fight at the PTAB level.

For practitioners, the message is consistent with the post-Cuozzo line of cases: Treat institution-stage arguments as decisive, and do not count on the Federal Circuit to revisit them later.