Federal Express Corporation v. Qualcomm Incorporated, et al.

This case asks whether courts can instruct an agency to correct a statutory error the agency admits it made. Under the America Invents Act, the Patent Office may consider petitions for inter partes review “only if” they “identif[y] all real parties in interest.” 35 U.S.C. § 312(a)(2). Here, the Office refused to decide whether a petition satisfied this requirement. It nonetheless conducted trial and issued decisions finding some of FedEx’s claims unpatentable. Though the Office originally defended its actions, it now admits they were wrong. Multiple cases from this Court authorize review of such statutory violations. Yet despite that assurance, § 312’s mandate, and the Office’s admitted error, the Federal Circuit ruled 35 U.S.C. § 314(d) barred judicial review of the agency’s mistake. To the Federal Circuit, enforcing § 312(a)(2)’s requirement merely “boils down to” a dispute over “whether to institute inter partes review,” which § 314(d) precludes from appeal. The Federal Circuit thus held the Office’s admitted statutory violation unreviewable, contrary to this Court’s precedent. The question presented is thus: Does 35 U.S.C. § 314(d) bar judicial review of the Patent Office’s refusal to determine whether a petition identifies all real parties in interest when § 312(a)(2) authorizes the Office to consider petitions “only if” they identify “all” such parties?