Background
Intellectual Pixels Limited owned United States Patent Number ten million six hundred eighty-one thousand one hundred nine, which covered methods for generating digital images using an external visual server. Sony Interactive Entertainment LLC petitioned for inter partes review of claims one through twelve, arguing the claims were unpatentable as obvious over prior art references including United States Patent Number six million four hundred nine thousand six hundred two, known as Wiltshire. The Patent Trial and Appeal Board initially found the claims not unpatentable but was remanded by the Federal Circuit after the court found substantial evidence supported the opposite conclusion regarding the generating limitation. On remand, the Board issued a second final written decision holding the claims unpatentable as obvious.
The court’s reasoning
The Federal Circuit reviewed the scope of its prior mandate de novo, interpreting it according to both the letter and spirit of the mandate. The court explained that the mandate rule precludes reconsideration of issues actually decided on appeal but allows reconsideration of issues not decided or not within the scope of the previous judgment. The court found that the Board’s first decision only reached the generating limitation, leaving the compressing limitation undecided and outside the scope of the prior appeal. Therefore, the Board was permitted to address the compressing limitation on remand. The court also found that the Board’s finding that Wiltshire was silent regarding the compressed stream was implicitly rejected by the prior decision, which established that Wiltshire disclosed generating new images. Finally, the court found substantial evidence supported the Board’s conclusion that the combination of Wiltshire and Saha disclosed the compressing limitation.
What it means going forward
The decision reinforces that administrative agencies may address alternative grounds for a decision on remand if those grounds were not the basis of the prior appellate judgment. It clarifies the scope of the mandate rule in patent inter partes review proceedings.