Opinions — Friday, July 10, 2026

The Federal Circuit affirmed the Patent Trial and Appeal Board's second final written decision holding claims 1–12 of U.S. Patent No. 10,681,109 unpatentable as obvious over prior art references including Wiltshire and Saha. Appellant Intellectual Pixels Limited ("IPL") argued that the Board violated the court's mandate from a prior appeal in which the Federal Circuit had vacated an earlier Board decision finding the claims not unpatentable based on the Board's conclusion that the Wiltshire reference did not disclose "generating" an updated image at the server. On remand, the Board found that Wiltshire—by disclosing use of its system with video games like Doom that required real-time image generation—satisfied both the "generating" limitation and the separate "compressing" limitation. IPL contended the Board was bound by findings from its first decision that Wiltshire was "completely silent" as to the content of compressed video streams, but the Federal Circuit held that the Board's compressing-limitation analysis fell outside the scope of the original judgment and the appellate mandate because the first final written decision rested solely on the generating limitation and did not reach compression as an independent or alternative ground.

The decision clarifies the scope of mandate review when an appellate court vacates an administrative decision on one ground while leaving other issues unaddressed. The court applied established Article III principles that appellate review extends only to issues forming the basis of the judgment below, not to alternative grounds or findings made in passing. Following Laitram Corp. v. NEC Corp. and Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., the panel held that the Board remained free to consider the compressing limitation on remand because it had not been necessary to the first decision or addressed on appeal. The opinion emphasizes that mandate rules bind agencies to matters "actually decided, either explicitly or by necessary implication," but leave open questions mooted by the initial disposition. The court distinguished Bitmanagement Software GmBH v. United States, where findings supporting the first judgment precluded subsequent reconsideration, on grounds that those earlier findings had been essential to the initial appeal's resolution. This framework gives agencies flexibility on remand to address grounds not previously dispositive while foreclosing relitigation of issues squarely decided.