IP Law Daily, PATENT—Fed. Cir.: Prior mandate controlled issues which ought to have been considered by PTAB on remand, (Apr 24, 2025)

By Kevin M. Finson, J.D.

The patentability of a claim should no longer have been considered at issue by the Patent Trial and Appeal Board after it decided the issue once and after the Federal Circuit affirmed that decision, because the court had specifically remanded the case for reconsideration of a separate issue.

The Patent Trial and Appeal Board erred in considering an issue outside a prior mandate on remand, a divided panel of the U.S. Court of Appeals for the Federal Circuit has held. The court previously affirmed the Board’s decision that independent claim 1 of the patent at issue was not patentable, so it was improper for the Board to revisit that issue instead of addressing the issues specifically remanded to it. The court reiterated the unpatentability of claim 1 on the ground of anticipation and directed the Board on remand to independently reevaluate the patentability of certain claims that depend from claim 1 (Valve Corporation v. Ironburg Inventions Ltd., No. 2023-1725 (Fed. Cir. April 23, 2025)).

Ironburg Inventions Ltd. (Ironburg) was the owner of U.S. Patent No. 9,289,688 (the ’688 patent) which was directed to a hand-held games controller including controls located on the rear and positioned to be operated by the middle finger of the user. Valve Corporation (Valve) petitioned for inter partes review on the grounds of anticipation and obviousness. The Board found that claims 1, 2, 9, 10, 20, 22, 27, 28, and 30 were shown to be unpatentable, but that claims dependent claims 18, 19, 21, 26, and 29 were not. Both parties appealed and on appeal the Federal Circuit on August 17, 2021 (Valve I) affirmed the anticipation of claim 1, vacated the decision as to the dependent claims, and remanded for the board to consider Valve’s arguments as to the dependent claims in view of its ruling on whether a particular prior art reference was in fact prior art.

On remand, the Board reconsidered its position on claim 1 and did not independently address the remaining claims because they depended from claim 1. Valve appealed again.

Mandate rule. The court sua sponte raised the issue of whether the Board’s consideration of claim 1, after its anticipation had been affirmed by the Federal Circuit on the first appeal, was contrary to the mandate of the appellate court. The court explained that the Board, in compliance with the mandate, ought to have considered whether the dependent claims were patentably distinct from claim 1, rather than reconsidering claim 1 and not directly considering the dependent claims. The court remanded with instructions for the Board to address whether Valve had shown the dependent claims were patentably distinct.

Motivation to combine. The Board had found that there was not a motivation to combine two prior art references relied upon by Valve, which Valve contended taught a game controller with an alternative rear geometry including rear buttons and a curved back. The Board had recognized that the technology was simple and the level of skill required was low, but had held that Valve’s evidence on motivation to combine was conclusory.

The court held that the Board failed to decide necessary fact issues such as the specific teachings of these references in reaching this conclusion, and that the Board erred by disregarding the testimony of Valve’s expert in its reply when that testimony was properly within the allowed scope of a reply.

The Federal Circuit vacated the decision of the Board and remanded for further proceedings.

Opinion concurring in the result. Circuit Judge Sharon Prost wrote separately, concurring in the result and joining Part II of the majority’s opinion. However, Judge Prost took issue with the majority’s findings (1) that the Board violated the court’s mandate in Valve I, and (2) that collateral estoppel required the Board to conduct a “patentably distinct” analysis as to certain claims. Judge Prost did not view the Board’s decision as reevaluating the patentability of claim 1. Regarding collateral estoppel, Judge Prost observed that “those issues are complicated, they were not briefed, and their consideration is unnecessary to this appeal’s resolution.”

The Case is No. 23-1725.

Judge: Dyk, T.

Attorneys: Patrick A. Lujin (Hardy & Bacon, L.L.P.) for Valve Corp. Gregory S. Tamkin (Dorsey & Whitney LLP) for Ironburg Inventions Ltd.

Companies: Valve Corp.; Ironburg Inventions Ltd.

Cases: Patent FedCirNews USPTO