In Intellectual Pixels Ltd. v. Sony Interactive Entertainment LLC, [2024-2174] (July 10, 2026), the Federal Circuit affirmed the PTAB decision holding claims 1–12 of U.S. Patent No. 10,681,109 unpatentable as obvious.
The ’109 patent discloses methods for generating digi-tal images using an external visual server and systems im-plementing the disclosed method. The ’109 patent’s purported advance over this prior art is said to be using the external server to handle all of the visual processing, such that the client device merely re-ceives user input, transmits that input information to the external server, receives a compressed image from the ex-ternal server in response, and decompresses it so that it can be displayed to the user.
Sony Interactive petitioned for inter partes review of claims 1–121 of the ’109 patent, arguing that the ’109 patent claims are unpatentable as obvious over several prior art references. In the Board’s first final written decision, it concluded that Sony had not shown that the challenged claims were unpatentable. The Board concluded that Wiltshire did not disclose “generating” an image at the server because, in its view, Wiltshire only disclosed the external server’s “select[ing]” an image from a predetermined set to display rather than rendering a new (“updated”) image as the claims require. The Federal Circuit vacated the Board’s decision and remanded, concluding that substantial evidence did not support the Board’s finding that Wiltshire did not disclose generating a new image.
On remand, in accordance with our decision, the Board recognized that Wiltshire satisfied the generating limitation of the challenged claims. The Board further concluded that the compressing limitation was also satisfied and issued a second final written decision holding the challenged claims unpatentable as obvious over Wiltshire in combination with other prior art references.
In this second appeal, IPL argued that the Board’s second final written decision exceeded our mandate because in its first final written decision the Board made two findings not set aside in our opinion but which the Board did not adhere to on remand. First, that nothing in Wiltshire suggests that it could have supported Doom in the manner proposed by petitioner, and second that Wiltshire’s disclosure is completely silent as to the content or origin of that compressed video MPEG stream. However, the first finding was vacated as unsupported. The second finding was not within the scope of the Board’s first written decision. Because the Board’s decision as to obviousness was based on the generating limitation, any findings of fact as to the compressing limitation were not subject to appeal, were not decided by us, and were not part of our mandate.
The Federal Circuit said “The parties can only appeal issues that formed the basis for a judgment. Issues that do not form the basis of the judgment are outside the scope of an appeal.
The Federl Circuit rejected IPL’s alternate contention that the written decision was not supported by substantial evidence, identifying the substantial evidence supporting the Board’s decision.
