Mandate Rule Bars Relitigation Of Issues Explicitly Or Implicitly Decided On Appeal, Absent Extraordinary Circumstances: Mandate rule “‘forecloses reconsideration of issues implicitly or explicitly decided on appeal.’ For an issue to be implicitly decided, it must be ‘decided by necessary ’ Moreover, in interpreting this court’s mandate, ‘both the letter and the spirit of the mandate must be considered.’” TecSec (Fed. Cir. 10/02/13) (mandate rule did not preclude contesting claim constructions from earlier suit that led to R. 36 affirmance) (citations omitted) (2-1); Omega Patents II (Fed. Cir. 09/14/21) (2-1) (mandate rule did not bar district court from permitting defendant’s damages expert to testify where spirit of remand required district court to revisit its evidentiary rulings in light of the opinion on appeal); Retractable (Fed. Cir. 07/07/14) (where Fed. Cir. had rev’d infringement as to one of two products jury found infringing but not remanded for a new trial on damages, the failure to appeal damages award precluded, under mandate rule, a new trial or reduction on remand of the damages awarded by the jury); Smith & Nephew (Fed. Cir. 03/18/15) (non-precedential) (mandate rule does not preclude deciding on remand issue (here, lost profits) that neither trial court (because it was moot) nor appellate court reached on prior appeal). A court “may only deviate from a decision in a prior appeal if ‘extraordinary circumstances’ exist.” Arcelormittal II (Fed. Cir. 05/12/15) (PTO reissue allowed dependent claim with broader scope than Fed. Cir.’s prior construction of the independent claim: not an extraordinary-circumstances exception to mandate rule, so trial court bound by prior case construction; hence reissue’s independent claim invalid for broadening).
b) limits on new arguments on remand
New Arguments Precluded on Remand to PTAB in Some Circumstances: A petitioner forfeited a new argument on remand about how it would have been obvious to modify prior art to include a feature that was missing under the Court’s construction, where the Court’s construction was consistent with the patent owner’s arguments (and petitioner’s own statements) before the Board and therefore the petitioner was on notice of the construction and should have raised the argument before the Board initially (no later than in reply but perhaps in petition). Wireless Protocol II (Fed. Cir. 07/19/22) (non-precedential) (rev’g PTAB remand decision finding claims unpatentable as obvious).
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