Source: IPWatchdog

The Federal Circuit issued a precedential decision in Intellectual Pixels Limited v. Sony Interactive Entertainment LLC, affirming a Patent Trial and Appeal Board finding that claims 1–12 of U.S. Patent No. 10,681,109 are unpatentable as obvious. The dispute centers on a patent claiming methods for generating digital images via an external visual server while a client device handles only user input, transmission, and decompression; Sony petitioned for inter partes review and relied primarily on U.S. Patent No. 6,409,602 (Wiltshire), which disclosed a server-hosted gaming system that generated and transmitted compressed MPEG video streams to clients and identified Doom as a compatible game. In an earlier Board decision the PTAB found Wiltshire did not satisfy the claimed “generating” limitation, and the Federal Circuit vacated that finding in 2023, limited to the generating issue, and remanded for further proceedings.

On remand the Board found Wiltshire satisfied the generating limitation and further concluded Wiltshire disclosed transmission of newly generated images as compressed MPEG streams; combined with U.S. Patent No. 6,404,817’s MPEG standards and Saha (plus an IEEE article on ADSL for claim 2), the Board held claims 1–12 unpatentable as obvious in a second final written decision. Intellectual Pixels argued the Board exceeded the scope of the Federal Circuit’s mandate by addressing the compressing limitation and that the obviousness finding lacked substantial evidence. Writing for the court, Judge Dyk rejected both contentions, explaining the mandate rule limits only issues that formed the basis of the prior judgment, distinguishing Bitmanagement and Laitram precedent, and concluding the Board’s combination of Wiltshire, Saha, the MPEG standard reference, and expert testimony provided substantial evidentiary support; the Federal Circuit affirmed the Board in full and assessed costs to Sony.