Federal Circuit’s remand order stating that a specific argument —“may be raised on remand” did not require the International Trade Commission to consider that argument if it had been waived.

The International Trade Commission found that Petitioner infringed a certain patent dealing with transmitted scrambling codes. Petitioners appealed, and the Federal Circuit reversed and remanded. During the first appeal, Petitioners apparently argued that they did not infringe because the scrambling codes in their accused devices were not transmitted in the manner claimed by the patent-in-suit. In its remand order, the Federal Circuit stated that the non-infringement issue “may be raised on remand.” Petitioners attempted to raise their non-infringement argument with the International Trade Commission on remand, but the Commission ruled that Petitioners had waived that argument. Petitioners sought a writ of mandamus to require the Commission to hear Petitioners’ non-infringement argument.

The Federal Circuit denied the petition. The court stated that its previous order simply invited Petitioners to raise their non-infringement argument with the Commission, and was not a mandate that the Commission consider the substance of the argument. The court also found that Petitioners could argue the merits of the Commission’s waiver determination on appeal after any judgment.

Judge Newman dissented, and argued that the majority deviated from the plain meaning of the Federal Circuit’s initial remand order. The phrase “may be raised on remand” was, in Judge Newman’s opinion, a clear mandate that required the Commission to hear Petitioners’ non-infringement argument on the merits. She also stated that Petitioners had, in fact, not waived their non-infringement argument because they raised it in the pre- and post-hearing briefs before the Commission, their proposed findings of fact, and their contingent petition for review. Judge Newman believed that this was enough evidence to show that Petitioners had reserved the right to raise the argument.