in Re Nokia Inc. and Nokia Corporation v. Int’l Trade Comm’n, 690 F.3d 1318, 1330 Fed. Cir. 2012 . On remand, the Com- mission…

United States Court of Appeals
for the Federal Circuit
______________________
IN RE NOKIA INC. AND NOKIA CORPORATION,
Petitioners.
______________________
2014-133
______________________
On Petition for Writ of Mandamus to the United
States International Trade Commission in No. 337-TA-
613.
______________________
ON PETITION
______________________
P ATRICK J. F LINN, Alston & Bird LLP, of Atlanta,
Georgia, for petitioners. With him on the petition were
J OHN D. HAYNES ; and ROSS R. BARTON , of Charlotte,
North Carolina.
______________________
Before N EWMAN, MAYER , and BRYSON, Circuit Judges.
Dissenting opinion filed by Circuit Judge N EWMAN.
P ER CURIAM .
O R D E R
This 19 U.S.C. § 1337 case comes before us for a
second time. On the first appeal, we reversed an order of
the International Trade Commission finding infringement
and remanded the matter for additional proceedings.

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IN RE NOKIA INC. 2
InterDigital Commcn’s, LLC v. Int’l Trade Comm’n, 690
F.3d 1318, 1330 (Fed. Cir. 2012). On remand, the Com-
mission determined that petitioners had waived any
argument that the scrambling codes in their accused
systems are not transmitted as required by the patent
claims in the underlying investigation. Asserting that the
decision on remand unlawfully deviates from our man-
date, petitioners seek a writ of mandamus to compel the
Commission to address their non-infringement argument.
Although mandamus is an available remedy to en-
force compliance with a prior mandate, see Will v. United
States, 389 U.S. 90, 95-96 (1967), nothing in our prior
decision compelled the Commission to address the peti-
tioners’ non-infringement contention. The language cited
by petitioners in the original opinion simply explained
that, as to an issue they sought to raise as an alternative
ground for affirmance, that issue could not be addressed
by this court, as it was not the rationale of the agency’s
decision on appeal. We explained that petitioners were
free to raise the issue, if they chose to do so, on remand.
But that did not suggest, and did not mandate, that the
Commission could not consider whether the issue had
been preserved for review. To the extent that petitioners
seek to challenge the merits of the Commission’s waiver
determination, those arguments can be raised on appeal
after judgment.
Accordingly,
I T I S O RDERED T HAT :
The petition for a writ of mandamus is denied.
F OR THE COURT
/s/ Daniel E. O’Toole
Daniel E. O’Toole
Clerk of Court

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United States Court of Appeals
for the Federal Circuit
______________________
IN RE NOKIA INC. AND NOKIA CORPORATION,
Petitioners.
______________________
2014-133
______________________
On Petition for Writ of Mandamus to the United
States International Trade Commission in No. 337-TA-
613.
N EWMAN, Circuit Judge, dissenting.
On the initial appeal of the decision of the Interna-
tional Trade Commission, this panel referred to Nokia’s
argument that “there can be no infringement in this case
because the scrambling codes in the Nokia system are not
transmitted,” and ruled: “That issue, if Nokia wishes to
raise it again before the Commission, may be raised on
remand.” InterDigital Commc’ns, LLC v. Int’l Trade
Comm’n, 690 F.3d 1318, 1329 (Fed. Cir. 2012). That
remand instruction is clear, and the Commission is re-
quired to follow it, as its own Investigative Staff acknowl-
edged. Office of Unfair Import Investigations Resp. in
Supp. of Resp’t’s Pet. for Recons. at 3–4 (“In [our] view,
the Commission is bound by the Federal Circuit’s express
instruction . . . .”). The Commission is required to follow
this court’s mandate. My colleagues on this panel err in
holding otherwise.
The Commission refused to permit Nokia to argue
that the scrambling codes in the Nokia system are not

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IN RE NOKIA INC. 2
transmitted, defying this court’s order. My colleagues on
this panel ratify that action, erasing the plain words that
the issue “may be raised on remand.” In In re Sanford
Fork & Tool Co., 160 U.S. 247, 255 (1895), and again in
Briggs v. Pa. R. Co., 334 U.S. 304, 306 (1948), the Court
explained that “an inferior court has no power or authori-
ty to deviate from the mandate issued by an appellate
court.” See also, e.g., City of Cleveland v. Fed. Power
Comm’n, 561 F.2d 344, 346 (D.C. Cir. 1977) (“The decision
of a federal appellate court establishes the law binding
further action in the litigation by another body subject to
its authority.”); Burrell v. United States, 467 F.3d 160,
165 (2d Cir. 2006) (“[W]here issues have been explicitly or
implicitly decided on appeal, the district court is obligated
on remand to follow the decision of the appellate court.”)
(internal quotation marks omitted).
An adjudicatory body subject to the appellate court’s
authority is without power to negate or ignore the man-
date of the appellate court. Cleveland, 561 F.2d at 347;
Bankers Trust Co. v. Bethlehem Steel Corp., 761 F.2d 943,
949 (3d Cir. 1985) (“A trial court must implement both the
letter and spirit of the mandate, taking into account the
appellate court’s opinion and the circumstances it em-
braces.”); Piambino v. Bailey, 757 F.2d 1112 (11th Cir.
1985); Colville Confederated Tribes v. Walton, 752 F.2d
397, 400 (9th Cir. 1985); Cherokee Nation v. Oklahoma,
461 F.2d 674, 678 (10th Cir. 1972). Yet the Commission’s
violation of this rule is now ratified by my colleagues.
I understood our mandate as did Nokia and the
Commission’s Investigative Staff, that we authorized
Nokia to raise its scrambling-code argument on remand to
the Commission. We stated: “That issue, if Nokia wishes
to raise it again before the Commission, may be raised on
remand.” Nokia, 690 F.3d at 1329. It could not be clearer
that Nokia may raise the issue on remand if it wishes.
The issue of scrambling codes is fundamental to the issue
of infringement as was decided on appeal, see United

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IN RE NOKIA INC. 3
States v. Iriarte, 166 F.2d 800, 803 (1st Cir. 1948), and its
relevance was explored in this court’s opinion. See San-
ford Fork, 160 U.S. at 256 (“It has long been recognized
that the court’s opinion may be consulted to ascertain the
intent of the mandate.”).
In the present case, the Commission on remand solic-
ited comments from the parties as to further proceedings.
The parties debated the remand reference to scrambling
codes, and the Commission then discarded this court’s
instruction that the scrambling code issue may be raised
on remand, and announced that the issue was “waived.”
It was not waived. Nokia had raised the scrambling code
issue several times; starting with Nokia’s Pre-Hearing
Brief, then in its Post-Hearing Brief, its proposed Find-
ings of Fact, its Contingent Petition for Review, and again
in its brief before this court. Although the Commission
did not base its decision on this issue, this issue was not
waived by Nokia.
My colleagues now state that their words “may be
raised” by Nokia did not mean that the Commission must
permit the issue to be raised by Nokia. If my colleagues
did not intend these words to be understood as permitting
Nokia to raise the issue, they should have been clear.
Indeed, I understood this court’s words in the same way
as did Nokia and the Commission’s staff attorneys, and I
joined in the mandate with the understanding that this
potentially controlling issue could be pursued before the
Commission. It is our responsibility to assure that our
mandate is applied. See In re MidAmerican Energy Co.,
286 F.3d 483, 486 (8th Cir. 2002) (“Ultimately, [w]e have
not only the power, but also a duty to enforce our prior
mandate to prevent evasion.”) (internal quotation marks
omitted).
Nokia duly raised its scrambling-code argument on
remand, as we authorized. From my colleagues’ ruling

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IN RE NOKIA INC. 4
that the Commission properly refused to permit Nokia to
raise the issue we authorized, I respectfully dissent.

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