On October 15, 2025, the Federal Circuit issued a decision in Causam Enterprises, Inc. v. International Trade Commission, No. 23-1769, that delivers a curious combination of vindication and defeat. On the one hand, the court held that Causam did, in fact, own the asserted patent and therefore satisfied Article III standing to pursue its appeal. On the other hand, the court declined to reach the merits of infringement because a companion PTAB appeal decided the same day rendered the case moot. The result is a dismissal that nonetheless contains a substantial and precedential analysis of patent ownership, assignment language, and standing in appeals from the ITC.
This opinion will be of interest to anyone litigating patent cases that involve long chains of continuation, divisional, and continuation-in-part applications, especially where assignments use imprecise language. It also provides an important reminder that Article III standing is not a box that can be checked by assertion alone once a case reaches the merits stage. Charles Gideon Korrell believes this decision is best understood as a warning shot: even when the underlying dispute evaporates, the Federal Circuit will not hesitate to decide threshold jurisdictional questions when they matter to its authority to hear a case.
Background of the Dispute
Causam owns a portfolio of patents directed to “demand response” technology, which allows electrical utilities to reduce power demand during peak conditions. In 2021, Causam filed a complaint at the ITC under Section 337 of the Tariff Act, alleging that certain smart thermostats imported by Resideo and others infringed claim 1 of U.S. Patent No. 10,394,268. Causam sought an exclusion order barring importation of the accused products.
The administrative law judge issued an Initial Determination concluding that Causam failed on two independent grounds. First, the ALJ held that Causam did not own the ’268 patent because earlier assignments had transferred ownership of the relevant patent family to a predecessor entity. Second, the ALJ found no infringement by the accused thermostats. The Commission, on review, adopted only the noninfringement finding and expressly declined to take a position on ownership.
Causam appealed to the Federal Circuit, challenging only the noninfringement determination as to claim 1 and as to Resideo’s products. While that appeal was pending, the ’268 patent was challenged in inter partes review. The PTAB ultimately held all challenged claims unpatentable, including claim 1. That PTAB decision was appealed separately, and the Federal Circuit affirmed it in a companion opinion issued the same day.
Against that procedural backdrop, the Federal Circuit faced two questions in the ITC appeal: whether Causam had Article III standing to appeal, and whether any live controversy remained in light of the PTAB decision.
Standing as a Threshold Requirement
The court began with standing. Although the Commission had declined to decide ownership, Causam argued that ownership was a threshold issue because, without it, Causam would lack the injury in fact required for Article III standing. The Federal Circuit agreed.
Relying on Lujan v. Defenders of Wildlife and its own precedent, the court emphasized that standing requirements vary by stage of litigation. At the pleading stage, general allegations may suffice. But once a case reaches a stage supported by a full evidentiary record, a party invoking federal jurisdiction must demonstrate standing with evidence, not merely assertion.
The Commission and intervenors argued that Causam’s assertion of ownership should be enough, citing cases such as Lone Star Silicon Innovations and Schwendimann. The court rejected that argument, explaining that those cases arose at the motion-to-dismiss stage. Here, by contrast, the appeal followed a full trial before the ALJ, and the ownership issue turned on contract interpretation rather than disputed facts.
The court also rejected the argument that statutory authorization to appeal under Section 337 automatically conferred standing. Citing TransUnion LLC v. Ramirez and its own decision in Consumer Watchdog v. WARF, the court reiterated that Congress cannot legislate injury into existence. A statutory right to appeal does not displace the constitutional requirement of injury in fact.
Charles Gideon Korrell notes that this portion of the opinion reinforces a trend in Federal Circuit jurisprudence. Parties cannot rely on procedural posture or statutory hooks to bypass standing once the case moves beyond the pleadings. Ownership must be proven, not presumed.
The Ownership Question and Assignment Language
Turning to the merits of ownership, the court framed the issue narrowly. Ownership of the ’268 patent depended on whether a 2007 assignment executed by the inventor, Joseph Forbes, transferred rights not only to the original application but also to later continuation-in-part applications.
The 2007 assignment conveyed the “invention” of the ’909 application and “all divisions, reissues, continuations and extensions thereof.” Critically, it did not mention continuations-in-part. Years later, Forbes assigned a continuation-in-part application (the ’761 application) and its descendants, including the ’268 patent, to Causam.
The intervenors argued that “continuations” should be read broadly to include continuations-in-part, or alternatively that assignment of the “invention” necessarily encompassed later continuations-in-part. The Federal Circuit rejected both arguments.
Applying basic principles of contract interpretation, the court emphasized that it cannot insert words the parties did not use. Continuations and continuations-in-part are distinct legal concepts, a distinction reflected throughout the Manual of Patent Examining Procedure and patent law generally. A continuation cannot add new matter; a continuation-in-part can. That difference matters, especially to inventors who may wish to assign rights narrowly while retaining the ability to develop new subject matter.
The court distinguished Regents of the University of New Mexico v. Knight, where broader language across multiple agreements supported assignment of continuation-in-part applications. Here, there was no comparable set of agreements or broad language justifying such an interpretation.
Accordingly, the court held that the 2007 assignment did not transfer rights in the continuation-in-part application. Forbes therefore retained ownership of the ’761 application and validly assigned it, and its descendants, to Causam in 2014. Causam owned the ’268 patent and satisfied Article III standing.
Charles Gideon Korrell believes this portion of the opinion will be heavily cited in future ownership disputes. The court’s insistence on respecting the precise language of assignment agreements underscores the risks of boilerplate drafting and the importance of explicitly addressing continuations-in-part when allocating rights.
Mootness and the Limits of Appellate Review
Having resolved standing in Causam’s favor, the court turned to mootness. This is where the case ultimately ended.
Section 337 authorizes exclusion orders only for infringement of a “valid and enforceable” patent. In the companion appeal, the Federal Circuit affirmed the PTAB’s determination that claim 1 of the ’268 patent was unpatentable. Because claim 1 was the only claim at issue in the ITC appeal, Causam no longer had any right to relief.
The court rejected arguments that co-pending litigation or residual interests could keep the case alive. Citing Texas Instruments v. ITC and Hyosung TNS v. ITC, the court explained that once the Commission lacks authority to issue an exclusion order, the appeal becomes moot. Causam conceded at oral argument that affirmance of the PTAB decision would moot the ITC appeal.
Accordingly, the court dismissed the appeal as moot without reaching the noninfringement determination.
Practical Takeaways
This decision offers several lessons.
First, standing matters at every stage, and appellate courts will scrutinize it even when the agency below did not. Parties appealing from the ITC should be prepared to prove ownership with evidence, particularly when assignments are contested.
Second, assignment language matters enormously. The omission of “continuations-in-part” was decisive. Those drafting or reviewing patent assignments should treat that omission as intentional unless the agreement clearly indicates otherwise. Charles Gideon Korrell notes that this case is a reminder that ambiguity tends to be resolved by what the contract actually says, not what one party later wishes it had said.
Third, parallel PTAB proceedings can overtake ITC litigation entirely. Even a successful standing argument cannot preserve an appeal if the asserted claims are later held unpatentable. Strategic coordination between ITC actions and PTAB defenses remains critical.
In the end, Causam v. ITC is a case where the Federal Circuit answered an important legal question even as it closed the courthouse door. Ownership was clarified, standing was secured, but the victory came too late to matter. For litigants, that may be cold comfort, but for practitioners, the guidance is valuable and likely to endure.