Causam Enterprises v. International Trade Commission, No. 2023-1769

Assignment of “Continuations” Found Not to Include “Continuations-In-Part”
By: Jillian Baggett
Edited by: Anthony Berlenbach, Cara Regan, and Brian Kacedon

Abstract
In Causam Enterprises v. International Trade Commission, No. 2023-1769 (Fed. Cir. Oct. 15, 2025), the Federal Circuit determined whether the party asserting a patent, Causam, actually owned the patent. Causam filed a complaint at the International Trade Commission seeking to block imports of smart thermostats. The alleged infringers, Resideo and others, contended that due to a prior assignment of all continuations and divisions of a parent application, Causam did not own the asserted patent, and therefore could not assert it. The Federal Circuit disagreed, confirming Causam’s ownership. Because the prior assignment was silent as to continuations-in-part (“CIPs”), the Federal Circuit determined that the contract excluded the asserted patent (a continuation from a CIP). This meant that the inventor had not transferred his ownership rights to the asserted patent and was instead free to transfer title to Causam.

Background
Causam filed a complaint in the International Trade Commission to prevent Resideo from importing and selling certain smart thermostats. Residio denied infringement and also argued that Causam did not own the asserted patent and therefore could not assert it.

Resideo’s Ownership Challenge
Although the parties disputed the import of various contracts related to predecessor patents of the asserted ’268 patent, resolution of the issue turned on the scope of a single contract: a 2007 assignment of a grandparent application to the asserted patent to a third party, America Connect. The asserted patent was a continuation of its parent, which was in turn a CIP of the grandparent application, meaning the parent added new material as compared to the grandparent application. The 2007 assignment of the grandparent application to America Connect unambiguously assigned “all divisions, reissues [and] continuations.” CIPs were not mentioned, leaving an ambiguity as to whether the CIP application fell under the umbrella of this provision. If so (as Residio contended), then the inventor had already assigned its rights in the CIP application to America Connect in 2007 and Causam did not own and could not assert the grandchild patent. If the 2007 assignment excluded CIPs (as Causam contended), then the CIP application, and all its descendants (including the asserted patent) were validly transferred later on from the inventor to Causam, establishing Causam as the legal owner of the asserted patent. The ITC ultimately found the patent not infringed, and Causam appealed. As a threshold issue, the Federal Circuit considered whether Causam owned the patent to adjudicate if Causam had constitutional standing to appeal the ITC’s order.

Key Findings of the Court
On appeal, the Federal Circuit closely examined the language of the 2007 provision assigning the “[i]nvention” of the grandparent application and “all divisions, reissues, continuations and extensions thereof.” The Court noted that the term “continuations-in-part” was missing from the provision and considered this omission “decisive.” The Court reasoned that to hold otherwise would require “insert[ing] words into the contract that the parties never agreed to.” Further, the Court recognized the well-known difference between continuations and CIPs: only CIPs can include new matter. This distinction has a variety of legal consequences and results in the two application types being regularly treated differently. The Court also noted a lack of additional agreements, evidence, or broad language that would suggest an intent of the parties to include CIPs in the 2007 assignment. Instead, given the lack of external evidence, the Court construed the “continuations” in a way that “respects rather than overrides important distinctions in familiar technology.” Accordingly, the Court held that the inventor had good title to the CIP application in 2014, and had properly assigned it to Causam, making Causam the legal owner of the asserted patent.

Strategy and Conclusion
The Federal Circuit’s decision in Causam v. ITC turned on a single omitted phrase: continuations-in-part. Therefore, contract drafters should be sure to determine the scope of specific terms before choosing to include (or remove) them from assignment provisions, as omissions may be decisive. Relatedly, assignors and assignees should make a concerted effort to explicitly discuss the intended outcome of an assignment, especially regarding future applications that may improve on (or add “new matter”) to an existing invention.

Further Information
For further information, see the Court’s full decision here.

Editors and Authors
The editors and the author are attorneys at Finnegan, Henderson, Farabow, Garrett & Dunner,
LLP.

This article is for informational purposes and does not constitute legal advice.
The views expressed do not necessarily reflect the views of LES or Finnegan.

Share this article: