Causam Enters. v. Int’l Trade Comm’n

Authored by: Jeremy J. Gustrowsky

Causam Enterprises, a company specializing in energy management technology, took its patents on “demand response” systems—tools that help utilities manage power usage during peak times—to the International Trade Commission (ITC). They accused makers of smart thermostats, like Resideo and ecobee, of importing products that infringed US Patent 10,394,268. The goal was to block these imports under trade laws. However, the case hit snags over who actually owned the patent and whether the products even infringed it.

On the issue of patent ownership, the inventor, Joseph Forbes, had assigned rights to an early application in 2007 to another company, but that deal only mentioned “continuations” and not “continuations-in-part”—a type of follow-up application that adds new disclosure to an existing patent application. The ‘268 patent stemmed from such a continuation-in-part. The ITC’s initial judge ruled Causam didn’t own it, but the full commission skipped that question and focused on noninfringement.

On appeal, the Federal Circuit stepped in and said Causam owned the patent, stressing that patent law treats continuations and continuations-in-part as different beasts. Failure to differentiate these means you can’t just assume the first covers the second without explicit wording in the contract to address both types of applications.

The court explained that ignoring this distinction would mean rewriting the 2007 agreement, which isn’t allowed. Since Forbes kept rights to the new-matter additions in the continuation-in-part, he could later assign the full ‘268 patent to Causam in 2014. This gave Causam the legal standing to even bring the appeal. To add an additional plot twist: While sorting out ownership, a separate review at the Patent Office had already declared the main claim in the ‘268 patent invalid for being obvious.

In the end, the appeals court dismissed the whole case as moot. With the key claim unpatentable, Causam can’t get import bans anyway, even if ownership and infringement were settled in their favor. It’s a reminder that patent disputes can unravel quickly if the core claims are found invalid.