November 25, 2025

Causam Enterprises, Inc. v. Int’l Trade Comm’n, 155 F.4th 1338 (Fed. Cir. Oct. 15, 2025), provides a lesson in patent assignment drafting and explains why an assignment whose scope expressly included future “continuation” patents and applications but omitted the language “continuation-in-part” would not be read to include a later-filed continuation-in-part (CIP). 

Causam appealed a Commission decision that found no infringement of claim 1 of the patent on appeal (the ’268 patent) and thus no Section 337 violation. 155 F.4th at 1340-42.  A threshold issue for the Court was Causam’s Article III standing to appeal. Id.

The ’268 patent issued from a continuation of a continuation of the ’761 application, which is a CIP that traces back through a continuation and a divisional to the ultimate parent—the ’909 application. Id.  Joseph Forbes assigned the immediate parent of the ’268 patent to Causam’s predecessor-in-name in 2014. Id.  The transferred patent assets included “continuations in whole or part.” Id. (quoting the assignment).  Years earlier, the following events occurred:

1. 2007 – Mr. Forbes assigned the ’909 application to America Connect, Inc. Id. at 1341-42.  This assignment transferred ownership of the “invention” of the ’909 application and “all patents which may be granted therefor” and “all divisions, reissues, continuations and extensions thereof.” Id. (quoting the assignment).  The language “continuation-in-part” was omitted. Id.

1. 2009 – Consert, Inc., a company Mr. Forbes co-founded, succeeded to America Connect’s interest in the ’909 application. Id.

1. 2010 – Mr. Forbes executed an agreement with Consert that assigned to Consert rights in inventions he had developed or would develop as its employee. Id.  A dispute over ownership of intellectual property arose between Mr. Forbes and Consert soon after. Id.

1. 2012 – The ’761 CIP application was filed. Id. at 1344.

1. 2013 – Mr. Forbes and Consert executed a settlement agreement that superseded the 2010 employment agreement and resolved their dispute. Id. at 1341-42.  Under the 2013 agreement, Mr. Forbes assigned to Consert various patents and patent applications, including the ’909 application itself (“Consert Patents”). Id.  The agreement also listed intellectual property expressly excluded from the scope of the assignment (“Excluded Patents”). Id.  The ’761 CIP was among the excluded intellectual property. Id.  Consert paid Mr. Forbes for a license to practice the Excluded Patents. Id.  No rights were assigned back to Mr. Forbes by Consert and the agreement stated that no rights were being granted except as stated. Id.

Causam’s asserted injury for Article III standing was predicated on its interest as owner of the ’268 patent. Id. at 1342-43 (noting Causam did not claim an interest in reversing the Commission's denial of Section 337 relief if it is not the patent owner).  The Court observed that “[w]hat suffices to establish standing, as with other issues, varies with the stage of the litigation: Pleadings that, taken as true, plausibly allege standing suffice to overcome a motion to dismiss for lack of jurisdiction, while evidence—specifically, of the required injury in fact—is required at later stages such as summary judgment or judgment after trial.” Id. at 1343.  It then required Causam to produce evidence showing its ownership of the ’268 patent to meet the injury in fact requirement for Article III standing. Id. at 1343-44 (explaining its reasoning).

The Court determined the ownership issue was purely a legal question of contract interpretation and relied on general principles of contract law as no party suggested any differences in applicable state law mattered. Id. at 1344 (explaining its rationale).  Ultimately, ownership of the ’268 patent turned on the effect of the 2007 assignment to America Connect. Id. at 1344-45.  If that assignment covered the ’761 CIP, then Mr. Forbes did not own it at the time of the 2014 assignment to Causam. Id.  Conversely, if the 2007 assignment did not cover the ’761 CIP, then Causam’s ownership of the ’268 patent was established by the 2014 assignment. Id.  The 2010 employment agreement had no operative effect on ownership because it was expressly superseded by the 2013 agreement. Id. at 1345.  Any rights Mr. Forbes had already lost in the ’761 CIP were not regained under the 2013 agreement because no rights were transferred back to Mr. Forbes and any rights he had in the ’761 CIP at the time of the 2013 agreement were not affected because that agreement excluded the CIP. Id.

Considering the operative language of the 2007 assignment, the Court said the heart of the matter was whether to interpret the language assigning the “invention” of the ’909 application and “all divisions, reissues, continuations and extensions thereof” to include the ’761 CIP. Id. at 1345-46.  The Court’s answer was no and it concluded that Mr. Forbes had ownership of the ’761 CIP at the time of the 2014 assignment to Causam. Id.  The omission of the language “continuations-in-part” from the 2007 assignment was decisive and the Court declined to interpret the word “continuations” as including CIPs. Id.  It explained that such interpretation would “amount to inserting words into the contract that the parties never agreed to because continuations and continuations-in-part are widely understood to be different.” Id.  The Court went on to distinguish the two types of applications and particularly referenced their separate treatment in the MPEP. Id.  It concluded that “[t]he two types of descendant applications are practically and legally distinct, in a way relevant to assignment.” Id.  The Court found it important that “for inventors assigning rights, a continuation may not add any new matter to the parent application, while a continuation-in-part does include new matter, and need only repeat a ‘substantial portion’ of the parent… .  An inventor might well wish to assign away continuations of an invention and keep the rights to continuations-in-part (and the included new matter).” Id.  The Court said this “distinction also has legal consequences for assignments: For a continuation, recordation of assignment of the parent is effective as to the child, while the same is not true of a continuation-in-part… .  Knowing that, an assignee might wish to contract with respect to continuations-in-part differently or separately from continuations.” Id.  The Court said it would be unreasonable to disregard “the familiar and significant distinction” between a term that was used [“continuation”] and one that was not used [“continuation-in-part] in the 2007 assignment. Id.

The Court also declined to extend its reasoning in Regents of University of New Mexico v. Knight, 321 F.3d 1111, 1119–20 (Fed. Cir. 2003), to hold that the assignment of an “invention” encompasses continuations-in-part. Id. at 1346 (discussing the underlying facts of Knight and conclusion that an assignment of an invention and certain types of descendants reached continuations-in-part even though the assignment mentioned only “continuations”).  The Court noted that the 2007 assignment, like the one in Knight, has an “[i]nvention” as its object but found no evidence for reading “invention” as expansively as it did in Knight. Id.  Thus, in the absence of such evidence, the Court said the proper interpretation “is one that respects rather than overrides important distinctions in familiar terminology.” Id.  The Court concluded the 2007 assignment “unambiguously” excluded the ’761 CIP and did not affect Mr. Forbes’s rights in the ’761 CIP or, by extension, the ’268 patent. Id.  Accordingly, Mr. Forbes had good title to the ’268 patent when he assigned it to Causam, Causam owns the patent, and Causam carried its burden to show Article III standing. Id.

In the end, Causam’s challenge to the Commission’s decision that claim 1 of the ’268 patent was not infringed was rendered moot by the Court’s parallel decision in a different appeal affirming the PTAB’s holding that claim 1 is unpatentable for obviousness. Id. at 1346-47.  The Court concluded its parallel decision deprived Causam of a legally cognizable interest in reversal and dismissed the appeal as moot. Id.