Causam Enterprises, Inc. v. ecobee Technologies ULC, No. 2024-1958 (Fed. Cir. (PTAB) Oct. 15, 2025). Opinion by Taranto, joined by Chen and Stoll.
Causam asserted a patent that addresses techniques for actively controlling electric power load management for individual customers. ecobee filed an IPR petition challenging most of the claims. After institution, Causam argued that the Patent Trial and Appeal Board could not properly consider ecobee’s petition because of an ownership issue. ecobee named Causam as the patent owner in the petition, but in a separate ITC proceeding ecobee had argued that Causam is not the owner.
The Board found that it could properly consider the IPR petition because Causam asserted ownership of the patent and ecobee complied with the statutory service requirements by serving Causam, the patent owner of record. The Board then held all challenged claims unpatentable for obviousness, and Causam appealed.
The Federal Circuit determined that Causam had constitutional standing to appeal, ruling that “the record evidence meets the governing standard.” Causam is the assignee of record for the patent, and Causam “unequivocally identified” itself to the Board as the patent owner. The record contained no contrary evidence, and thus Causam had standing to appeal the Board’s unpatentability ruling.
The Federal Circuit next ruled that the Board did not commit constitutional error by not making any findings as to ownership. Causam argued that the Board’s failure to resolve ownership denied someone else—the person that ecobee but not Causam contends is the actual owner—notice of the proceeding, denying that person due process. But the Federal Circuit held that the right to assert such a due process violation “does not belong to Causam, but to whoever might be the true owner.” Also, Causam “never squarely asked the Board to determine the identity of the true owner of the patent.”
As to the merits of the Board’s unpatentability determination, Causam argued that the Board improperly construed a claim limitation. But the Federal Circuit affirmed the construction. The court determined that the claim language “does not support Causam’s narrow construction.” Also, Causam’s construction “would produce the disfavored result of excluding embodiments disclosed in the specification.” The court thus affirmed the Board’s unpatentability findings because Causam made “no meaningful challenge to the obviousness determination independent of its claim-construction challenge.”
Causam Enterprises, Inc. v. ITC, et al., No. 2023-1769 (Fed. Cir. (ITC) Oct. 15, 2025). Opinion by Taranto, joined by Chen and Stoll.
Causam filed a complaint in the ITC seeking to exclude importation of smart thermostat products of respondents Resideo, Itron, ecobee, and Alarm.com. Causam alleged infringement of certain patents, including the patent at issue in the ecobee IPR proceeding discussed above.
The ALJ determined that the accused products did not infringe any of the patents and that, regardless, Causam did not own the patents. On review, the Commission affirmed the ALJ’s finding of no infringement but took no position on the question of ownership of the patents. Causam then appealed, challenging only the noninfringement determination as to just claim 1 of one of the patents (the patent at issue in the ecobee IPR proceeding) and only as to one respondent’s products (Resideo’s products).
In the appeal, Causam asked the Federal Circuit to hold both that it owns the patent and that claim 1 is infringed by Resideo. The Federal Circuit first addressed ownership and determined that Causam owns the patent. The patent issued from a series of applications consisting of a continuation of a continuation of a continuation-in-part of a continuation of a division of the parent application. The Federal Circuit noted that “the key point is that a continuation-in-part is in the line of descent from the [parent] application to the [patent-in-suit].”
The inventors’ assignment of the rights began with an assignment transferring ownership of the “invention” of the parent application and “all divisions, reissues, continuations and extensions thereof.” “Importantly,” the Federal Circuit explained, the assignment “does not list ‘continuations-in-part.’”
On that backdrop, the Federal Circuit determined that Causam had Article III standing to appeal the Commission’s final determination. The court concluded that Causam owns the patent, and thus has standing, because “the omission of ‘continuations-in-part’ from the coverage of the [operative] assignment at issue here is decisive.” The court rejected the argument that the word “continuations” in the assignment should be read to include continuations-in-part. The Federal Circuit distinguished precedent where the court had held that an assignment “reached continuations-in-part even though the assignment mentioned only ‘continuations.’” The court distinguished that precedent because, even though the assignment contained the same language that is at issue here, the prior case involved “two additional agreements” and “it was the combination of all three agreements” that encompassed continuation-in-part applications.
In the end, the Federal Circuit ruled that the assignment here “unambiguously excludes” the continuation-in-part application. Thus, the inventors still had rights in the application when they later assigned it to Causam through a separate assignment.
After determining Causam had standing, the Federal Circuit considered the merits of Causam’s appeal and ruled that it was moot based on the affirmance of the Patent Trial and Appeal Board’s finding of unpatentability (in the separate appeal summarized above). The Federal Circuit thus dismissed this appeal as moot.
Brita LP v. ITC, et al., No. 2024-1098 (Fed. Cir. (ITC) Oct. 15, 2025). Opinion by Prost, joined by Reyna and Chen.
Brita filed an ITC complaint seeking to exclude water filters that it alleged infringed a patent directed to gravity flow fluid filtration systems for removing contaminants from water. The patent characterizes filters in terms of a performance metric it calls “Filter Rate and Performance (FRAP) Factor.” The claims at issue require a FRAP factor “of about 350 or less.”
The Commission observed that the only type of filter disclosed in the patent as meeting the claimed FRAP factor of 350 or less is a filter media called “carbon block.” The Commission then determined that the asserted claims were invalid (1) for lack of written description as to any filter media meeting the claimed FRAP factor other than carbon-block filters, (2) for lack of enablement as to non-carbon-block filters, and (3) because the term “filter usage lifetime claimed by a manufacturer or seller of the filter” was indefinite. Brita appealed.
The Federal Circuit affirmed as to lack of written description and lack of enablement, and did not reach the issue of indefiniteness.
As to written description, the court ruled that substantial evidence supported the Commission’s determination. While the claims broadly cover any “filter media” that achieves a FRAP factor of 350 or less, “the specification describes only a single type of filter media that can meet the claimed FRAP factor—carbon block.” The patent provided working examples only of carbon-block filters, and “the inventors themselves testified that they did not invent any non-carbon-block filters that would meet the claimed FRAP factor.”
As to enablement, the Federal Circuit agreed with the Commission that it would take undue experimentation to make and use non-carbon-block filters that meet the claim requirements. Relying on much of the same evidence relied on for the written-description ruling, the court emphasized the “unpredictable nature of the FRAP equation itself due to the interrelatedness of its input characteristics.” And the court determined that “importantly, the patent does not explain how to adjust the various characteristics to achieve the claimed FRAP factor … for any filter media besides carbon block.”
Inland Diamond Products Co. v. Cherry Optical, Inc., No. 2024-1106 (Fed. Cir. (E.D. Wis.) Oct. 15, 2025). Opinion by Prost, joined by Reyna and Chen.
In 2019, the Patent Trial and Appeal Board issued final written decisions in two IPRs finding unpatentable some but not all claims of two patents owned by Inland. In 2020, Inland filed a patent-infringement lawsuit against Cherry, asserting claims that had survived the IPR process. The asserted claims depended exclusively from claims found to be unpatentable in the IPRs.
On Cherry’s motion, the district court granted summary judgment that the asserted claims were invalid for obviousness. The court concluded that, because the asserted claims depend from—and thus contain the limitations of—claims found to be unpatentable, issue preclusion prohibited relitigating validity as to those limitations. The court thus focused on the remaining limitations and, on considering the parties’ arguments and evidence, awarded Cherry summary judgment of invalidity. Inland appealed.
The Federal Circuit vacated and remanded. The court relied on recent precedent holding that a “well-known exception” to issue preclusion is where “the second action involves application of a different legal standard.” Under that precedent, “the Board’s fact findings under a lower standard of proof (preponderance) do not have issue-preclusive effect in district-court invalidity proceedings, where facts must be proven under a higher standard of proof (clear and convincing).” The Federal Circuit ruled that “the district court’s summary judgment in this case erred by violating that principle, and that error leads us to vacate and remand.”
Barrette Outdoor Living, Inc. v. Fortress Iron, LP, et al., Nos. 2024-1231, -1359 (Fed. Cir. (N.D. Tex.) Oct. 17, 2025). Opinion by Linn, joined by Moore and Cunningham.
Barrette owns four patents that share a common specification and are directed to a fencing assembly featuring pivoting, sliding connectors that connect pickets to rails. Barrette sued several defendants arguing that certain residential fences infringe the patents.
During Markman, Barrette argued that the claim terms “boss,” “nub,” and “projection” are interchangeable and should be construed according to their plain and ordinary meaning, while the defendants argued that the term “boss” should be limited to integral, fastener-less structures. The defendants also argued that certain “sliding” terms were indefinite because the specification provided no guidance as to the minimum amount of force needed to effectuate sliding or whether any mechanical obstructions are acceptable. The defendants also argued that certain “causes” terms were indefinite.
The district court construed the “boss,” “nub,” and “projection” terms the same and specifically construed the “boss” terms as fastener-less. The court also ruled that the prosecution history further limited the “boss” terms to integral structures. As to indefiniteness, the court held that the terms, when read in view of the specification, would inform a skilled artisan of the scope of the claims with reasonable certainty. Barrette stipulated to noninfringement under the court’s constructions and appealed, and the defendants cross-appealed as to indefiniteness.
The Federal Circuit affirmed. First, the Federal Circuit agreed with Barrette that “the specification does not clearly and unmistakably disclaim bosses with fasteners,” and that the district court thus erred in limiting the claims to fastener-less bosses. Even so, the Federal Circuit agreed with the district court that Barrette disclaimed non-integral bosses during prosecution. The Federal Circuit explained that during prosecution Barrette “clearly distinguished” the prior art from the “claimed integral boss.” And “the prosecution history would lead a reasonable reader to conclude that Barrette clarified the scope of the claimed invention and that the claimed invention was not patentable over the examiner’s prior art rejection.” Thus, the district court “correctly determined that the patentee disclaimed non-integral bosses during prosecution.” Because the stipulation of noninfringement conceded that the accused products do not contain integral bosses, the Federal Circuit affirmed the judgment of noninfringement.
Turning to the defendants’ cross-appeal based on alleged indefiniteness, the Federal Circuit disagreed with the defendants’ argument “that the specification does not provide sufficient guidance.” The surrounding claim language provided guidance as to the scope of the “sliding” terms, meaning “the claims indicate what sort of actions suffice.” Also, the written description provided “numerous examples of structures that are slidably engaged.” As to the “causes” claim terms, the Federal Circuit ruled that the defendants “at most” showed that the patents use the term “causes” more narrowly than is common. But the court ruled that “this confirms that a skilled artisan—reading the term in view of the surrounding claim language, specification, and prosecution history—could determine the scope of the term with reasonable certainty.” Thus, the Federal Circuit affirmed the judgment of no invalidity for indefiniteness.