IP Law Daily, PATENT—Fed. Cir.: Causam’s ownership of smart thermostat affirmed, but appeal from ITC's noninfringement ruling dismissed as moot, (Oct 15, 2025)

By Saurabh Kashyap, B.A., M.A., LL.B., LL.M.

The Patent Trial and Appeal Board had already invalidated the asserted patent claim for obviousness in a companion decision.

The U.S. Court of Appeals for the Federal Circuit affirmed that Causam Enterprises, Inc. owned the U.S. Patent No. 10,394,268 (the ’268 patent) covering “demand response” smart thermostat technology, but dismissed its appeal from the U.S. International Trade Commission’s noninfringement ruling as moot. The court concluded that the appeal no longer presented a live controversy because the Patent Trial and Appeal Board (PTAB), in a related appeal affirmed the same day, had already invalidated the patent’s only contested claim for obviousness (Causam Enterprises, Inc. v. International Trade Commission, No. 23-1769 (Fed. Cir. Oct. 15, 2025)).

Background. The appellant, Causam Enterprises, Inc. (formerly Causam Energy, Inc.), is a North Carolina-based technology company developing energy management and “demand response” systems for electric utilities. The appellee, the U.S. International Trade Commission (ITC), investigated Causam’s allegations under Section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337, concerning the importation of infringing smart thermostats. The intervenors were leading manufacturers and suppliers of smart home and energy automation technology, including ecobee and Resideo. The companies are commercially linked through the manufacture, importation, and integration of smart thermostat systems used for automated energy control.

The ’268 patent) titled Systems and Methods for Coordinated Demand Response and Power Management. The patent discloses methods allowing utilities to remotely coordinate power use by controlling internet-connected devices, such as thermostats, during periods of high demand. Causam alleged that certain Honeywell Home thermostats imported by Resideo infringed method claim 1 of the ’268 patent, seeking an exclusion order from the ITC under Section 337.

Causam filed its ITC complaint in July 2021, accusing Resideo, ecobee, and others of infringing several of its patents related to energy management technology. The ITC instituted Investigation No. 337-TA-1277 in September 2021. Following a full evidentiary hearing, the Chief Administrative Law Judge issued an Initial Determination on November 16, 2022, finding that Causam lacked ownership of the asserted patents and that Resideo's products did not infringe the asserted claims. The ALJ concluded that inventor Joseph Forbes's 2007 assignment to America Connect, Inc. (a predecessor to Consert, Inc.) had conveyed ownership of all descendant applications, including the '268 patent, and that Causam therefore lacked a right to enforce it. The ALJ also determined that the accused thermostats did not meet multiple limitations of claim 1.

On February 16, 2023, the full Commission adopted the ALJ’s noninfringement finding but expressly declined to adopt the holding on ownership. Causam appealed to the Federal Circuit under 19 U.S.C. § 1337(c), contesting only the noninfringement determination as to claim 1 and Resideo’s products. Meanwhile, in ecobee Technologies ULC v. Causam Enterprises, Inc., IPR2022-01339, the PTAB found all challenged claims of the ’268 patent except claim 12 unpatentable for obviousness.

Ownership and standing. The appellate court first addressed Causam’s Article III standing. The court held that Causam had proven ownership of the ’268 patent and therefore had the requisite injury in fact to appeal. It examined three agreements executed by inventor Joseph Forbes: a 2007 assignment of Application No. 11/895,909 to America Connect; a 2010 employment agreement with Consert, Inc.; and a 2013 settlement agreement resolving an intellectual property dispute between Forbes and Consert. The court concluded that the 2010 and 2013 agreements had no operative effect on ownership and that the case turned entirely on the 2007 assignment.

The 2007 assignment transferred rights in the “invention” of the ’909 application and “all divisions, reissues, continuations, and extensions thereof,” but it did not mention “continuations-in-part.” The Federal Circuit determined that this omission was decisive because a continuation-in-part (CIP) introduces new subject matter distinct from a continuation. The court found that the ’268 patent, descended from a CIP of the 2007 application, was not included in the assignment to America Connect. Because Forbes retained rights in the CIP branch, his 2014 assignment to Causam validly conveyed ownership.

Further, the court emphasized that the Manual of Patent Examining Procedure (MPEP §§ 201.07, 201.08) has long treated continuations and CIPs as separate categories and cited Anchorage v. United States, 123 F.4th 1315 (Fed. Cir. 2024), for the principle that courts cannot “insert words into a contract that the parties never agreed to.” The appellate court declined to extend Regents of the University of New Mexico v. Knight, 321 F.3d 1111 (Fed. Cir. 2003), which had read multiple related agreements together to encompass CIPs. Here, there was no comparable evidence of intent to include them. Accordingly, the court held that “the 2007 assignment unambiguously excludes the ’761 application,” the CIP ancestor of the ’268 patent, confirming that Causam lawfully owned the patent.

The court also rejected the ITC’s argument that statutory authorization to appeal under 19 U.S.C. § 1337(c) automatically conferred standing. Citing TransUnion LLC v. Ramirez, 594 U.S. 413 (2021), and Consumer Watchdog v. Wisconsin Alumni Research Foundation, 753 F.3d 1258 (Fed. Cir. 2014), the appellate court explained that Congress cannot “enact an injury into existence.” Standing required a concrete injury, here established through Causam’s ownership of the ’268 patent. The opinion further relied on Lujan v. Defenders of Wildlife, 504 U.S. 555 (1992), and Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168 (Fed. Cir. 2017), to reaffirm that standing at the appellate stage must be proven by evidence rather than assumed from allegations.

Mootness. Having confirmed standing, the court nonetheless dismissed the appeal as moot. Because the PTAB’s unpatentability decision, affirmed the same day, invalidated claim 1—the sole claim at issue—Causam had no enforceable rights remaining. The court emphasized that Section 337 relief applies only to infringement of a “valid and enforceable” patent. Once the claim was declared unpatentable, no controversy remained for judicial resolution.

Relying on Texas Instruments, Inc. v. International Trade Commission, 851 F.2d 342 (Fed. Cir. 1988), and Hyosung TNS Inc. v. International Trade Commission, 926 F.3d 1353 (Fed. Cir. 2019), the appellate court explained that invalidation or expiration of a patent eliminates the ITC’s authority to issue or review exclusion orders. During oral argument, Causam conceded that affirmance in the ecobee appeal would render this case moot. The court, therefore, dismissed the appeal without determining the merits of the ITC's noninfringement finding.

Thus, the appeal was dismissed, with each party bearing its own costs.

The Case is No. 23-1769.

Judge: Taranto, R.

Attorneys: Jonathan Weinberg (King & Spalding LLP) for Causam Enterprises, Inc. Panyin Hughes for the International Trade Commission. Kirk T. Bradley (Alston & Bird LLP) for Itron, Inc., Resideo Smart Homes Technology [Tianjin], and Ademco, Inc. Manny Caixeiro (Venable LLP) for ecobee Technologies ULC.

Companies: Causam Enterprises, Inc.; Itron, Inc.; Resideo Smart Homes Technology [Tianjin]; Ademco, Inc.;.ecobee Technologies ULC

Cases: Patent TechnologyInternet FedCirNews