Continuation In-Part Imparts Standing in Patent Assignment Appeal

In Causam Enterprises, Inc. v. International Trade Commission, No. 2023-1769 (Fed. Cir. Oct. 15, 2025), the Federal Circuit determined that Causam had standing to assert its assigned patent. The key dispute was whether a previous assignment contract had transferred ownership of all descendent patents of a particular application, or just certain subcategories.

Causam’s standing dispute centers around U.S. Patent No. 10,394,268, (“the ’268 Patent”). The ’268 Patent is a descendent of the ’909 application, assigned to another entity—America Connect—in 2007. The assignor of the ’909 application, Mr. Forbes, subsequently tried to assign the parent of the ’268 Patent to Causam in 2014. However, it was unclear whether Mr. Forbes still owned (and therefore, had the ability to transfer) the continuation in-part (“CIP”) and descendent applications following the 2007 assignment.

The Federal Circuit held that the 2007 assignment did not transfer ownership away from Mr. Forbes, explaining the operative language assigned the invention of the ’909 application and “all divisions, reissues, continuations and extensions thereof” to America Connect. Notably, the assignment did not explicitly assign CIPs. Because the legal consequences of CIPs are significantly different than continuations, given their ability to include new matter, the Federal Circuit reasoned that it would not “insert additional terms” into the provision by construing the operative language to include CIPs. Therefore, Mr. Forbes had not assigned away ownership of the parent of the ’268 Patent in 2007 and had instead properly transferred it to Causam in 2014.