Previous Ownership Victory Labled Unpatentable by Federal Circuit

How do you win a patent ownership fight and still walk away empty-handed? Easy: you win the “who owns it?” argument, then lose the “does it even survive?” argument. It’s the legal version of finally finding the TV remote… and realizing the batteries have been dead since 2019.

In a pair of companion decisions, the U.S. Court of Appeals for the Federal Circuit delivered a result that feels like a plot twist written by a caffeinated contracts professor: a patent owner established it did own the patent (a genuine “previous ownership” victory), but the very claim at the heart of the dispute was ultimately deemed unpatentableleaving the ownership win with the practical value of a trophy made of wet cardboard.

This story matters well beyond one set of smart-thermostat and grid-management disputes. It’s a cautionary tale about assignment language, the fragility of patent validity, and how parallel proceedings can turn your litigation strategy into a game of legal Jenga.

What the headline is really saying

The title “Previous Ownership Victory Labled Unpatentable by Federal Circuit” sounds like two headlines taped together. That’s because it basically is:

• Part 1: The patent owner won on ownership/standingthe court agreed the patent belonged to the party bringing the appeal.
• Part 2: In a companion case, the court affirmed a decision that the key claim was unpatentable (here, for obviousness), which effectively wiped out the practical stakes in the other appeal.

Put differently: the court handed over the keys… to a car that had already been declared non-drivable.

A plain-English timeline of what happened

To understand why this outcome stings, it helps to see how the disputes overlapped:

1) An ITC fight over imported “smart” devices

The patent owner pursued a Section 337 action at the U.S. International Trade Commission (ITC), accusing certain imported smart-thermostat products of infringing a patent tied to managing electricity usage and demand-response programs. The ITC ultimately found no infringement (and earlier proceedings included a dispute over whether the patent owner even had the right to sue because of ownership issues).

2) A parallel PTAB inter partes review (IPR)

At the same time (or overlapping in time), the patent’s validity was challenged at the Patent Trial and Appeal Board (PTAB) through an IPR. The PTAB determined the challenged claims were unpatentable for obviousness.

3) Two appeals, same day, one big consequence

Both disputes reached the Federal Circuit. The court addressed them as companion matters, and the timing mattered: once the Federal Circuit affirmed the PTAB’s unpatentability ruling, the ITC appeal’s remaining issues became largely academicbecause Section 337 relief depends on a valid and enforceable patent claim.

That’s the “winning the battle but losing the war” structure. The ownership fight mattered for standing, but validity ultimately controlled whether there was anything left to win.

The “previous ownership” fight: why three missing letters can change everything

At the center of the ownership dispute was a familiar problem in patent families: the family tree is complicated, and the paperwork is often written as if the family tree is a straight line.

The dispute hinged on whether older assignment language transferred rights not only to “continuations” but also to “continuations-in-part.” Those sound similaruntil you’re in federal court and your entire case depends on the difference.

Continuation vs. continuation-in-part (CIP): the difference that gets people sued

Here’s a user-friendly way to remember it:

• Continuation: “Same ingredients, new plating.” You keep essentially the same disclosure and keep pursuing claims in the same family.
• Continuation-in-part (CIP): “Same recipe, plus a new secret sauce.” A CIP can add new subject matter (new disclosure) while still claiming priority to earlier material for overlapping parts.

Legally, that distinction has consequencesespecially for ownership. If a contract says it assigns “continuations” but never mentions “continuations-in-part,” a court may treat that omission as intentional. In other words: the court won’t rewrite your deal just because your future self wishes you had typed three extra letters.

What the Federal Circuit focused on

The court’s ownership analysis turned on contract language and familiar patent-prosecution categories. Where an assignment expressly lists certain descendants (like “divisions” and “continuations”) but omits “continuations-in-part,” the court treated that omission as meaningfulespecially given how widely understood the difference is in patent practice.

That analysis can feel harsh, but it’s also consistent with how courts typically interpret negotiated documents: the words that made it into the contract are presumed to matter, and the words that didn’t make it in usually matter too.

The result: standing secured, ownership confirmed

Ultimately, the Federal Circuit concluded the patent owner had the right to be in courtbecause it owned the patent and therefore had Article III standing. That’s the “previous ownership victory” part of the headline.

If the story ended here, it would read like a clean procedural win: “Draft carefully, prove title, proceed to the merits.” But the story did not end here. Not even close.

The “unpatentable” part: validity can erase your entire chessboard

In the companion appeal from the PTAB, the Federal Circuit affirmed that the challenged claims were unpatentable for obviousness. While “unpatentable” can show up under multiple doctrines (like patent eligibility, novelty, obviousness, written description, and more), here the key idea is simple:

If the claim doesn’t survive validity review, it can’t support the relief you’re asking for.

A quick refresher: what “obviousness” means in practice

Obviousness is the legal concept that you can’t patent something that would have been an ordinary, predictable step to a person skilled in the field at the timebased on what was already known. It’s not “someone thought of it before,” but rather “given what existed, getting here would have been a routine move.”

In IPRs, challengers often argue obviousness using prior patents, published applications, papers, and industry materials. The PTAB evaluates whether the claimed method is just an expected combination or adjustment, and the Federal Circuit reviews the PTAB’s work under a deferential framework for many factual components.

Why claim interpretation can make or break the whole case

One common theme in Federal Circuit patent validity appeals is that claim construction disputes sometimes act like dominoes: if the patent owner can narrow a claim, it may avoid prior art; if it can’t, the prior art can collapse the claim.

But narrowing a claim isn’t free. Courts typically resist constructions that read out embodiments described in the specification (the patent’s written description). In human terms: you don’t get to brag in your patent that your invention works in multiple ways, and then later insist in litigation that it only works in the one way that helps you win.

That dynamic showed up here: the PTAB and Federal Circuit rejected a narrowing interpretation tied to when certain “measurement and verification” data must be generated, and once that narrowing failed, the obviousness ruling stood with little left to salvage.

Why the ITC appeal became moot

Now for the part that makes non-lawyers say, “Wait… what?”

The Federal Circuit could decide ownership and still dismiss the ITC appeal because the court’s affirmance of unpatentability removed any meaningful remedy in the ITC case. Section 337 relief (like exclusion orders blocking imports) depends on infringement of a valid and enforceable patent claim.

If the only claim you’re still fighting over is unpatentable, the ITC can’t give you the exclusion order you wantno matter how clever your infringement argument is. It’s like arguing about who gets to keep the umbrella after the hurricane has already ended and the umbrella has been declared legally nonexistent.

So what are the real takeaways?

If you work with patentswhether you’re an inventor, a startup founder, a buyer of patent assets, or just the person who gets stuck reading contracts at 11:47 p.m.this case sequence offers several practical lessons.

1) Assignment language should match how patent families actually grow

Patent families don’t always grow neatly. Continuations, divisionals, CIPs, foreign counterparts, reissuesthese are different beasts. If you intend to transfer (or retain) all of them, say so clearly.

Drafting tip: Don’t rely on “everyone knows what we meant.” Courts read what you wrote, not what you meant, and definitely not what you would have meant if you had known you’d be litigating in 2025.

2) Chain-of-title diligence is not optionalespecially before enforcement

Ownership disputes can derail cases before you ever reach infringement. If your patent has a complicated ancestry, you need to verify title early, ideally before launching any major enforcement campaign.

That means reviewing inventor assignments, employment agreements, prior sales, corporate restructurings, licenses, settlement documentsanything that could have carved up rights, intentionally or accidentally.

3) Parallel proceedings can turn into strategic whiplash

When validity and infringement are being fought in parallel forums (district court, ITC, PTAB), the “best” win in one forum may be neutralized by a loss in another.

In practice, an IPR can be the existential threat: if a key claim is knocked out, it can collapse the value of other victories, including ownership wins and even partial infringement wins.

4) Don’t treat validity as a background detail

A lot of businesses approach validity as the thing lawyers argue about while executives focus on “the product clearly copies us.” But patent disputes are not moral philosophy. They’re rule-based. If the claim doesn’t survive, the copying question can become irrelevant to the remedy you’re seeking.

Business reality check: A patent enforcement plan without a validity stress-test is like a road trip plan without checking whether the car has an engine.

Specific examples: how this can happen in the real world

Example A: The acquisition that missed the CIP

A company buys a portfolio and believes it acquired “all continuations.” Years later, it discovers a key product improvement was protected by a continuation-in-part that wasn’t clearly covered by the old assignment language. The company owns much of the familybut the most commercially relevant piece sits in a separate pocket of rights. Cue the ownership dispute, and cue the uncomfortable meeting where someone asks, “So what exactly did we pay for?”

Example B: The inventor who kept the “new matter”

An inventor assigns the core invention to a company but later files a CIP adding new features. If the assignment didn’t clearly sweep in CIPs (or didn’t require assignment of later improvements), the inventor may retain ownership of the added material. That can be perfectly legaland perfectly surprising to the company that assumed it bought the whole future.

Example C: The enforcement action that got PTAB’d

A patent owner files a high-profile ITC or district court case to create leverage. The accused infringer responds with an IPR challenge. If the PTAB finds the key claims unpatentable, the leverage can evaporate fastsometimes before the infringement case even reaches a meaningful merits decision.

Why this story resonates: it’s about more than one patent

This isn’t just a contracts story or a PTAB story. It’s a systems storyabout how modern patent disputes operate across multiple venues and how one thread (like validity) can unravel the rest.

It’s also a reminder that patent law is filled with deceptively similar words that carry very different consequences. “Continuation” and “continuation-in-part” differ by three letters, but those letters can decide who has standing, who gets paid, and who ends up writing the next corporate policy titled “Please Never Use Ambiguous Assignment Language Again.”

Conclusion

The Federal Circuit’s companion decisions illustrate a brutal truth: owning the patent is necessary, but it’s not sufficient. You can prove title, establish standing, and still lose the practical fight if the claims that matter don’t survive validity review.

If you’re building, buying, or enforcing patents, the smarter play is holistic: draft assignments like the patent family will get complicated (because it will), validate chain of title early, and treat validity as a front-line business risknot an afterthought.

Not legal advicejust a hard-earned lesson the case law teaches with a straight face and a very sharp pen.

Experiences related to “Previous Ownership Victory Labled Unpatentable by Federal Circuit” (Real-World Patterns)

Even if you never set foot in the Federal Circuit, the underlying experience behind this kind of headline is common in patent-heavy businesses: someone spends months (or years) chasing a clean ownership narrative, only to discover that the bigger danger was sitting quietly in the backgroundvalidity.

Experience #1: The “We own it… right?” moment. In many companies, patent ownership is assumed because the USPTO record shows the company name on the face of the patent. That assumption usually holdsuntil a deal lawyer (or an opposing party) asks for the underlying contracts. Then the team discovers an old assignment that reads like it was drafted to fit on a napkin: “all continuations and extensions,” with no explicit mention of continuations-in-part, improvements, or future filings. Suddenly, what looked like a straightforward chain of title becomes a scavenger hunt through corporate historyname changes, dissolved entities, acquisition schedules, and inventor agreements that may or may not have been consistently executed. The practical lesson people walk away with is simple: recorded assignments are important, but the contract language is the real engine.

Experience #2: The CIP confusion that hits at the worst possible time. Continuations-in-part are notorious for turning “clean” ownership into “maybe.” In day-to-day patent prosecution, teams may treat a CIP as just another child in the family. But when money is on the line, the CIP’s “new matter” becomes the center of gravity: who funded it, who directed it, and who was supposed to own it? In negotiations, parties often discover they were never actually aligned. One side believed the deal covered every descendant; the other believed it covered only the original invention and its strict continuations. When a dispute arrives, both sides feel betrayed by the same sentencebecause both sides mentally auto-completed that sentence differently.

Experience #3: Parallel proceedings feel efficient… until they don’t. Patent enforcement strategy often includes multiple venues: a district court case for damages, an ITC action for import leverage, and (almost inevitably) an IPR that challenges validity. Teams sometimes enter this multi-forum environment thinking the issues will stay compartmentalized: “Ownership here, infringement there, validity over there.” But what actually happens is more like a rope netshake one corner, and the whole structure moves. The emotional whiplash is real: a team celebrates a favorable ownership or standing decision, only to get hit days later with a validity loss that drains the victory of practical value. In these moments, executives learn a counterintuitive lesson: the most important courtroom win might be the one that never appears in a press releaselike surviving an early validity challenge.

Experience #4: Claim construction is where optimism goes to get audited. Another recurring pattern is how businesses experience claim construction. In internal meetings, people describe the invention in its “best” formtight, specific, and clearly different from prior art. But patents are drafted to cover a range of embodiments, and broad drafting can become a vulnerability. During litigation, when a patent owner tries to narrow the claims to avoid prior art, courts often resist if that narrowing contradicts the patent’s own disclosure. The experience is humbling: the very breadth that once looked like strong protection can become the reason the claim can’t be saved. Companies come out of this with a healthier respect for prosecution choices made years earlier by people who couldn’t predict how a future dispute would unfold.

Experience #5: The “trophy nobody wants.” Finally, there’s a psychological reality behind a headline like this: winning ownership but losing validity feels uniquely frustrating. Ownership is tangibleit’s a yes/no, a title, a box checked. Validity, meanwhile, can feel abstract until it isn’t. When the claim is held unpatentable, the business experience is often summed up with a sentence like: “So we proved we own it… but we don’t own anything useful.” That’s why sophisticated teams now treat enforcement readiness like a three-legged stool: (1) clear title, (2) credible infringement story, and (3) a realistic validity survival plan. Remove any leg, and the whole strategy tips overno matter how confident the team felt on day one.

Sources Consulted (U.S.-Based, Reputable Publications & Primary Materials)

• U.S. Court of Appeals for the Federal Circuit (precedential opinions in the companion appeals)
• Practitioner analysis from major U.S. IP law firms (client alerts and case notes)
• Patent-focused legal commentary outlets (U.S.-based)
• Legal news summaries and case roundups (U.S.-based)
• Public docket and PTAB case materials referenced in reporting