Holding: A purported patent owner cannot assert a due process violation on behalf of a third party based on unresolved ownership of a patent challenged in an IPR.
Causam is the recorded owner of United States Patent No. 10,394,268 directed to a method of managing power consumption from an electrical grid. Ecobee challenged all but one of the claims of the ‘268 Patent in an IPR. The PTAB found each of the challenged claims to be unpatentable for obviousness.
Although Ecobee challenged Causam’s ownership of the ‘268 Patent in a separate proceeding before the ITC, Ecobee did not challenge Causam’s ownership of the ’268 Patent during the IPR. After institution of the IPR, Causam contended that the PTAB could not properly consider Ecobee’s petition because the ownership issue raised in the ITC proceeding suggested that Ecobee disputed that Causam was the true owner of the ‘268 Patent. However, for the IPR, Ecobee conceded that the ‘268 Patent included a recorded assignment to Causam and that Causam was the party asserting the patent. Additionally, Causam alleged that it was the owner of the ‘268 Patent and presented no evidence supporting an argument that it was not the patent owner.
The Federal Circuit first addressed Causam’s standing to appeal under Article III. Under Article III, a party must have suffered or be imminently threatened with a particularized injury that is likely to be redressed by a favorable ruling to have standing. The party invoking Article III jurisdiction bears the burden of establishing standing.
Although required before the Federal Circuit or a district court, a party does not have to prove Article III standing before the PTAB for an IPR. When an appeal comes from an agency ruling that does not require factual findings for Article III standing, the burden of production for an appellant is the same as that for a plaintiff moving for summary judgment in the district court. This burden requires the appellant to identify evidence in the record that is sufficient to support its standing or to submit additional evidence if no evidence was required before the agency.
In this case, the only issue regarding standing is whether Causam owned the ‘268 Patent. Causam was the registered assignee for the ‘268 Patent and Causam consistently identified itself as the owner of the ‘268 Patent during briefing and oral argument. This evidence is sufficient to support a summary judgment finding that Causam is the patent owner, and thus Causam has standing for this appeal.
On appeal, Causam argued that the PTAB committed a constitutional error by failing to consider ownership of the ‘268 Patent. Under Causam’s theory, the PTAB denied due process to whoever Ecobee believed to be the true owner of the ‘268 Patent as alleged in the ITC proceeding. However, Causam does not have the right to assert this due process violation on behalf of the unknown, alleged alternative owner of the ‘268 Patent. Typically, litigants do not have standing to assert the constitutional rights of third parties. Additionally, Causam did not ask the PTAB to determine the identity of the true owner of the ‘268 Patent; therefore, the PTAB was under no obligation to determine ownership.
Causam also challenged the PTAB’s finding of obviousness, alleging that the PTAB misconstrued the claims of the ‘268 Patent by determining that the limitation “generating measurement and verification data corresponding to the reduction in consumed power” encompassed both actual measurements of savings and estimates of savings based on power usage before a demand reduction event. Causam argued that this limitation required the generation and verification of data to take place during the demand reduction event. However, the Federal Circuit upheld the PTAB’s decision finding that the disputed claim language did not impose a temporal limitation on when the generation of measurement and verification data must occur.
Federal Circuit Precedential 
Leave a comment