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The Federal Circuit addressed three issues in this case.  First, it held that Keranos, who had licensed the patents-in-suit from their owner after the patents had expired, held all substantial rights to the patents and therefore had standing to sue.  Second, it vacated and remanded the district court’s denial of Keranos’ motion for leave to amend its infringement contentions to add new products discovered after it filed its initial contentions.  Third, it remanded the issue of whether the district court abused its discretion in denying the plaintiff’s motion to amend its infringement contentions.

With respect to the standing issue, the court held that the case of Mars, Inc. v. Coin Acceptors, Inc., 527 F.3d 1359 (Fed. Cir. 2008) did not stand for the proposition that only the holder of legal title of an expired patent has standing to sue for infringement.  Mars merely reiterated the established rule that, “for any patent, expired or not, transferring only the right to sue for past damages, divorced from title, is not enough to give the owner of that right standing under the Patent Act.”  Here, Keranos has received, in its license, all substantial rights, including the right to sue, to grant it standing. 

With respect to the denial of Keranos’ motion to amend its infringement contentions, the court vacated and remanded, because the record indicates that, for some of the defendants, publicly available information may not have been available and thus Keranos could not have been more diligent with respect to those defendants.  Remand was necessary to allow the district court to consider, on a party-by-party basis whether Keranos had been diligent in seeking to amend.  

Keranos, LLC v. Silicon Storage Technology, Inc., Case No. 2014-1360, -1500 (August 13, 2015); Opinion by: Chen, joined by Bryson and Hughes; Appealed From: District Court for the Eastern District of Texas, Schneider, J.  Read the full opinion here.

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