Digest of Keranos, LLC v. Silicon Storage Tech., No. 2014-1360 (Fed. Cir. Aug. 13, 2015) (precedential). On appeal from E.D.T.X. Before Chen, Bryson, and Hughes.

Procedural Posture: Keranos, an exclusive licensee, sued the defendants for infringing its licensed patents. CAFC affirmed the district court’s determination that Keranos had standing and remanded for further proceedings related to amending the infringement contentions.

  • Standing for Patent Infringement- Exclusive Licensee: CAFC held that a party having all substantial rights to a patent, regardless of whether or not the patent was expired when the party acquired the rights or expired at the time of suit, has standing to sue for patent infringement. The exclusive licensee has standing with or without joining the owner of legal title of the patent. CAFC determined, by reviewing the license agreement, that the exclusive licensee Keranos had all substantial rights to the patents in suit and accordingly had standing to sue the defendants without joining the owner of the legal title of the patents.
  • Local Patent Rules- Motions to Amend Infringement Contentions: CAFC reviewed Patent Rule 3-1 of the E.D. of Texas, which requires that the patent owner serve infringement contentions that identify “as specific[ally] as possible” each accused product including the name or model number, if known, for each accused product. Provided that the local Patent Rules allowed for amended infringement contentions only upon a showing of good cause, CAFC held that the district court did not abuse its discretion by requiring the moving party to demonstrate diligence with regard to product identification in its infringement contentions because “good cause requires the patent owner to demonstrate, inter alia, that it was diligent in discovering the products it wishes to add to its infringement contentions.”