Exclusive Licensees of Expired Patents Have Same Threshold Standing Test as for Unexpired Patents

Author: Shawn S. Chang
Editor: Kevin D. Rodkey

In Keranos, LLC v. Silicon Storage Technology, Inc., Nos. 14-1360, -1500 (Fed. Cir. August 13, 2015), the Federal Circuit held that the test for whether an exclusive licensee has standing to sue by itself for infringement is the same for both expired and unexpired patents—specifically whether the exclusive licensee has obtained “all substantial rights” in the expired patent.

The Court considered whether Keranos, an exclusive licensee who was assigned its rights after the asserted patents expired, should be subject to the same standing threshold as a licensee of an unexpired patent. The Court determined that “the same legal analysis applies to both expired and unexpired patents” and stated that “the most important factor” for determining if all substantial rights were transferred was whether the patent owner retained any right to sue accused infringers. After examining the license agreement, the Court determined that the patent owner transferred all rights, including the right to sue infringers, to Keranos and had not retained any other rights for itself. The Court also explained that the “absence of some rights” resulting from a patent’s expiration, such as the right to exclude others from practicing the invention, does not affect the standing of a licensee that received all substantial rights.

DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.

Tagged

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

%d bloggers like this: