UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF TEXAS

FORT WORTH DIVISION

BRIDGESTONE AMERICAS TIRE 

OPERATIONS, LLC,

Plaintiff,

v. No. 4:22-cv-0145-P

SPEEDWAYS TYRES LIMITED ET AL.,

Defendants.

MEMORANDUM OPINION AND ORDER

Before the Court are Plaintiff’s First Motion to Dismiss and Strike 

(ECF No. 22), Plaintiff’s Second Motion to Dismiss and Strike (ECF Nos. 

32; 36), Defendant Speedways Tyres Limited’s (“Speedways”) Motion to 

Dismiss (ECF No. 30), and Defendants SWT Americas, SWT North 

American Operations, Speedways Tyres SWT Global Sales, and Route 

66 Tire and Rubber’s (collectively “SWT U.S.”) Motion for Leave to File 

Second Amended Answer and Counterclaims (ECF No. 67). Having 

considered the Motions, related docket entries, and applicable law, the 

Court DENIES Plaintiff’s First Motion to Dismiss and Strike as moot, 

GRANTS Plaintiff’s Second Motion to Dismiss and Strike, DENIES

Defendant Speedways Motion to Dismiss, and GRANTS Defendants 

SWT U.S.’s Motion for Leave.

BACKGROUND

Plaintiff Bridgestone Americas Tire Operations, LLC (“Bridgestone”) 

is the largest tire company in the world. ECF No. 1 at 5. It makes a wide 

range of tires, such as those for passenger, commercial, and off-the-road 

vehicles. Id. Among Bridgestone’s off-the-road tires is its Champion 

Hydro ND tire. Id. at 6. The tire is used for irrigation systems and 

features a non-directional-tread pattern for equal traction in forward 

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and reverse directions. Id. To protect its non-directional-tire technology, 

Bridgestone obtained U.S. Patent No. 9,873,291 (“the ‘291 Patent”). Id.

Defendants make and sell a tire like Bridgestone’s Champion Hydro 

ND tire—the Agristorm nD2 tire. Id. at 7–10. Defendant Speedways

manufactures the Agristorm nD2 tire. Id. at 8. Defendant Speedways 

Rubber then imports the tire to Defendants SWT U.S. Id. at 4.

Bridgestone contends that the Agristorm nD2 tire copies the 

invention claimed in the ‘291 Patent and thus sued Defendants for 

patent infringement. Id. at 10. In response, Defendants SWT U.S. filed 

an answer asserting various affirmative defenses and three 

counterclaims. ECF No. 19. Bridgestone filed its First Motion to Dismiss 

and Strike Defendants SWT U.S.’s patent-misuse counterclaim and 

affirmative defense shortly after. ECF No. 22. As a result, Defendants 

SWT U.S. amended their answer by adding their patent-misuse 

counterclaim allegations to their patent-misuse defense. ECF No. 28. 

Bridgestone asserted its Second Motion to Dismiss due to Defendants 

SWT U.S.’s amended answer. ECF No. 32. Defendants SWT U.S. then 

moved for leave to amend its answer again. ECF No. 67. Defendant 

Speedways also moved to dismiss Bridgestone’s complaint for failure to 

state a claim, contending it was a wrongfully named defendant. ECF No. 

30.

There are thus four motions before the Court: (1) Bridgestone’s First 

Motion to Dismiss and Strike; (2) Bridgestone’s Second Motion to 

Dismiss and Strike; (3) Defendants SWT U.S.’s Motion for Leave to 

Amend; and (4) Defendant Speedways’s Motion to Dismiss. The Court 

addresses each in turn.

LEGAL STANDARD

A. Failure to State a Claim

To survive a motion to dismiss for failure to state a claim under Rule 

12(b)(6) of the Federal Rules of Civil Procedure, a plaintiff’s complaint 

“must contain sufficient factual matter, accepted as true, to ‘state a 

claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 

662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 

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(2007)). The Court accepts all well-pleaded facts as true, drawing all 

inferences in favor of and viewing all facts in the light most favorable to 

the nonmoving party. Club Retro, L.L.C. v. Hilton, 568 F.3d 181, 194 

(5th Cir. 2009).

B. Motion to Strike

Under Rule 12(f) of the Federal Rules of Civil Procedure, the Court

may strike “from a pleading an insufficient defense or any redundant, 

immaterial, impertinent, or scandalous matter.” FED. R. CIV. P. 12(f).

Striking a defense is a drastic remedy and is generally disfavored. 

United States v. Coney, 689 F.3d 365, 379 (5th Cir. 2012). That said, 

striking “a defense is proper when the defense is insufficient as a matter 

of law.” Kaiser Aluminum & Chem. Sales, Inc. v. Avondale Shipyards, 

Inc., 677 F.2d 1045, 1057 (5th Cir. 1982). And the decision to do so is 

within the Court’s discretion. S.E.C. v. Cuban, 798 F. Supp. 2d 783, 787 

(N.D. Tex. 2011) (Fitzwater, J.).

ANALYSIS

A. Bridgestone’s First Motion to Dismiss and Strike

After Bridgestone filed its First Motion to Dismiss and Strike, 

Defendants SWT U.S. amended their answer—adding the allegations 

supporting their patent-misuse counterclaim to also support their 

patent-misuse affirmative defense. ECF No. 28. As a result of the new 

answer, Bridgestone filed its Second Motion to Dismiss and Strike for 

the same reasons as its first.

An amended complaint generally renders pending motions moot. See

Stredwick v. Dall. Margarita Soc’y, Inc., No. 3:12-CV-623, 2012 WL 

12893430, at *1 (N.D. Tex. June 27, 2012) (Furgeson, J.); see, 

e.g., Garza-Selcer v. 1600 Pac. Subtenant, LLC, No. 3:15-CV-03791, 

2016 WL 11474103, at *2 (N.D. Tex. Aug. 30, 2016) (Godbey, J.) (“When 

a motion to dismiss is filed against a superseded complaint, courts 

ordinarily deny the motion as moot.”). The same is true for an amended 

answer. See Mangum v. United Parcel Servs., No. 3:09-CV-0385, 2009 

WL 2700217, at *1 (N.D. Tex. Aug. 26, 2009) (Fitzwater, J.). Because 

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Defendants SWT U.S. amended their answer after Bridgestone’s First 

Motion to Dismiss and Strike, that Motion is thus DENIED as moot.

B. Bridgestone’s Second Motion to Dismiss and Strike

Bridgestone’s Second Motion to Dismiss and Strike mirrors its First 

Motion to Dismiss and Strike. In its second motion, Bridgestone

contends that Defendants SWT U.S.’s patent-misuse counterclaim 

should be dismissed because patent misuse is only an affirmative 

defense, not an independent cause of action. ECF No. 32 at 5–7.

Bridgestone also argues that SWT U.S.’s patent-misuse affirmative 

defense should be struck. Id. at 7–11. The Court addresses both 

arguments in turn.

1. Patent-Misuse Counterclaim

Bridgestone contends that Defendant SWT U.S.’s patent-misuse 

counterclaim should be dismissed for failure to state a claim. The Court 

agrees.

A patent holder misuses a patent by “impermissibly broadening the 

physical or temporal scope of the patent grant with anticompetitive 

effect.” Princo Corp. v. Int’l Trade Comm’n, 616 F.3d 1318, 1328 (Fed. 

Cir. 2010) (cleaned up). “A successful invocation of the doctrine of patent 

misuse results in the patent being rendered unenforceable until the 

misuse is purged (i.e., the abusive licensing term or contract condition 

is withdrawn), but does not give rise to an award of damages to the 

accused infringer.” L-3 Commc’ns Corp. v. Jaxon Eng’g & Maint., Inc., 

No. 10-CV-02868-MSK-KMT, 2013 WL 1231875, at *5 (D. Colo. Mar. 27, 

2013). “An infringer who successfully demonstrates misuse might be 

entitled to a declaratory judgment that patent misuse has occurred, but 

any subsequent relief (such as damages incurred by the infringer 

pursuant to such misuse) must be sought through a separate 

substantive claim.” Id. at n.2.

Defendants SWT U.S.’s patent-misuse counterclaim seeking 

damages in the form of attorney fees “does not appear to be the proper 

invocation of that doctrine.” Id. As a result, the Court ordered briefing 

on whether Defendants SWT U.S. should be given leave to assert its 

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patent-misuse counterclaim as an affirmative declaratory judgment 

claim rather than a claim for damages. ECF No. 61. Bridgestone 

responded, arguing that leave is not appropriate because patent misuse 

is only an affirmative defense and cannot be asserted as an affirmative 

declaratory judgment claim. ECF No. 64. But the Court disagrees.

It is true that patent misuse is “generally treated as an affirmative 

defense and not an independent cause of action.” Icon Health & Fitness 

v. Pednar Prod., No. 1:13-CV-152 TS, 2014 WL 1783986, at *2 (D. Utah 

May 5, 2014). But courts have “allowed patent misuse as an affirmative 

declaratory judgment claim.” Id.; see also L-3 Commc’ns Corp., 2013 WL 

1231875, at *5 (“An infringer who successfully demonstrates misuse 

might be entitled to a declaratory judgment that patent misuse has 

occurred.”).

In any event, Defendants SWT U.S.—in response to the Court’s 

briefing request—agree that their patent-misuse counterclaim cannot 

be asserted as an affirmative claim for damages and “do not seek leave 

to amend their counterclaims to seek declaratory relief.” ECF No. 62 at 

1–2. Bridgestone’s Second Motion to Dismiss Defendants SWT U.S.’s 

patent-misuse counterclaim is thus GRANTED.

2. Patent-Misuse Affirmative Defense

Bridgestone next moves to dismiss or strike Defendants SWT U.S.’s 

patent-misuse affirmative defense. Because “answers and affirmative 

defenses are not dismissed, traditionally, but rather stricken, in the 

context of affirmative defenses,” the Court only considers whether 

Defendants SWT U.S.’s affirmative defense should be struck under Rule 

12(f). Wyndham Vacation Ownership, Inc. v. Slattery, Sobel & Decamp, 

LLP, No. 6:19-CV-1908-WWB-EJK, 2021 WL 4948122, at *2 (M.D. Fla. 

Oct. 7, 2021); see also § 1381 MOTION TO STRIKE—INSUFFICIENT 

DEFENSE, 5C FED. PRAC. & PROC. CIV. § 1381 (3d ed.) (“[A] motion to 

dismiss the answer on the ground that it states an insufficient defense 

no longer is the proper procedure for eliminating a particular defense.”).

“Patent misuse is an affirmative defense to an accusation of patent 

infringement.” See Va. Panel Corp. v. MAC Panel Co., 133 F.3d 860, 868 

(Fed. Cir. 1997). The defense generally applies if the patent holder 

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“impermissibly broaden[s] the physical or temporal scope of the patent 

grant with anticompetitive effect.” Princo Corp., 616 F.3d at 1328 

(cleaned up). Congress, however, has identified certain practices that 

are statutorily exempt from that general rule. See 35 U.S.C. § 271(d).

Defendants SWT U.S. contend that Bridgestone has engaged in 

patent misuse by bringing a patent-infringement lawsuit against them 

that is baseless, in bad faith, and for the anticompetitive purpose of 

suing its competitors. ECF No. 28 at 7–8. Such allegations of patent 

misuse rely on the bad-faith theory of patent enforcement. Signify N. 

Am. Corp. v. Reggiani Lighting USA, Inc., No. 18 CIV. 11098, 2020 WL 

1331919, at *8 (S.D.N.Y. Mar. 23, 2020). District courts, however, 

disagree on whether patent misuse can be pled on a theory of bad faith.1

This Court adds to the disagreement and holds that patent misuse 

cannot be pled on a theory of bad faith for two reasons.

First, the bad-faith theory conflicts with the text of 35 U.S.C. § 

271(d). It provides that “[n]o patent owner otherwise entitled to relief 

for infringement or contributory infringement of a patent shall be denied 

relief or deemed guilty of misuse” when it “[seeks] to enforce [its] patent 

rights against infringement or contributory infringement.” Id. § 

271(d)(3). Thus, if a defendant infringes on a plaintiff’s patent, the 

plaintiff is not guilty of patent misuse by suing the defendant. The text 

provides no exception for suits brought in bad faith. 271(d)(3). And the 

Court is “not at liberty to engraft onto the statute an exception Congress 

chose not to create.” Honig v. Doe, 484 U.S. 305, 325 (1988).

Second, the bad-faith theory conflicts with Federal Circuit precedent. 

See Signify N. Am. Corp., 2020 WL 1331919, at *8; Pace Int’l, LLC v. 

Indus. Ventilation, Inc., No. C08–1822RSL, 2009 WL 2460999, at *1 

(W.D. Wash. Aug. 6, 2009) (“[T]he Federal Circuit has determined that 

1 Compare ESCO Corp. v. Cashman Equip. Co., 158 F. Supp. 3d 1051, 1067–68 (D. 

Nev. 2016); Nalco Co. v. Turner Designs, Inc., No. 13 Civ. 2727 (NC), 2014 WL 645365, 

at *10 (N.D. Cal. Feb. 19, 2014) Cadence Pharm., Inc. v. Paddock Labs., Inc., 2012 WL 

4565013, at *6–9, with Signify N. Am. Corp., 2020 WL 1331919, at *8–9; Duke Univ., 

Allergan, Inc. v. Akorn, Inc., No. 318CV14035BRMTJB, 2019 WL 4410284, at *12 

(D.N.J. Sept. 16, 2019); Otsuka Pharm. Co. v. Torrent Pharm. Ltd., Inc., 118 F. Supp. 

3d 646, 659 (D.N.J. 2015); GoDaddy.com, LLC v. RPost Commc’ns Ltd., No. 14-126, 

2014 WL 6908507, at *5 (D. Ariz. Dec. 9, 2014).

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allegations of wrongful enforcement are insufficient to establish 

patent misuse.”) The theory of bad faith arose in Glaverbel Societe 

Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550 (Fed. Cir. 

1995). The court there held that “[t]he bringing of a lawsuit to enforce 

legal rights does not of itself constitute violation of the antitrust laws or 

patent misuse; there must be bad faith and improper purpose in 

bringing the suit, in implementation of an illegal restraint of trade.”

Glaverbel, 45 F.3d at 1558. But the Federal Circuit changed its tune a 

few years later and clarified that “[i]t is not patent misuse to bring suit 

to enforce patent rights not fraudulently obtained.” C.R. Bard, Inc. v. 

M3 Sys., Inc., 157 F.3d 1340, 1373 (Fed. Cir. 1998). In other words, it is 

not patent misuse for a plaintiff to sue a defendant if the plaintiff is not 

suing to enforce fraudulently obtained patent rights.

Because Defendants SWT U.S. do not allege that Bridgestone sued 

to enforce fraudulently obtained patent rights, Bridgestone’s Motion to 

Strike is GRANTED.

C. Defendants SWT U.S.’s Motion for Leave to Amend

While Defendants SWT U.S.’s patent-misuse affirmative defense is 

struck, the Court finds no substantial reason to deny Defendants SWT 

U.S. leave to amend their patent-misuse defense. See Stripling v. 

Jordan Prod. Co., LLC, 234 F.3d 863, 872 (5th Cir. 2000) (explaining 

timely motion for leave to amend should be granted unless there is a 

“substantial reason” to deny leave to amend). Defendants SWT U.S.’s

Motion for Leave to Amend is thus GRANTED.

Defendants SWT U.S.’s second amended answer must be filed within 

21 days of this order and, if possible, correct the deficiencies of their 

patent-misuse affirmative defense identified in this memorandum 

opinion and order. See, e.g., E.E.O.C. v. Courtesy Bldg. Servs., Inc., No. 

3:10-CV-1911-D, 2011 WL 208408, at *5 (N.D. Tex. Jan. 21, 2011). If

Defendants SWT U.S. do not replead their patent-misuse defense, the 

defense will stand stricken. But if they do replead and Bridgestone has 

grounds to do so, it may move again for relief under Rule 12(f).

D. Defendant Speedways’s Motion to Dismiss

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Defendant Speedways moved to dismiss Bridgestone’s complaint for 

failure to state a claim, arguing that it was wrongfully named as a party. 

In support of this argument, Defendant Speedways relies on a 

declaration that it “does not manufacture, sell, market or import into 

the United States any of the allegedly infringing agricultural tires—it 

makes only bicycle tires and tubs.” ECF No. 30 at 2. “But the Court 

cannot consider [Defendant’s] evidence at the motion to dismiss stage 

and declines to convert [Defendant’s] motion to dismiss into [a] motion 

for summary judgment.” Salinas v. Loud, No. 4:22-CV-0837-P, 2022 WL 

17669724, at *2 (N.D. Tex. Dec. 14, 2022) (Pittman, J.); Collins v. 

Morgan Stanley Dean Witter, 224 F.3d 496, 498–99 (5th Cir. 2000)

(quoting Venture Assocs. Corp. v. Zenith Data Sys. Corp., 987 F.2d 429, 

431 (7th Cir. 1993) (“In ruling on a 12(b)(6) motion, documents outside 

of a plaintiff’s complaint are only considered ‘if they are referred to in 

the plaintiff’s complaint and are central to [the plaintiff’s] claims.’”)

And even if the Court could consider Defendant Speedways’s

Declaration, it does not affect whether Bridgestone has alleged sufficient 

facts at this stage of the case “to state a claim to relief that is plausible 

on its face.” Ashcroft, 556 U.S. at 678. Defendant Speedways does not 

dispute that Bridgestone’s complaint “contain[s] sufficient factual 

matter, accepted as true, to ‘state a claim to relief that is plausible on 

its face.’” Id. (quoting Bell Atl. Corp., 550 U.S. at 570). And having 

reviewed Bridgestone’s complaint, the Court agrees. Defendant 

Speedways’s Motion to Dismiss is thus DENIED.

CONCLUSION

Accordingly, the Court DENIES Bridgestone’s First Motion to 

Dismiss and Strike as moot, GRANTS Bridgestone’s Second Motion to 

Dismiss and Strike, GRANTS Defendants SWT U.S.’s Motion for Leave, 

and DENIES Defendant Speedways’s Motion to Dismiss.

SO ORDERED on this 20th day of March 2023.

Mark T. Pittman

UNITED STATES DISTRICT JUDGE

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