IN THE UNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF TEXAS 

MARSHALL DIVISION 

SIGNODE INDUSTRIAL GROUP LLC, 

 Plaintiff, 

 v. 

SAMUEL, SON & CO., LTD. and SAMUEL, SON 

& CO. (USA) INC. d/b/a SAMUEL PACKAGING 

SYSTEMS GROUP and SAMUEL STRAPPING 

SYSTEMS, 

 Defendants. 

Civil Action No. 2:24-cv-00080-JRG 

JURY TRIAL DEMANDED 

DEFENDANTS SAMUEL, SON & CO., LTD.’S AND SAMUEL, SON & CO. (USA) 

INC.’S OPPOSITION TO SIGNODE’S MOTION TO STRIKE SAMUEL’S TWELFTH 

AFFIRMATIVE DEFENSES OF UNCLEAN HANDS, PATENT MISUSE, AND OTHER 

EQUITABLE DOCTRINES 

Case 2:24-cv-00080-JRG Document 57 Filed 10/17/24 Page 1 of 22 PageID #: 1058
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TABLE OF CONTENTS 

I. INTRODUCTION ...............................................................................................................1

II. FACTUAL BACKGROUND ..............................................................................................2

III. LEGAL STANDARDS .......................................................................................................6

A. Motions To Strike Are Disfavored and Are a Drastic Remedy ...............................6

B. Unclean Hands Can Be Based on Pre-Issuance Conduct ........................................7

C. Patent Misuse Can Be Based on Pre-Issuance Conduct ..........................................9

IV. ARGUMENT .....................................................................................................................10

A. Samuel Has Satisfied the Fair Notice Pleading Standard for Unclean 

Hands, which Can Be Premised on Pre-Issuance Activities ..................................10

B. Samuel Has Satisfied the Fair Notice Pleading Standard for Patent Misuse, 

which Can Be Premised on Pre-Issuance Activities ..............................................12

C. Samuel’s Improper Inventorship Defense Is Not Coextensive with its 

Unclean Hands/Patent Misuse Defenses ................................................................13

D. Samuel’s “Other Equitable Defenses” Language May Be Dropped for 

Now ........................................................................................................................14

E. In the Alternative, Samuel Requests Leave To Amend .........................................15

V. CONCLUSION ..................................................................................................................15

 

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TABLE OF AUTHORITIES 

Page(s) 

Cases

Am. Southern Ins. Co. v. Buckley, 

748 F. Supp. 2d 610 (E.D. Tex. 2010) ........................................................................................ 6

Bavely, Tr. of AAA Sports, Inc. v. Panini Am., Inc., 

No. 4:22-CV-093, 2022 WL 19076610 (E.D. Tex. Oct. 19, 2022) .......................................... 15 

Bombardier Recreational Prods., Inc. v. Arctic Cat Inc., 

No. CV 12-2706 (JRT/LIB), 2017 WL 5610220 (D. Minn. Nov. 20, 2017)............................ 14 

Cinel v. Connick, 

15 F.3d 1338 (5th Cir. 1994) ...................................................................................................... 4 

Foman v. Davis, 

371 U.S. 178 (1962) .................................................................................................................. 15 

Funk v. Stryker Corp., 

631 F.3d 777 (5th Cir. 2011) ...................................................................................................... 4 

Gibson Brands, Inc. v. Armadillo Distribution Enterprises, Inc., 

No. 4:19-CV-00358, 2020 WL 3453717 (E.D. Tex. June 24, 2020) ........................................ 15 

Gilead Scis., Inc. v. Merck & Co., 

888 F.3d 1231 (Fed. Cir. 2018)....................................................................................... 8, 11, 12

Godo Kaisha IP Bridge 1 v. Telefonaktiebolaget LM Ericsson, 

No. 2:21-CV-00213-JRG, 2022 WL 2055234 (E.D. Tex. June 6, 2022) ............................... 6, 7 

GREE, Inc. v. Supercell Oy, 

 2:19-cv-00071-JRG-RSP, 2019 WL 5677511 (E.D. Tex. Oct. 30, 2019) ................................. 7 

In re Gabapentin Pat. Litig., 

648 F. Supp. 2d 641 (D.N.J. 2009) ................................................................................. 9, 10, 12 

JumpSport, Inc. v. Acad., Ltd., 

 6:17-CV-414-RWS-JDL,2018 WL 10124888 n.3 (E.D. Tex. Sept. 6, 2018) ............................. 7 

Kaiser Aluminum & Chem. Sales, Inc. v. Avondale Shipyards, 

677 F.2d 1045 (5th Cir. 1982) .................................................................................................... 6 

Keystone Driller Co. v. Gen. Excavator Co., 

290 U.S. 240 (1933) .................................................................................................................... 8 

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iii 

Luv n’ Care, Ltd. v. Laurain, 

98 F.4th 1081 (Fed. Cir. 2024) ................................................................................................... 7 

Miracor Medical SA v. Abbott Labs., 

No. 23 C 16257, 2024 WL 4487294 (N.D. Ill. Oct. 7, 2024) ................................... 9, 10, 11, 12 

Motorola Mobility, Inc. v. TiVo Inc., 

No. 5:11-CV-053-JRG, 2013 WL 12040725 (E.D. Tex. Jan. 25, 2013) .................................... 6 

Netlist, Inc. v. Micron Tech., Inc., 

No. 2:22-CV-203-JRG-RSP, 2024 WL 698135 (E.D. Tex. Jan. 15, 2024) ................................ 9 

Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 

324 U.S. 806 (1945) .................................................................................................................... 8 

Princo Corp. v. Int’l Trade Comm’n, 

616 F.3d 1318 (Fed. Cir. 2010)................................................................................................... 9 

Sanchez v. Z & C Garden, LLC, 

No. 2:23-CV-00183, 2024 WL 1741812 (S.D. Tex. Feb. 6, 2024) ............................................ 7 

Solis v. Bruister, 

No. 4:10CV77-DPJ-FKB, 2012 WL 776028 (S.D. Miss. Mar. 8, 2012) ............................. 7, 12 

Town & Country Linen Corp. v. Ingenious Designs LLC, 

No. 18-CV-5075 (LJL), 2020 WL 3472597 (S.D.N.Y. June 25, 2020) ................................... 14 

United States v. Coney, 

689 F.3d 365 (5th Cir. 2012) ...................................................................................................... 6 

Veranda Assocs., L.P. v. Hooper, 

No. H–11–4206, 2012 WL 602143 (S.D. Tex. Feb. 23, 2012)............................................. 7, 12 

Virginia Panel Corp. v. MAC Panel Co., 

133 F.3d 860 (Fed. Cir. 1997)..................................................................................................... 9 

Windsurfing Int’l, Inc. v. AMF, Inc., 

782 F.2d 995 (Fed.Cir.1986)....................................................................................................... 9 

Woodfield v. Bowman, 

193 F.3d 354 (5th Cir. 1999) ...................................................................................................... 7 

Statutes

35 U.S.C. § 101 ............................................................................................................................. 14 

35 U.S.C. § 102 ............................................................................................................................. 14 

35 U.S.C. § 119 ............................................................................................................................. 14 

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35 U.S.C. § 120 ............................................................................................................................. 14 

35 U.S.C. § 256 ............................................................................................................................. 13 

35 U.S.C. § 256(a) ........................................................................................................................ 14 

35 U.S.C. § 271(d)(3) ................................................................................................................... 13 

Rules

Federal Rule of Civil Procedure 15(a)(2) ..................................................................................... 15 

MPEP § 1481.02 ........................................................................................................................... 14 

Regulations

37 CFR 1.324 ................................................................................................................................ 14 

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I. INTRODUCTION 

Defendants Samuel, Son & Co., Ltd. and Samuel, Son & Co. (USA) Inc. (collectively 

“Defendants” or “Samuel”) submit this Opposition to Plaintiff Signode Industrial Group LLC’s 

(“Plaintiff” or “Signode”) Motion to Strike Samuel’s Twelfth Affirmative Defenses of Unclean 

Hands, Patent Misuse, and Other Equitable Doctrines (Dkt. 54, “Motion”). Signode’s Motion 

should be denied with respect to the defenses of unclean hands and patent misuse, because Samuel 

has readily satisfied the applicable fair notice standard for those Affirmative Defenses. 

As outlined in the First Amended Answer (Dkt. 47), Signode wrongly pursued and obtained 

patents based on patent applications naming the “Finzo Group” of inventors who Samuel contends 

did not invent the claimed subject matter. Signode’s acquisition of the patents asserted here 

occurred only years after abandoning another line of patent applications that named the “Amacker 

Group” of inventors who first disclosed the relevant subject matter. Triggered by Samuel’s release 

of the accused STL-500 device, Signode wrongfully sought to revive the long-abandoned Amacker 

Group subject matter by pursuing patents under the Finzo Group knowing that they were not the 

true inventors, and then asserted these wrongfully-obtained patents against Samuel. 

Signode argues that unclean hands and patent misuse do not cover events occurring prior 

to patent issuance, and that misconduct during patent prosecution can only be addressed through 

the doctrine of inequitable conduct. Signode is wrong as a matter of law. Precedent demonstrates 

that unclean hands and patent misuse can be based on pre-issuance conduct and can apply to the 

misconduct alleged by Samuel here, and that inequitable conduct is not the sole available defense 

to such misconduct. Just because Signode contests the merits of Samuel’s affirmative defenses, 

that does not justify striking Samuel’s pleadings, which readily meet the pleading requirements. 

Regarding the statement including “other equitable defenses” in Samuel’s Twelfth 

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Affirmative Defense, Samuel does not oppose removing that particular language, with the 

understanding that Samuel reserves the right to later seek leave to amend its affirmative defenses 

based upon later-discovered facts, in accordance with the Court’s rules. 

II. FACTUAL BACKGROUND 

Signode filed a first Complaint on February 6, 2024 (Dkt. 1) alleging infringement of U.S. 

Patent Nos. 11,667,417 (Dkt. 20-1, “the ’417 Patent”) and 11,667,418 (Dkt. 20-2, “the ’418 

Patent”), and a First Amended Complaint on May 15, 2024 (Dkt. 20), further alleging infringement 

of U.S. Patent No. 11,932,430 (Dkt. 20-3, “the ’430 Patent”). Samuel Answered the First Amended 

Complaint on Aug. 15, 2024 (Dkt. 42) and filed a First Amended Answer (“FAA”) on September 

5, 2024, which included Samuel’s Twelfth Affirmative Defenses at issue here (Dkt. 47). 

Samuel’s FAA set forth numerous specifics relating to Signode’s failed attempt to procure 

certain patents under the Amacker Group inventors covering subject matter relevant here – and 

then years later procuring the ’417 and ’430 patents with a different, incorrect inventor group, 

known as the Finzo Group, to assert them in litigation. Id., 34-35. Based on the facts alleged in the 

FAA, Samuel contends that “Plaintiff’s attempted enforcement of at least the ’417 and ’430 Patents 

against Samuel is barred by one or more of the equitable doctrines of unclean hands, patent misuse, 

and/or other applicable equitable defenses.” Id. 

In particular, Samuel’s Twelfth Affirmative Defenses are premised on Signode’s actions 

concerning two separate lines of patent applications naming entirely different inventor groups: 

(1) Finzo Group – includes the ’417 and ’430 Patents, as well as the 

applications to which they claimed priority, and names as inventors Flavio Finzo, 

Mirco Neeser, and Dimitrios Takidis. Id. at 34; Dkt. 20-1, 20-3; and 

(2) Amacker Group – includes U.S. Patent App. No. 14/787,966, which 

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published as U.S. Patent App. Pub. No. 2016/0107775 (Ex. 1,1 “the ’966 

Application”), as well as the applications to which it claimed priority, and names 

as inventors Pascal Amacker and Andreas Keller. Dkt. 47 at 34-35. 

By way of further background, the Finzo Group filed two Swiss applications on September 

24, 2012, bearing Swiss Application Serial Nos. 1723/12 (Ex. 2) and 1724/12 (Ex. 3), directed to 

a strapping device, to which the ’417 and ’430 Patents claim priority. However, these Swiss 

applications do not disclose the alleged inventions that Signode would many years later claim 

under the Finzo Group inventors in the ’417 and ’430 Patents. For example, the Finzo Swiss 

applications fail to disclose a strapping device with a motorized rocker and an “input device” that: 

(i) upon movement to an activated position, activates a motor to pivot a rocker to a second position 

that moves a tensioning wheel away from a tensioning plate, and (ii) upon being released from the 

activated position, the rocker moves to a first position that moves the tensioning wheel toward the 

tensioning plate. See, e.g., ’417 Patent, claim 1; ’430 Patent, claim 4. Consistent with lack of 

invention by the Finzo Group, none of the claims in the Finzo Swiss applications recite strapping 

devices with an input device and its associated operation such as that described above to move the 

rocker in the manner as now claimed. Ex. 2, 3. 

Meanwhile, the Amacker Group filed two Swiss patent applications on May 5, 2013, 

bearing Swiss Application Serial Nos. 910/13 and 911/13 (Ex. 4). Dkt. 47 at 34; Ex. 4. The 

Amacker Swiss applications disclose a strapping device having a motorized rocker and an input 

device that is movable to an activated position to operate a motorized rocker so the tensioning 

wheel and plate are further apart, and is movable to a release position from the activated position 

that moves the rocker so the wheel and plate move closer together. Id. For example, the Amacker 

1

 All Exhibits are attached to the accompanying Declaration of Michael R. Houston. 

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911/13 application discloses as follows: “Pressing the rocker button 20 opens the rocker 8, 

meaning the rocker swings away from the tensioning wheel 7 with its tension plate 23” and 

“[w]hen the rocker button 20 is released, the rocker 8 swings the tension plate 23 back toward the 

tensioning wheel 7 ....” Ex. 4 at 13 (emphasis added). The Amacker Swiss applications also 

include claims directed to a strapping device including a motorized rocker and a button (an 

example of an “input device”) for moving the rocker. See, e.g., Ex. 4 at 54, claim 8. 

The Amacker Group filed additional Swiss applications with similar claims, including 

Swiss Application Serial No. 443/14 filed on March 24, 2014 (Ex. 5),2

 and a PCT Application 

Serial No. PCT/CH2014/000059 filed on May 5, 2014. See Ex. 1, front page. The 443/14 

application includes claims directed to a strapping device including “a motor-driven rocker” and 

“a rocker button with which the drive movement for the rocker to create the distance between the 

tensioning wheel and the tensioning plate can be triggered.” Ex. 5 at 104-07, claims 1, 17. 

The Amacker Group then filed the U.S. ’966 Application based on the foregoing Swiss and 

PCT applications. Ex. 1. Just like the priority applications before it, the Amacker Group’s U.S. 

’966 Application claimed a strapping device with a motor-driven rocker and “an actuating device 

actuatable to ... drive the rocker to generate the spacing between the tensioning wheel and the 

tensioning plate.” Id. at 28, claim 31. Yet, the U.S. PTO repeatedly rejected the U.S. ’966 

Application, and, following numerous rejections and amendments, Signode eventually abandoned 

the this application in October 2019. Dkt. 47 at 35; Ex. 6, Notice of Abandonment of U.S. ’966 

2

 Swiss Application Serial No. 443/14 is cited on the face of the U.S. ’966 Application publication 

(Ex. 1) and, the court can take judicial notice of this Swiss application. See, e.g., Cinel v. Connick, 

15 F.3d 1338, 1343 n.6 (5th Cir. 1994) (“[i]n deciding a 12(b)(6) motion to dismiss, a court may 

permissibly refer to matters of public record”); Funk v. Stryker Corp., 631 F.3d 777, 783 (5th Cir. 

2011) (“[T]he district court took appropriate judicial notice of publicly-available documents and 

transcripts ..., which were matters of public record directly relevant to the issue at hand.”). 

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Application. Notably, the U.S. PTO Examiner for the U.S. Amacker Application was different 

than the examiner who would later allow applications leading to the ’417 and ’430 Patents. 

Compare Ex. 6, front page with Dkt. 20-1, front page & Dkt. 20-3, front page. 

Thus, before the Finzo Group, the Amacker Group filed patent applications presenting a 

strapping device that included a motorized rocker and an input device operating the motor to move 

the rocker based on activation and release positions of the input device. The Amacker Group 

sought protection for a motorized rocker and an input device to operate movement of the rocker 

(together with other features), but the U.S. PTO never allowed the Amacker Group’s claims. 

In contrast, the Finzo Swiss applications failed to disclose an “input device” operating as 

later claimed in the ’417 and ’430 Patents. Ex. 2, 3. Further, over the next decade, the Finzo Group 

filed additional Swiss and U.S. applications, and obtained patents therefrom such as U.S. Patent 

Nos. 9,938,029 (Ex. 7), 10,370,132 (Ex. 8), 11,267,596 (Ex. 9), and 11,560,245 (Ex. 10) to which 

the ’417 and ’430 Patents claim priority. Yet, to Samuel’s knowledge, none of the claims ever 

presented in these Finzo Group applications or patents recited a strapping device with a motorized 

rocker and an input device activated or released for moving the rocker as described. 

Samuel contends that Signode’s course of action supports that Signode knew the Finzo 

Group did not invent this concept, including because the Amacker Group had already disclosed it. 

In June 2023, four years after abandoning the Amacker Group applications and just after 

Samuel released the accused STL-500 product, Signode submitted revised claims under a Finzo 

Group U.S. application which led to the ’417 Patent, directed for the first time to motorized rocker 

movement triggered specifically by the activation and release of an input device. Dkt. 20-1. The 

Notice of Allowance (Ex. 11) for the ’417 Patent – issued by a different examiner than the one 

who examined the U.S. Amacker application as noted above – premised the allowance on this 

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input device limitation, specifically that the release of the input device causes the rocker to move 

to the first position. Ex. 11 at 10 (emphasis added). 

Samuel contends that, despite knowing that the Finzo Group were not the proper inventors, 

faced with having abandoned the Amacker applications and with new competition in the market 

from Samuel’s STL-500 device, Signode presented the ’417 and ’430 claims to the U.S. PTO as 

the Finzo Group’s invention to impermissibly broaden the scope of protection to more than it was 

entitled to, and Signode has now asserted the improperly-obtained ’417 and ’430 Patents against 

Samuel in this litigation. Dkt. 47 at 34-35. Moreover, the same law firm, Neal, Gerber & Eisenberg 

LLP, and at least two of the same prosecuting attorneys from that law firm, Kevin Cukierski and 

Adam Masia, signed filings and prosecuted both the Amacker Group’s U.S. ’966 Application as 

well as various applications from the Finzo Group, including the applications that led directly to 

the ’417 and ’430 Patents, further supporting Signode’s knowledge of the alleged conduct. Id., 35. 

III. LEGAL STANDARDS 

A. Motions To Strike Are Disfavored and Are a Drastic Remedy 

“Motions to strike are generally disfavored.” Motorola Mobility, Inc. v. TiVo Inc., No. 

5:11-CV-053-JRG, 2013 WL 12040725, at *2 (E.D. Tex. Jan. 25, 2013) (citing Kaiser Aluminum 

& Chem. Sales, Inc. v. Avondale Shipyards, 677 F.2d 1045, 1058 (5th Cir. 1982)). “Indeed, striking 

portions of pleadings is a ‘drastic remedy’....” Id. (citing Am. Southern Ins. Co. v. Buckley, 748 F. 

Supp. 2d 610, 626 (E.D. Tex. 2010)). “‘[T]he action of striking a pleading should be sparingly 

used by the courts’ and ‘motion[s] to strike should be granted only when the pleading to be stricken 

has no possible relation to the controversy.’” Id. (quoting United States v. Coney, 689 F.3d 365, 

379 (5th Cir. 2012)). “‘[I]f an affirmative defense raises either a question of fact or a question of 

law, the court must deny a motion to strike.’” Godo Kaisha IP Bridge 1 v. Telefonaktiebolaget LM 

Ericsson, No. 2:21-CV-00213-JRG, 2022 WL 2055234, at *1 (E.D. Tex. June 6, 2022) (quoting 

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GREE, Inc. v. Supercell Oy, 2:19-cv-00071-JRG-RSP, 2019 WL 5677511, at *2 (E.D. Tex. Oct. 

30, 2019)). 

Affirmative defenses are not “subjected to the Twombly/Iqbal plausibility pleading 

standard” because “the Fifth Circuit has continued to apply the ‘fair notice’ pleading standard 

articulated in Woodfield even after the Supreme Court’s decisions in Twombly and Iqbal.” 

JumpSport, Inc. v. Acad., Ltd., No. 6:17-CV-414-RWS-JDL, 2018 WL 10124888, at *2 n.3 (E.D. 

Tex. Sept. 6, 2018) (collecting cases). “Importantly, the fair notice standard is not a high bar to 

clear—the Fifth Circuit has held that pleading only the name of the affirmative defense may be 

sufficient to provide fair notice.” Sanchez v. Z & C Garden, LLC, No. 2:23-CV-00183, 2024 WL 

1741812, at *2 (S.D. Tex. Feb. 6, 2024) (citing Woodfield v. Bowman, 193 F.3d 354, 362 (5th Cir. 

1999)); see also Godo Kaisha, 2022 WL 2055234, at *3 (noting that the “fair notice” pleading 

standard articulated in Woodfield is a “low bar” and that “in some cases, merely pleading the name 

of the affirmative defense ... may be sufficient”). 

“‘Even when addressing a pure question of legal sufficiency courts are very reluctant to 

determine such issues on a motion to strike, preferring to determine them only after further 

development by way of discovery and a hearing on the merits, either on summary judgment motion 

or at trial.’” Solis v. Bruister, No. 4:10CV77-DPJ-FKB, 2012 WL 776028, at *7 (S.D. Miss. Mar. 

8, 2012) (quoting Veranda Assocs., L.P. v. Hooper, No. H-11-4206, 2012 WL 602143, at *3 (S.D. 

Tex. Feb. 23, 2012)) (internal quotation marks omitted). 

B. Unclean Hands Can Be Based on Pre-Issuance Conduct 

“A court may find unclean hands when the misconduct of a party seeking relief ‘has 

immediate and necessary relation to the equity that he seeks in respect of the matter in litigation ... 

for such violations of conscience as in some measure affect the equitable relations between the 

parties in respect of something brought before the court for adjudication.’” Luv n’ Care, Ltd. v. 

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Laurain, 98 F.4th 1081, 1094 (Fed. Cir. 2024) (quoting Keystone Driller Co. v. Gen. Excavator 

Co., 290 U.S. 240, 245 (1933)). The Supreme Court stated that the doctrine “closes the doors of a 

court of equity to one tainted with inequitableness or bad faith relative to the matter in which he 

seeks relief, however improper may have been the behavior of the defendant.” Precision 

Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806, 814 (1945). Moreover, the doctrine 

“necessarily gives wide range to the equity court’s use of discretion in refusing to aid the unclean 

litigant ... [i]t is ‘not bound by formula or restrained by any limitation that tends to trammel the 

free and just exercise of discretion.’” Id. at 815 (quoting Keystone, 290 U.S. at 245-46). 

Pre-issuance conduct, including misconduct during patent prosecution, can lead to a 

finding of unclean hands, barring a party from enforcing a patent. Gilead Scis., Inc. v. Merck & 

Co., 888 F.3d 1231, 1240-44 (Fed. Cir. 2018). In Gilead, the Federal Circuit affirmed a district 

court’s finding of unclean hands that was based in part on pre-issuance conduct including 

misconduct during patent prosecution.3 Id. at 1234, 1240-44. The Federal Circuit indicated that it 

saw no error in the district court’s determination that the pre-issuance misconduct was immediately 

and necessarily related to the equity of Merck’s obtaining enforcement of its patent and, therefore, 

that the patent was unenforceable due to unclean hands. Id. at 1240, 1244. Another court recently 

denied a motion to strike an unclean hands defense that was premised on actions during patent 

3

 The court in Gilead found the following pre-issuance conduct significant in its ruling of unclean 

hands: (1) during the prosecution of its patent applications, Merck’s attorney, Dr. Durette, 

participated in a confidential conference call with Pharmasset, a company developing Hepatitis C 

treatments, which disclosed the structure of its compound PSI-6130; (2) this call was subject to a 

“firewall” agreement, meaning that certain Merck representatives, particularly those involved in 

related patent prosecutions, were not supposed to access this information; (3) despite knowing the 

conflict, Dr. Durette participated in the call and obtained confidential knowledge about PSI-6130; 

(4) he then continued to prosecute Merck’s patent applications without withdrawing, even though 

his knowledge of Pharmasset’s compound influenced how he structured Merck’s claims.; and (5) 

after obtaining confidential information about PSI-6130, Dr. Durette amended Merck’s pending 

patent applications to narrow the claims to cover the key features of PSI-6130. Id. at 1241-44. 

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prosecution. See Miracor Medical SA v. Abbott Labs., No. 23 C 16257, 2024 WL 4487294, at *2-

3 (N.D. Ill. Oct. 7, 2024) (denying motion to strike unclean hands defense because the defendants 

sufficiently alleged that the plaintiff engaged in unconscionable conduct related to patent 

prosecution). The court in Miracor also explained that affirmative defenses should not be stricken 

as being redundant of other defenses because “the Federal Rules allow parties to plead defenses 

and counterclaims in the alternative.” Id. at *3. 

C. Patent Misuse Can Be Based on Pre-Issuance Conduct 

“Patent misuse is an equitable defense established when the patentee engages in conduct 

that impermissibly broadens a patent’s physical or temporal scope with anticompetitive effect.” 

Netlist, Inc. v. Micron Tech., Inc., No. 2:22-CV-203-JRG-RSP, 2024 WL 698135, at *1 (E.D. Tex. 

Jan. 15, 2024), report and recommendation adopted, No. 2:22-CV-203-JRG-RSP, 2024 WL 

692114 (E.D. Tex. Feb. 19, 2024) (citing Virginia Panel Corp. v. MAC Panel Co., 133 F.3d 860, 

868 (Fed. Cir. 1997)); see also Princo Corp. v. Int’l Trade Comm’n, 616 F.3d 1318, 1328 (Fed. 

Cir. 2010) (“In our cases applying the Supreme Court’s patent misuse decisions, we have 

characterized patent misuse as the patentee’s act of ‘impermissibly broaden[ing] the ‘physical or 

temporal scope’ of the patent grant with anticompetitive effect.’”) (quoting Windsurfing Int’l, Inc. 

v. AMF, Inc., 782 F.2d 995, 1001 (Fed.Cir.1986)). 

Pre-issuance conduct, such as actions taken during the prosecution of a patent application, 

may constitute patent misuse if it manipulates the patent system to secure an unfair competitive 

advantage. For example, in In re Gabapentin Pat. Litig., 648 F. Supp. 2d 641, 651-56 (D.N.J. 

2009), the court denied a motion to strike with respect to an affirmative defense of patent misuse 

that was based on conduct intended to broaden the scope of a patent through improper actions 

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taken during prosecution of the patent application and earlier patent applications.4 Id. 

The patent owner, Warner-Lambert, argued that the defendant’s patent misuse defense 

should fail “because all of Warner-Lambert’s allegedly improper actions occurred before the ’482 

Patent was officially issued ....” Id. at 654. “In effect, they argue[d] that the patentee could not 

have obtained a market benefit beyond that which inures in the statutory patent right if the patent 

itself ha[d] not yet issued.” Id. (quotations omitted). The court rejected that argument, explaining 

that “Warner-Lambert’s alleged manipulation of the patent prosecution process, for the purpose of 

forestalling generic competition, is conduct that if proven could conceivably persuade a rational 

fact-finder applying a rule of reason that patent misuse has been established.” Id. 

The court further made clear that the pleading stage only required allegations of such 

conduct, explaining that correctness of the defendants’ allegations went to the merits rather than 

its viability. Id. The court concluded that “[d]iscovery on such issues will proceed and the patent 

misuse affirmative defense will not be stricken.” Id.; see also Miracor, 2024 WL 4487294, at *3 

(denying motion to strike defense of patent misuse that was based on the plaintiff’s pre-issuance 

patent prosecution conduct, where the patents were drafted to improperly broaden their scope). 

IV. ARGUMENT 

A. Samuel Has Satisfied the Fair Notice Pleading Standard for Unclean 

Hands, which Can Be Premised on Pre-Issuance Activities 

Samuel’s Twelfth Affirmative Defenses readily provide fair notice of its affirmative 

defense of unclean hands. Samuel provided details concerning the two lines of patent applications 

4

 In particular, the court considered the following actions as supporting an affirmative defense for 

patent misuse: (1) submission of an Information Disclosure Statement (“IDS”) that did not list all 

known material prior art; (2) filing a subsequent IDS and allegedly omitting a known patent from 

its IDS filing in bad faith; and (3) abandoning one application about a month before it would have 

issued and filing a continuation application, where the ultimately issued patent had claims similar 

to those previously allowed. Id. at 653. 

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11 

in question, its contentions relating to inventorship, and Signode’s actions in pursuing claims in 

applications that it had no rights to pursue (due to improper inventorship) at the U.S. PTO and then 

asserting infringement here. Dkt. 47 at 34-35. Signode’s alleged unclean hands – wrongfully 

obtaining the ’417 and ’430 Patents – directly relates to Signode’s assertion of the ’417 and ’430 

Patents in this litigation. As discussed supra, striking portions of pleadings is a “drastic remedy,” 

and fair notice is a “low bar” to clear. There is no “unfair surprise” because Samuel has provided 

more than fair notice of the alleged conduct forming the basis of Samuel’s unclean hands defense. 

Therefore, Signode is wrong to argue that “Samuel’s allegations fail to give fair notice of key 

elements of [] unclean hands thereby failing to provide fair notice of how the defense bars 

Signode’s claims.” Mot., 2-3. 

Signode argues that “the ’417 and ’430 Patents were not even filed until January 4, 2023, 

and April 25, 2023, respectively,” that “[m]ost of Samuel’s allegations concern events that 

transpired prior to the issuance of the ’417 and ’430 Patents,” and that unclean hands cannot be 

based on pre-issuance conduct. Id., 1, 4-5, 8. That is simply incorrect. As outlined above (supra, 

§III.B), unclean hands can be premised on pre-issuance conduct. See Gilead, 888 F.3d at 1240-44; 

Miracor, 2024 WL 4487294, at *2-3. Thus, while Signode attempts to isolate the ’417 and ’430 

Patents by arguing that they were not even filed until 2023, it is Signode’s actions in two sets of 

patent applications with entirely different named inventor groups spanning a decade—culminating 

in the ’417 and ’430 prosecutions and issuances under a knowingly incorrect inventor group after 

the applications naming the correct inventor group were intentionally abandoned by the same 

prosecuting attorneys—that give rise to Samuel’s unclean hands affirmative defense. 

Signode also incorrectly tries to pigeonhole Samuel into an inequitable conduct defense, 

asserting that Samuel’s defenses are “plainly intended to sidestep the pleading requirement of 

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12 

inequitable conduct.” Mot., 1, 3. Again, Signode gets the law wrong. As discussed supra, § III.B, 

courts have found that misconduct that includes patent prosecution activities can support a defense 

of unclean hands separate from inequitable conduct.5 See Gilead, 888 F.3d at 1240-44. Signode’s 

alleged misconduct involved a manipulation of the patent system with an improper assertion of the 

obtained patents in this litigation which, as demonstrated by case precedent, can constitute both 

unclean hands and patent misuse. An assertion of inequitable conduct is not required in order to 

pursue an unclean hands defense. 

Signode also asserts that “Samuel’s allegations for its defense of unclean hands fails [sic] 

to allege that Signode has engaged in any egregious conduct.” Mot., 3, 6. Yet Samuel disagrees 

and believes that the alleged conduct is egregious. Properly understood, Signode’s arguments are 

at most directed towards the merits of unclean hands, which does not support striking Samuel’s 

pleading at this stage of the case. See Solis, 2012 WL 776028, at *7; Veranda, 2012 WL 602143, 

at *3. Moreover, Signode says that “[t]here has been no perjury, no manufacture of false evidence, 

and no suppression of evidence alleged.” Mot., 7. Unclean hands is not limited to such conduct, 

nor has Samuel been afforded full discovery to date. Signode may pursue summary judgment at 

the appropriate stage, but not a motion to strike Samuel’s pleadings at this early stage. 

B. Samuel Has Satisfied the Fair Notice Pleading Standard for Patent 

Misuse, which Can Be Premised on Pre-Issuance Activities 

For reasons similar to unclean hands, Samuel has likewise provided fair notice for its patent 

misuse affirmative defense. Dkt. 47 at 34-35. Further, contrary to Signode’s position, the caselaw 

makes clear that pre-issuance activities can give rise to patent misuse. Gabapentin, 648 F. Supp. 

2d at 651-56; Miracor, 2024 WL 4487294, at *3. 

5

 Samuel reserves the right to add (including seeking leave if needed) an inequitable conduct 

defense in this case. 

Case 2:24-cv-00080-JRG Document 57 Filed 10/17/24 Page 17 of 22 PageID #: 1074
13 

Signode incorrectly argues that “[f]or patent misuse, Samuel fails to allege any attempt by 

Signode to broaden or enlarge the scope of the ’417 and ’430 Patents or any conduct by Signode 

that has created anti-competitive effects.” Mot., 3-6. To the contrary, Samuel has alleged how 

Signode’s misconduct broadened its patent coverage when it obtained the ’417 and ’430 claims, 

and that Signode has improperly asserted such wrongfully gained patents in an attempt to exclude 

Samuel’s STL-500 product from the market.6 Signode’s argument that the Amacker publication 

going abandoned purges misuse (Mot., 5) fails, because the alleged misuse concerns assertion of 

the improperly obtained ’417 and ’430 Patents. Therefore, Signode has not met its very high 

burden to strike Samuel’s patent misuse affirmative defense. 

C. Samuel’s Improper Inventorship Defense Is Not Coextensive with its Unclean 

Hands/Patent Misuse Defenses 

Signode argues that “even if inventorship is incorrect for the ’417 and ’430 Patents, that 

can be corrected,” and that “inventorship can be corrected for any reason. 35 U.S.C. § 256,” and 

that “improper inventorship has been found not to ‘constitute extreme circumstances’ that would 

support unclean hands.” Mot., 2, 7. 

Signode misstates the point. Samuel does not allege mere incorrect inventorship in 

isolation, but rather contends that Signode sought to manipulate the U.S. patent system by pursuing 

patent claims under an improper inventor group because: (a) in 2019, Signode abandoned the line 

of patent applications by the Amacker Group who disclosed the claimed subject matter before the 

Finzo Group; (b) Samuel released the accused STL-500 and Signode wanted to try to exclude it 

from the market; and (c) Signode used the Finzo Group applications for a second bite at the apple 

to improperly claim abandoned subject matter (in front of a different U.S. PTO examiner, no less) 

6

 Signode’s argument that 35 U.S.C. § 271(d)(3) “confirms that the mere act of asserting a patent 

in litigation is not misuse” (Mot., 5) fails, as Samuel has alleged an entire course of conduct. 

Case 2:24-cv-00080-JRG Document 57 Filed 10/17/24 Page 18 of 22 PageID #: 1075
14 

after giving up the Amacker Group application years earlier. 

Further, merely seeking correction of inventorship at this stage would not undo the 

misconduct that has already occurred.7 Nor does it suffice that Signode disclosed the Amacker 

U.S. publication to the U.S. PTO during prosecution of the ’417 and ’430 Patents (Mot., 1, 7). 

Signode did not cite the U.S. office action rejections from the Amacker patent application to 

provide the second examiner with the first examiner’s reasoning, nor did Signode alert the U.S. 

PTO examiner to the inventorship issue. Signode’s hypothetical argument that Samuel could have 

pursued a defense of obviousness-type double patenting if the Amacker patent application had 

issued as a patent (Mot., 1, n.1) has no relevance here and does not undo the misconduct.8

 While 

Signode relies on Bombardier Recreational Prods., Inc. v. Arctic Cat Inc., No. CV 12-2706 

(JRT/LIB), 2017 WL 5610220 (D. Minn. Nov. 20, 2017), the Court there was deciding summary 

judgment, not a motion to strike pleadings at this early stage of the case. See id. at *1-2.

D. Samuel’s “Other Equitable Defenses” Language May Be Dropped for Now 

Regarding the statement of “other equitable defenses” in Samuel’s Twelfth Affirmative 

Defenses, Samuel does not oppose dropping that particular language, understanding that Samuel 

reserves the right to later seek leave to amend its affirmative defenses, following the Court’s rules, 

based upon later-discovered facts. See Town & Country Linen Corp. v. Ingenious Designs LLC, 

7

 Moreover, Signode presumes, without any basis, that it can satisfy all the requirements for 

correcting inventorship, which requires obtaining agreement from all named and purported 

inventors for any newly asserted correct inventorship. 35 U.S.C. § 256(a); MPEP § 1481.02 

(“[c]orrection of inventorship in a patent under 37 CFR 1.324 requires petition of all the parties, 

i.e., originally named inventors and assignees”). In fact, Signode says that it has no contact 

information for Mr. Finzo. (Dkt. 46-8 at 5). Also, completely switching inventors in the ’417 and 

’430 Patents would destroy any claim to priority under 35 U.S.C. §§ 119, 120. 

8

 Signode does not dispute that Samuel has alleged invalidity under §§ 101 and 102, which includes 

invalidity for lack of inventorship. Thus, Samuel will already be pursuing discovery related to 

inventorship, such that striking of Samuel’s defenses would do little to streamline the case. 

Case 2:24-cv-00080-JRG Document 57 Filed 10/17/24 Page 19 of 22 PageID #: 1076
15 

No. 18-CV-5075 (LJL), 2020 WL 3472597, at *15 (S.D.N.Y. June 25, 2020) (“[T]o the extent that 

the Reserve of Defenses Clause seeks only to reserve the right to seek leave to amend, it should 

not be stricken even though the language of the reservation is imprecise because Defendant does 

retain the right to seek leave of the court to amend the[] answer.”) (internal quotation marks 

omitted). 

E. In the Alternative, Samuel Requests Leave To Amend 

Should the Court find merit in Signode’s Motion, in the alternative, Samuel asks for leave 

to amend its Twelfth Affirmative Defenses to the extent necessary. “Federal Rule of Civil 

Procedure 15(a)(2) provides that ‘[t]he court should freely give leave when justice so requires[.]’” 

Gibson Brands, Inc. v. Armadillo Distribution Enterprises, Inc., No. 4:19-CV-00358, 2020 WL 

3453717, at *5 (E.D. Tex. June 24, 2020). “Leave should be freely given unless there is an apparent 

or declared reason, ‘such as undue delay, bad faith or dilatory motive on the part of the movant, 

repeated failure to cure deficiencies by amendments previously allowed, undue prejudice to the 

opposing party by virtue of allowance of the amendment, futility of amendment, etc.’” Bavely, Tr. 

of AAA Sports, Inc. v. Panini Am., Inc., No. 4:22-CV-093, 2022 WL 19076610, at *5 (E.D. Tex. 

Oct. 19, 2022) (quoting Foman v. Davis, 371 U.S. 178, 182 (1962)). The present action is at a very 

early stage and an amendment would cause no undue prejudice. 

V. CONCLUSION 

For all of the foregoing reasons, Samuel respectfully asks that Signode’s Motion to Strike 

the Unclean Hands and Patent Misuse affirmative defenses be denied. 

Dated: October 17, 2024 Respectfully submitted, 

/s/Michael R. Houston 

Case 2:24-cv-00080-JRG Document 57 Filed 10/17/24 Page 20 of 22 PageID #: 1077
16 

Michael R. Houston (IL Bar No. 6286431) 

Pavan K. Agarwal (D.C. Bar No. 459614) 

Tiffany K. Sung (CA Bar No. 323077) 

Gabriella M. Salek (IL Bar No. 6342686) 

FOLEY & LARDNER LLP 

321 North Clark Street, Suite 3000 

Chicago, IL 60654 

Telephone: (312) 832-4378 

Facsimile: (312) 832-4700 

Email: mhouston@foley.com 

 pagarwal@foley.com 

 tsung@foley.com 

 gsalek@foley.com 

Melissa R. Smith 

State Bar No. 24001351 

GILLAM & SMITH, LLP 

303 South Washington Avenue 

Marshall, Texas 75670 

Telephone: (903) 934-8450 

Facsimile: (903) 934-9257 

Email: melissa@gillamsmithlaw.com 

Attorneys for Defendants Samuel, Son & 

Co., Ltd. and Samuel, Son & Co. (USA) 

Inc. 

 

Case 2:24-cv-00080-JRG Document 57 Filed 10/17/24 Page 21 of 22 PageID #: 1078
17 

CERTIFICATE OF SERVICE 

 The undersigned hereby certifies that counsel of record who are deemed to have consented 

to electronic services are being served with a copy of this document via the Court’s CM/ECF 

system per Local Rule CV-5(a)(3) on this the 17th day of October 2024. 

Dated: October 17, 2024 Respectfully submitted, 

/s/Melissa R. Smith 

Michael R. Houston (IL Bar No. 6286431) 

Pavan K. Agarwal (D.C. Bar No. 459614) 

Tiffany K. Sung (CA Bar No. 323077) 

Gabriella M. Salek (IL Bar No. 6342686) 

FOLEY & LARDNER LLP 

321 North Clark Street, Suite 3000 

Chicago, IL 60654 

Telephone: (312) 832-4378 

Facsimile: (312) 832-4700 

Email: mhouston@foley.com 

 pagarwal@foley.com 

 tsung@foley.com 

 gsalek@foley.com 

Melissa R. Smith 

State Bar No. 24001351 

GILLAM & SMITH, LLP 

303 South Washington Avenue 

Marshall, Texas 75670 

Telephone: (903) 934-8450 

Facsimile: (903) 934-9257 

Email: melissa@gillamsmithlaw.com 

Attorneys for Defendants Samuel, Son & 

Co., Ltd. and Samuel, Son & Co. (USA) 

Inc. 

Case 2:24-cv-00080-JRG Document 57 Filed 10/17/24 Page 22 of 22 PageID #: 1079