IN THE UNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF TEXAS 

MARSHALL DIVISION 

SIGNODE INDUSTRIAL GROUP LLC, 

 Plaintiff, 

 v. 

SAMUEL, SON & CO., LTD., ET AL. 

 Defendants. 

Case No. 2:24-CV-00080-JRG 

PLAINTIFF SIGNODE INDUSTRIAL GROUP LLC’S SUR-REPLY TO SAMUEL’S 

PARTIAL MOTION TO DISMISS PURSUANT TO RULE 12(b)(6) 

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TABLE OF CONTENTS 

I. SAMUEL’S REPLY FAILS TO ADDRESS THE TOTALITY OF SIGNODE’S 

ALLEGATIONS ..................................................................................................................... 1

II. THE FACTS OF THIS CASE ARE AKIN TO KIRSCH ....................................................... 2

III. SIGNODE IS NOT REQUIRED TO PLEAD ACTUAL KNOWLEDGE ............................. 3

IV. CONCLUSION ....................................................................................................................... 4

 

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TABLE OF AUTHORITIES 

 Page(s) 

Cases 

Kirsch Rsch. & Dev. LLC v. Atlas Roofing Corp., 

No. 5:20-cv-00055-RWS, 2020 WL 8363154 (E.D. Tex. Sept. 29, 2020)........................1, 2, 3 

Pacing Tech., LLC v. Garmin Int’l Inc., 

No. 12-CV-1067, 2013 WL 444642 (C.D. Cal. Feb. 5, 2013) ..................................................3 

Soverain IP, LLC v. Microsoft Corp., 

No. 2:17-CV-00204-RWS-RSP, 2018 WL 1465792 (E.D. Tex. Mar. 26, 2018) ..................3, 4 

Walker v. Beaumont Indep. Sch. Dist., 

938 F.3d 724 (5th Cir. 2019) .....................................................................................................2 

Rules 

Fed. R. Evid. 201 .............................................................................................................................2 

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Signode provides a series of allegations that, when taken together, properly allege pre-suit 

willfulness. See Kirsch Rsch. & Dev. LLC v. Atlas Roofing Corp., No. 5:20-cv-00055-RWS, 2020 

WL 8363154, at *4 (E.D. Tex. Sept. 29, 2020) (“[T]he Court must take all of [the plaintiff’s] 

factual allegations together, assume they are true and view them in the light most favorable to [the 

plaintiff].”). Samuel’s Reply fails to disturb this conclusion. First, Samuel quibbles with individual 

IDS citations while ignoring that these citations support the totality of allegations directed to 

willful infringement. Second, the allegations of this case are akin to those in Kirsch where the 

Court denied a defendant’s similar motion. Third, Samuel ignores this Court’s pleading 

requirements and instead attempts to distinguish the legal standard based on the facts. For at least 

these reasons, Samuel’s Motion (ECF No. 22) should be denied. 

I. SAMUEL’S REPLY FAILS TO ADDRESS THE TOTALITY OF SIGNODE’S 

ALLEGATIONS 

Rather than address the entirety of Signode’s allegations, Samuel’s Reply—like its 

Motion—focuses “too much on why individual allegations are not enough and quibbles with the 

facts.” Kirsch, 2020 WL 8363154, at *4. Namely, Samuel isolates its prosecution activity to 

conclude that each citation “is not enough to show plausible knowledge of the Asserted Patents.” 

See ECF No. 36 at 2 (citing Diamond Grading Techs. Inc. v. Am. Gem Soc’y, No. 2:14-CV-1161-

RWS-RSP, 2016 WL 3902482, at *2 (E.D. Tex. Mar. 30, 2016)). At no point does Signode allege 

that one-off, single IDS citations establish pre-suit knowledge of the Asserted Patents (even though 

they may well do so). 

 Signode alleges that it is plausible that Samuel learned of the Asserted Patents before 

Signode filed suit because “Samuel actively monitors Signode’s patent portfolio and product 

offerings.” ECF No. 20 at ¶ 33. This allegation of active monitoring is supported by Samuel’s 

numerous and consistent citations to Signode’s patents, patent applications, and products during 

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prosecution of Samuel’s own patent applications. As such, Signode provided several example 

citations in its First Amended Complaint—which Samuel does not contest. 

Samuel states that it does not refute “self-evident facts of what references were cited in 

which IDSes and when, as will be reflected in Samuel’s answer to the FAC.” See ECF No. 36 at 

1, n.1. Samuel’s citations to the Asserted Patents and their family members during prosecution of 

U.S. Patent Application 17/514,142 (“the ’142 Application”) fall directly within these “selfevident facts” that Samuel does not contest. See ECF No. 36 at 1, n.1. This supports Signode’s 

requests that the Court take judicial notice of these IDS submissions pursuant to Federal Rule of 

Evidence 201. See Walker v. Beaumont Indep. Sch. Dist., 938 F.3d 724, 735 (5th Cir. 2019). 

Further, Samuel ignores Signode’s distinction between the filing of the suit and service. 

Samuel cited the ’417 and ’418 Patents immediately after the suit was filed, but before it was 

served. This undercuts Samuel’s arguments that Samuel was not aware of the Asserted Patents and 

further demonstrates the plausibility of Signode’s allegations. In other words, Samuel’s immediate 

citations to the ’417 and ’418 Patents plausibly show, along with Signode’s additional allegations, 

that Samuel monitors Signode’s portfolio and learned of the Asserted Patents pre-suit. See, e.g., 

Section II (discussing additional allegations to support pre-suit knowledge). 

II. THE FACTS OF THIS CASE ARE AKIN TO KIRSCH

Contrary to Samuel’s arguments in reply, Signode illustrates how its allegations are 

analogous to those in Kirsch, 2020 WL 8363154. See ECF No. 33 at 5–6. The plaintiff in Kirsch

alleged: (1) the relevant market was small; (2) the plaintiff was a pioneer in the market; and (3) 

the parties were direct competitors. ECF No. 33 at 5 (citing Kirsch, 2020 WL 8363154, *2, 4). 

Signode also alleges each of these facts in the First Amended Complaint. ECF No. 20 at ¶¶ 22, 23, 

33, 34. 

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Moreover, Signode provided Kirsch in response to Samuel’s citation of Pacing Tech., LLC 

v. Garmin Int’l Inc.—a non-binding, non-precedential case from California. No. 12-cv-1067, 2013 

WL 444642, at *2 (S.D. Cal. Feb. 5, 2013). A brief review of Pacing Tech. demonstrates that the 

facts of this case are closer to Kirsch. In Pacing Tech., the plaintiff’s allegations regarding market 

competition were the only allegations regarding pre-suit knowledge. 2013 WL 444642, at *2. 

Continuing with its flawed focus on individual allegations, Samuel’s Reply again cites Pacing 

Tech., stating that “merely competing in the marketplace is not enough for pre-suit knowledge of 

specific patents.” See ECF No. 36 at 3–4. 

Signode’s allegations go far beyond that the parties “merely compet[e] in the marketplace.” 

ECF No. 36 at 3–4 (citing Pacing Tech., 2013 WL 444642, at *5–7). In addition to alleging that 

the parties compete in the same marketplace, Signode alleges: (1) the relevant market is small; (2) 

Signode has a significantly larger market share than Samuel; (3) Signode has a history of being an 

innovator in the market; (4) Samuel has purchased Signode’s products; and (5) Samuel actively 

monitors Signode’s patents and products—as evidence by Samuel’s citations to the Asserted 

Patents and their family members. ECF No. 20 at ¶¶ 33-34. Based on these allegations, it is 

plausible that Samuel gained pre-suit knowledge of the Asserted Patents. Thus, Signode properly 

alleges pre-suit willfulness. 

III. SIGNODE IS NOT REQUIRED TO PLEAD ACTUAL KNOWLEDGE 

Signode is not required to plead “[a]ctual knowledge of infringement or the infringement 

risk ... to plead a claim for willful infringement.” Soverain IP, LLC v. Microsoft Corp., No. 2:17-

CV-00204-RWS-RSP, 2018 WL 1465792, at *2 (E.D. Tex. Mar. 26, 2018) (quoting Elbit Sys. 

Land & C4I Ltd. v. Hughes Network Sys., LLC, No. 2:15-CV-00037-RWS-RSP, 2016 WL 

3878246, at *1 (E.D. Tex. Mar. 30, 2016)). Notably, Signode quotes this material from the Court’s 

“Applicable Law” section in Soverain. 2018 WL 1465792, at *1–2. Rather than address this legal 

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standard, Samuel devolves into licensing rights to distinguish the facts of this case with those of 

Soverain. See ECF No. 36 at 4. However, this legal standard is independent of the facts. And, 

similar to Soverain, a motion to dismiss willful infringement is at issue. 2018 WL 1465792, at *1. 

Thus, like the plaintiff in Soverain, Signode is not required to plead “[a]ctual knowledge of 

infringement or the infringement risk ... to plead a claim for willful infringement.” Id. at *2. 

IV. CONCLUSION 

For the reasons detailed above, the Court should deny Samuel’s Motion. 

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Date: July 8, 2024 Respectfully submitted, 

/s/ Devon C. Beane by permission Andrea Fair

 Devon C. Beane (Lead Counsel) 

(admitted pro hac vice) 

Jason Engel (admitted pro hac vice) 

Nathan Fuller (admitted pro hac vice) 

Jared Lund (admitted pro hac vice) 

K&L GATES LLP 

70 W. Madison Street, Suite 3300 

Chicago, IL 60602 

Tel.: (312) 372-1121 

devon.beane@klgates.com 

jason.engel@klgates.com 

nathan.fuller@klgates.com 

jared.lund@klgates.com 

Erik Halverson (admitted to practice in this 

district) 

K&L GATES LLP 

4 Embarcadero Center, Suite 1200 

San Francisco, California 94111 

Tel.: (415) 882-8238 

erik.halverson@klgates.com 

Caroline M. Vermillion (admitted pro hac 

vice) 

K&L GATES LLP 

599 Lexington Avenue 

New York, NY 10022 

Tel: (212) 536-3987 

caroline.vermillion@klgates.com 

Andrea Fair 

Texas Bar No. 24032294 

WARD, SMITH & HILL, PLLC

1507 Bill Owens Pkwy 

Longview, TX 75604 

Tel: (903) 757-6400 

Fax: (903) 757-2323 

andrea@wsfirm.com 

Attorneys for Plaintiff Signode Industrial 

Group LLC 

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CERTIFICATE OF SERVICE 

I hereby certify that a copy of the foregoing document was filed electronically in 

compliance with Local Rule CV-5(a) and served via the Court’s CM/ECF system on all counsel 

of record on this eleventh day of July 9, 2024. 

/s/ Devon C. Beane by permission 

Andrea Fair

Devon C. Beane 

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