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 

DECLARATION OF MICHAEL HOUSTON IN SUPPORT OF 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 57-1 Filed 10/17/24 Page 1 of 3 PageID #: 1080
1 

I, Michael Houston, declare as follows: 

1. I am a partner at the law firm of Foley & Lardner LLP and lead counsel of record 

for Samuel, Son & Co., Ltd. and Samuel, Son & Co. (USA) Inc. (“Samuel”) in the above-captioned 

case. I am submitting this declaration in support of Samuel’s Opposition to Signode’s Motion to 

Strike Samuel’s Twelfth Affirmative Defenses of Unclean Hands, Patent Misuse, and Other 

Equitable Doctrines. 

2. Attached as Exhibit 1 is a true and correct copy of U.S. Patent App. Pub. No. 

2016/0107775, published on April 21, 2016, and filed on May 5, 2014 as U.S. Patent App. No. 

14/787,966 (the “’966 Application”), by Amacker et al.. 

3. Attached as Exhibits 2 and 3 are true and correct copies of Swiss applications from 

the USPTO Patent Center website—and their certified translations—filed on September 24, 2012 

bearing Swiss Application Serial Nos. 1723/12 and 1724/12 respectively. The two untranslated 

Swiss applications were filed as Certified Copies of Foreign Priority Applications in the file history 

of U.S. Patent App. No. 14/430,163, the National Stage Entry of PCT App. No. IB2013/002116, 

both of which U.S. Patent No. 11,667,417 (the “’417 Patent”) asserted in this case claim priority 

to. 

4. Attached as Exhibit 4 is a true and correct copy of a Swiss application from the 

USPTO Patent Center website filed on May 5, 2013 bearing Swiss Application Serial No. 911/13. 

Exhibit 4 also contains a certified translation of Swiss Application Serial No. 911/13. The 

untranslated Swiss application was filed as a Certified Copy of a Foreign Priority Application in 

the file history of the ’966 Application. 

5. Attached as Exhibit 5 is a true and correct copy of Swiss Application Serial No. 

443/14 filed on March 24, 2014 from the USPTO Patent Center website and its certified 

Case 2:24-cv-00080-JRG Document 57-1 Filed 10/17/24 Page 2 of 3 PageID #: 1081
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translation. The untranslated Swiss application was filed as a Certified Copy of a Foreign Priority 

Application in the file history of the ’966 Application. 

6. Attached as Exhibit 6 is a true and correct copy of the Notice of Abandonment for 

the ’966 Application, dated October 11, 2019, from the USPTO Patent Center website. 

7. Attached as Exhibits 7, 8, 9, and 10 are true and correct copies of U.S. Patent Nos. 

9,938,029, 10,370,132, 11,267,596, and 11,560,245, respectively, from the Google Patent website. 

8. Attached as Exhibit 11 is a true and correct copy of the Notice of Allowance for 

the ’417 Patent obtained from the USPTO Patent Center website. 

I declare under penalty of perjury that the foregoing is true and correct. 

Executed on: October 17, 2024 

 /s/Michael R. Houston

 Michael R. Houston 

Case 2:24-cv-00080-JRG Document 57-1 Filed 10/17/24 Page 3 of 3 PageID #: 1082