District Judge Thomas P. Griesa denied plaintiff Endo Pharmaceuticals Inc.’s motion to strike defendant Roxane Laboratories, Inc.’s affirmative defense of unclean hands because Endo previously consented to the defense.  Endo sued Roxane for infringement of U.S. Patent Nos. 8,309,122 (“the ’122 patent”), 8,329,216 (“the ’216 patent”), and 7,851,482 (“the ’482 patent”) in response to Roxane’s application to market a generic oxymorphone hydrochloride product. In June 2014, Roxane moved to amend its answer to include the affirmative defense of unclean hands.  The court granted leave to amend, noting that Endo did not oppose the amendment.  Endo filed a motion to strike the unclean hands defense after responding to Roxane’s amended answer and  “just weeks before the scheduled start of trial,” far exceeding the timeframe set out  in Federal Rule of Civil Procedure 12(f).  The court rejected Endo’s argument that it did not learn the basis for the defense until January 2015 and found that Endo expressly consented to the defense in its memorandum in opposition to Roxane’s motion to amend.  The court explained that it would deny Endo’s motion to strike “even if it were not untimely, and even if [Endo] had not already assented to the unclean hands defense.  By seeking an injunction against [Roxane], [Endo] comes to the court in equity.  [Roxane] has raised concerns that [Endo] inequitably interfered with a supply agreement between [Roxane] and another entity.  The defense of unclean hands deserves to be tried on the merits.”

Endo Pharmaceuticals Inc. v. Roxane Laboratories, Inc., No. 13 Civ. 3288 (TPG) (TPG), 2015 BL 75851, (S.D.N.Y. Mar. 19, 2015)