DuraPlas, LP v. Diversitech Corporation

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IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF TEXAS
DALLAS DIVISION
DURAPLAS, LP,
Plaintiff,
v.
DIVERSITECH CORPORATION,
Defendant.
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Civil Action No. 3:25-CV-1310-K
MEMORANDUM OPINION AND ORDER
Before the Court are Plaintiff’s Supplemental Complaint and exhibits (the
“Supplemental 	Complaint”) 	(Doc. 	No. 	23), 	Defendant 	DiversiTech
Corporation’s Motion to Dismiss Plaintiff’s Amended Complaint (Doc. No. 25) (the
“Motion”), Defendant DiversiTech Corporation’s Memorandum of Law in Support of
its Motion to Dismiss (the “Memorandum in Support”) (Doc. No. 26), DuraPlas, LP’s
Opposition to Motion to Dismiss (the “Opposition”) (Doc. No. 38), and Defendant
DiversiTech Corporation’s Reply Memorandum of Law in Further Support of its
Motion to Dismiss (the “Reply”) (Doc. No. 42). The Court has carefully considered
the 	Supplemental 	Complaint, 	the 	Motion, 	the 	Memorandum 	in 	Support, 	the
Opposition, and the Reply, as well as the applicable law and the relevant portions of
the 	record. 	For 	the 	reasons 	stated 	below, 	the 	Court GRANTS-IN-PART 	AND
DENIES-IN-PART the Motion.
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I. 	Background
In Plaintiff’s Original Complaint filed May 26, 2025 (the “Original Complaint”),
Plaintiff DuraPlas, LP (“DuraPlas”) asserted ten claims against Defendant DiversiTech
Corporation (“DiversiTech”). Doc. No. 1. In its Supplemental Complaint, DuraPlas
added allegations and exhibits relating to facts arising after May 26, 2025. See Doc.
No. 23 (Supplemental Complaint); Doc. No. 11-2 (comparing Original Complaint and
Supplemental Complaint); see also FED . R. CIV. P. 15(d) (“On motion and reasonable
notice, the court may, on just terms, permit a party to serve a supplemental pleading
setting out any transaction, occurrence, or event that happened after the date of the
pleading to be supplemented.”). In its Supplemental Complaint, DuraPlas added two
claims. Id. As a result, the Supplemental Complaint is the live complaint, and it cites
exhibits that were filed both with the Original Complaint and the Supplemental
Complaint. Doc. Nos. 1-2–1-13 & 23-1–23-7 (Exhibits A–R). To clarify, DiversiTech
styled its Motion as a motion to dismiss DuraPlas’s “Amended Complaint.” See Doc.
No. 25. DiversiTech also repeatedly refers to an “Amended Complaint.” See id. at 1;
Doc. No. 26 at 1; Doc. No. 42 at 1. The Court understands the present Motion as a
motion to dismiss DuraPlas’s Supplemental Complaint (Doc. No. 23), which is the live
pleading in this case. No “amended” complaint has been filed in this case.
In the Motion, DiversiTech moves pursuant to Federal Rules of Civil Procedure
12(b)(1) and 12(b)(6) to dismiss with prejudice all claims asserted against it for either
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lack of subject matter jurisdiction or for failure to state a claim upon which relief can
be granted.
II. 	Standard of Review
A. 	Federal Rule of Civil Procedure 12(b)(1)
“The requirement that jurisdiction be established as a threshold matter springs
from the nature and limits of the judicial power of the United States and is inflexible
and without exception.” Steel Co. v. Citizens for a Better Env’t, 523 U.S. 83, 94–95 (1998)
(quoting Mansfield, C. & L.M. Ry. Co. v. Swan, 111 U.S. 379, 382 (1884) (cleaned up)).
Therefore, a party may challenge a district court’s subject matter jurisdiction to hear a
case by filing a motion pursuant to Federal Rule of Civil Procedure 12(b)(1). The
district court must resolve any Rule 12(b)(1) motion before addressing any other
matter because the court must find it has jurisdiction before it determines the validity
of any claim. Moran v. Saudi Arabia, 27 F.3d 169, 172 (5th Cir. 1994).
A Rule 12(b)(1) motion may assert either a facial or factual challenge to the
court’s subject matter jurisdiction. Williamson v. Tucker, 645 F.2d 404, 412 (5th Cir.
1981). If the motion does not include evidence outside the complaint, that challenge
is considered a facial attack on the court’s subject matter jurisdiction. Id. “A ‘facial
attack’ on the complaint requires the court merely to look and see if plaintiff has
sufficiently alleged a basis of subject matter jurisdiction, and the allegations in his
complaint are taken as true for the purposes of the motion.” Menchaca v. Chrysler Credit
Corp., 613 F.2d 507, 511 (5th Cir. 1980).
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“The burden of proof for a Rule 12(b)(1) motion to dismiss is on the party
asserting jurisdiction.” Ramming v. United States, 281 F.3d 158, 161 (5th Cir. 2001).
“Accordingly, the plaintiff constantly bears the burden of proof that jurisdiction does
in fact exist.” Id.
B. 	Federal Rule of Civil Procedure 12(b)(6)
Generally speaking, a pleading that properly states a claim for relief contains a
short and plain statement of the claim showing the complainant is entitled to relief.
F ED . R. CIV. P. 8(a). To properly state a claim of fraud, however, the complainant must
state with particularity the circumstances constituting fraud. FED . R. CIV. P. 9(b).
A party may bring a Rule 12(b)(6) motion to dismiss when a complaint fails to
properly state a claim. F ED . R. CIV. P. 12(b)(6). To properly state a claim, a complaint
must assert facts that, taken as true, are sufficient 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 (2007)). A claim is facially plausible “when the plaintiff
pleads factual content that allows the court to draw the reasonable inference that the
defendant is liable for the misconduct alleged.” Id. Though the court “must accept as
true all of the allegations contained in a complaint,” the court need not accept as true
the complaint’s “legal conclusions,” “[t]hreadbare recitals of the elements of a cause of
action,” or “mere conclusory statements.” Id. Furthermore, “[w]here there is a conflict
between allegations in a pleading and exhibits thereto, it is well settled that the exhibits
control.” Simmons v. Peavy-Welsh Lumber Co., 113 F.2d 812, 813 (5th Cir. 1940). And
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“[i]t is clearly proper in deciding a 12(b)(6) motion to take judicial notice of matters
of public record.” Jenkins v. Tahmahkera, 151 F.4th 739, 747 (5th Cir. 2025) (quoting
United States ex rel. Long v. GSDMIdea City, L.L.C., 798 F.3d 265, 274 n.8 (5th Cir.
2015) (cleaned up)).
A dismissal granted pursuant to a “motion to dismiss under 12(b)(6) ‘is viewed
with disfavor and is rarely granted.’” Turner v. Pleasant, 663 F.3d 770, 775 (5th Cir.
2011) (quoting Harrington v. State Farm Fire & Cas. Co., 563 F.3d 141, 147 (5th Cir.
2009)). Thus, when a claimant fails to properly state a claim, district courts ordinarily
grant leave to amend an inadequate complaint. Indeed, courts should freely give leave
to amend when justice so requires. Leal v. McHugh, 731 F.3d 405, 417 (5th Cir. 2013)
(citing F ED . R. CIV. P. 15(a)(2)). That said, that “generous standard is tempered by the
necessary power of a district court to manage a case.” Id. (quoting Priester v. JP Morgan
Chase Bank, N.A., 708 F.3d 667, 678 (5th Cir. 2013), abrogated in part on other grounds
by Wood v. HSBC Bank USA, N.A., 505 S.W.3d 542 (Tex. 2016)). Thus, in determining
whether to grant leave to amend, “the court may consider factors 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 the allowance of the amendment, [and] futility of the amendment.’” Id.
(quoting Foman v. Davis, 371 U.S. 178, 182 (1962)).
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III. 	Analysis
A. 	Counts VI and VII
DiversiTech argues the Court lacks subject matter jurisdiction over Counts VI
and VII because there is no case or controversy regarding U.S. Patent No. 11,794,440
(the “’440 Patent”) or U.S. Patent No. 9,016,653 (the “’653 Patent”) given the absence
of any factual basis for an allegation that DiversiTech has attempted to enforce these
patents against DuraPlas or that either has been infringed by DuraPlas. As a result, it
seeks dismissal of Counts VI and VII under Rule 12(b)(1). Def.’s Mot. at 2; Mem. in
Supp. at 15–16.
The Declaratory Judgment Act states that “[i]n a case of actual controversy
within its jurisdiction . . . any court of the United States . . . may declare the rights and
other legal relations of any interested party seeking such declaration, whether or not
further relief is or could be sought.” 28 U.S.C. § 2201(a). As explained by the Supreme
Court in MedImmune, Inc. v. Genentech, “[t]he threshold question for declaratory
judgment jurisdiction is ‘whether the facts alleged, under all the circumstances, show
that there is a substantial controversy, between parties having adverse legal interests,
of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.’”
Microsoft Corp. v. DataTern, Inc., 755 F.3d 899, 903 (Fed. Cir. 2014) (quoting
MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007)). The Federal Circuit has
explained that, following MedImmune, “jurisdiction generally will not arise merely on
the basis that a party learns of the existence of a patent owned by another or even
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perceives such a patent to pose a risk of infringement, without some affirmative act by
the patentee.” SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372, 1380–81 (Fed.
Cir. 2007). Notably, this affirmative act need not be directed directly toward the
declaratory judgment plaintiff. DataTern, Inc., 755 F.3d at 906 (stating that “a
patentee’s aggressive enforcement strategy, even in the absence of direct threats against
the declaratory plaintiff, may . . . support jurisdiction”).
DiversiTech 	has 	made 	a 	facial 	challenge 	to 	the 	Court’s 	subject 	matter
jurisdiction because the Motion challenges subject matter jurisdiction without using
evidence outside the complaint. See Williamson, 645 F.2d at 412. In particular,
DiversiTech argues DuraPlas does not allege anything that plausibly supports a claim
that DiversiTech sought to enforce the ’440 and ’653 Patents against it. Opp’n at 16.
As a result, the Court need only determine whether DuraPlas has sufficiently alleged a
basis of subject matter jurisdiction based on the allegations in the Supplemental
Complaint, which are taken as true. See Menchaca, 613 F.2d at 511.
In its Opposition, DuraPlas argues the Court has subject matter jurisdiction,
pointing to particular allegations in the Supplemental Complaint. Opp’n at 15 (citing
Supplemental Complaint at ¶¶ 79–84). According to DuraPlas, these allegations show
that “DiversiTech has lobbed numerous accusations of and allusions to infringement
by DuraPlas’s PolarPad line in the marketplace and has specifically alleged (both to
DuraPlas and to DuraPlas’s actual and prospective customers) that the PolarPad
products infringe the patents covering DiversiTech’s E-Lite products.” Id. As for which
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patents, DuraPlas states that the “accusations and allusions” relate to the ’440 and
’653 Patents. Id.
Taking the allegations in the Supplemental Complaint as true, the Court
concludes that they establish a case or controversy regarding the ’440 Patent and the
’653 Patent. In particular, the Supplemental Complaint alleges that, “beginning no
later than December 2023, DiversiTech representatives began to contact DuraPlas
customers and tell them that DuraPlas’s PolarPad products faced unidentified ‘issues’
with DiversiTech’s patents.” Suppl. Compl. at ¶ 80. According to the Supplemental
Complaint, these “issues” related to patent infringement: “These allegations persisted
for over a year, with multiple customers and industry contacts reporting to DuraPlas
that DiversiTech representatives and executives had accused its PolarPad products of
infringing DiversiTech patents, including specifically the patents covering DiversiTech’s E-Lite
line of plastic HVAC/R pad products.” Id. (emphases added). While these allegations do
not allege DiversiTech identified any particular patent numbers, the Supplemental
Complaint goes on to allege that “[t]he only patents assigned to and owned by
DiversiTech that relate to the E-Lite line of products specifically or plastic HVAC/R
pad products generally are a single patent family, currently made up of four patents:”
the ’653 Patent, the ’440 Patent, U.S. Patent No. 12,312,123 (the “’123 Patent”), and
U.S. 	Patent 	No. 	12,319,468 	(the 	“’468 	Patent”). 	Id. 	at 	¶ 84. 	Critically, 	the
Supplemental Complaint also alleges that, “[a]s of January 31, 2025, . . . the ’653
Patent and the ’440 Patent were the only” two of these four patents “that had issued.”
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Id. at ¶ 84 n.2. As a result, during the relevant time covered by these allegations,
infringement could have related only to the ’440 Patent and the ’653 Patent. Thus, the
allegations in the Supplemental Complaint establish a case or controversy regarding
infringement liability related to the ’440 Patent and the ’653 Patent.
In its Reply, DiversiTech argues DuraPlas’s allegations “are entirely speculative”
and based on a “mere listing of patents on a website or generalized statements about
its patent portfolio.” Reply at 5. But DuraPlas’s allegations are sufficiently specific, not
merely based upon a listing of patents on a website, and are not generalized statements
about a patent portfolio but instead allegations of infringement by DuraPlas of the
’440 Patent and the ’653 Patent. Furthermore, while DiversiTech contends “unverified
statements to unidentified customers at unspecified times and locations attributed to
DiversiTech’s CEO and one DiversiTech representative are not enough,” the Court is
required to take the allegations in the Supplemental Complaint as true. Reply at 6.
And, as discussed above, if true then DiversiTech accused DuraPlas of infringing the
’440 and ’653 Patents. In short, the facts alleged, under all the circumstances, show
that there is a substantial controversy, between parties having adverse legal interests,
of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.
DataTern, Inc., 755 F.3d at 903 (quoting MedImmune, Inc., 549 U.S. at 127.)
If the allegations in the Supplemental Complaint are true, the Court holds
subject matter jurisdiction over Counts VI and VII because DuraPlas has met its
burden to establish that there is a case or controversy regarding the ’440 Patent and
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the ’653 Patent. As a result, the Court DENIES the Motion to the extent it requests
dismissal of Counts VI and VII under Rule 12(b)(1).
B. 	Counts IV and XI
DiversiTech argues DuraPlas fails to adequately plead any ground to render the
’123 Patent or the ’468 Patent unenforceable. As a result, it seeks dismissal of Counts
IV and Counts XI under Rule 12(b)(6). Def.’s Mot. at 1; Mem. in Supp. at 11–15.
In particular, DiversiTech argues “DuraPlas’s inequitable conduct allegations
rest on its flatly wrong contention that DiversiTech did not disclose the Hef-T-Pad
product during prosecution of its applications.” Mem. in Supp. at 12. This argument
relates to the fact that the Supplemental Complaint alleges that the ’123 Patent and
the ’468 Patent are “unenforceable due to inequitable conduct . . . due to DiversiTech’s
failure to disclose prior art of which it was aware and had been selling since before the
priority date” of these patents. Suppl. Compl. at ¶¶ 159, 207. “Specifically,” the
Supplemental Complaint goes on to allege, “DiversiTech and its patent prosecution
counsel . . . knowingly and willfully failed to disclose known material prior art in the
form of at least the Hef-T-Pad Prior Art.” Id. at ¶¶ 160, 208. The Supplemental
Complaint goes on to allege that “DiversiTech . . . did not at any time during
prosecution” of the applications that issued as the ’123 Patent and the ’468 Patent
“disclose the Hef-T-Pad Prior Art . . . nor was the Hef-T-Pad Prior Art disclosed . . .
[during] prosecution of any of the [relevant] parent applications.” Id. at ¶¶ 164, 212.
In sum, the Supplemental Complaint says, the “Hef-T-Pad Prior Art is not part of the
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file history” of the ’123 Patent and the ’468 Patent, “is not listed on the face of” the
’123 Patent and the ’468 Patent, and, “as such, the Examiner did not consider the Hef-
T-Pad Prior Art.” Id.
Inequitable conduct must be pled with particularly under Rule 9(b). See Exergen
Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1326–27 (Fed. Cir. 2009). That is, “in
pleading inequitable conduct in patent cases, Rule 9(b) requires identification of the
specific who, what, when, where, and how of the material misrepresentation or
omission committed before the [Patent and Trademark Office].” Id. at 1327. As a
result, the Court must consider the underlying details and standard necessary to prove
inequitable conduct. “To prevail on a claim of inequitable conduct, the accused
infringer must prove that the patentee acted with the specific intent to deceive the
PTO.” Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1290 (Fed. Cir. 2011)
(en banc). When inequitable conduct is based upon nondisclosure of prior art, the
accused infringer must prove by clear and convincing evidence that the patent applicant
knew of the prior art, knew that it was material to patentability, and nevertheless made
a 	deliberate 	decision 	to 	withhold 	it. 	Id. 	The 	“materiality 	required 	to 	establish
inequitable conduct is but-for materiality.” Id. at 1291. When inequitable conduct is
based upon nondisclosure of prior art, the prior art is material “if the PTO would not
have allowed a claim had it been aware of the undisclosed prior art.” Id. This analysis
requires determining “whether the PTO would have allowed the claim if it had been
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aware of the undisclosed reference” giving the patent claims their broadest reasonable
construction and using the preponderance of the evidence standard. Id. at 1291–92.
As DiversiTech argues, the exhibits to the Supplemental Complaint and public
records show that the Hef-T-Pad was disclosed to the PTO. Exhibits J and Q to the
Supplemental Complaint are Information Disclosure Statements submitted to the PTO
during prosecution of the patent applications that issued as the ’123 Patent and the
’468 Patent, and both identify the “E Lite Plastic Equipment Pads Literature” as
documents that were disclosed to the PTO. Moreover, Exhibit M to the Supplemental
Complaint includes a copy of the ’123 Patent, and it identifies the “E Lite Plastic
Equipment Pads Literature” under “References Cited.” Similarly, the ’468 Patent
identifies the “E Lite Plastic Equipment Pads Literature” under “References Cited.”
DiversiTech also attaches to its Motion exhibits that are public records showing that
the patent examiner considered the “E Lite Plastic Equipment Pads Literature” during
examination of the ’123 Patent and the ’468 Patent. Doc. No. 27 at Exs. F & H. Finally,
DiversiTech attaches to its Motion an exhibit that is another public record, a copy of
the “E Lite Plastic Equipment Pads Literature” from the prosecution history of the
patents. Id. at Ex. D. Notably, the “E Lite Plastic Equipment Pads Literature” includes
multiple pages expressly referencing and describing the “Hef-T-Pad” and includes
photographs of the Hef-T-Pad. Id. at Ex. D, 4–5 & 24. In light of these exhibits and
public records, the Court agrees that DuraPlas fails to state a claim of inequitable
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conduct because it has failed to adequately allege nondisclosure of prior art and
therefore intent to deceive. Mem. in Supp. at 11–14 & n.10.
In its Opposition, DuraPlas argues “DiversiTech did not make a ‘complete
disclosure’ of the Hef-T-Pad product to the PTO and certainly did not disclose enough
to avoid a claim of inequitable conduct.” Opp’n at 7. But DuraPlas’s Supplemental
Complaint does not make these allegations. In short, DuraPlas fails to adequately plead
any ground to render unenforceable the ’123 Patent or the ’468 Patent because the
basis for the allegations in its Supplemental Complaint contradict the relevant exhibits
and 	public 	records. 	Simmons, 	113 	F.2d 	at 	813 	(where 	there’s 	conflict 	between
allegations in a pleading and attached exhibits, the exhibits control). As a result, and
in the absence of any reason for dismissing the underlying claims with prejudice, the
Court DISMISSES WITHOUT PREJUDICE Counts IV and XI under Rule 12(b)(6)
to the extent they allege unenforceability.
C. 	Counts V and XII
DiversiTech argues DuraPlas fails to adequately plead any ground to find non-
infringement of the ’123 Patent or the ’468 Patent. As a result, it seeks dismissal of
Counts V and XII under Rule 12(b)(6). Def.’s Mot. at 1; Mem. in Supp. at 11–15.
As DiversiTech argues, there is not any practicing the prior art defense to an
allegation of infringement. See 01 Communique Lab., Inc. v. Citrix Sys., 889 F.3d 735,
742 (Fed. Cir. 2018). The relevant defenses are invalidity or non-infringement. Id. at
742–43. With respect to the former, DuraPlas has adequately pleaded invalidity
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because it alleges prior art renders at least one claim invalid based on anticipation or
obviousness. Suppl. Compl. at ¶¶ 158 & 206, Exs. L & R. With respect to the latter,
however, DuraPlas merely alleges that it does not infringe “any valid claim” and “cannot
infringe any valid claim . . . because the PolarPad products merely practice the prior art.”
Id. at ¶¶ 172, 173, 220, & 221 (emphases added). This allegation confuses invalidity
and non-infringement. To the extent DuraPlas wishes to bring a claim of non-
infringement because it does not practice the elements of a claim of the ’123 Patent or
the ’468 Patent, it must more clearly specify that that is what it is alleging.
As a result, and in the absence of any reason for dismissing the underlying claims
with prejudice, the Court DISMISSES WITHOUT PREJUDICE Counts V and XII
under Rule 12(b)(6).
D. 	Counts I–III
DiversiTech argues DuraPlas’s allegations are insufficient to plausibly plead
anticompetitive conduct. In particular, it argues DuraPlas’s allegations of fraud on the
PTO and anticompetitive patent enforcement efforts fail to overcome the presumption
of good-faith assertions of patent rights and fail to meet the heightened pleading
requirement for fraud under Federal Rule of Civil Procedure 9(b). It also argues
DuraPlas’s allegation of exclusive dealing does not plausibly allege that DiversiTech’s
bulk-purchasing rebate program forecloses a substantial share of the alleged plastic pad
market because DiversiTech’s customers were not obligated to purchase from it and
instead could simply forego negotiated discounts and purchase from others. Def.’s Mot.
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at 2; Mem. in Supp. at 17–23. DiversiTech also argues DuraPlas’s allegations are
insufficient to plausibly plead anticompetitive injury. In particular, it argues DuraPlas’s
allegations of injuries are vague and conclusory and DuraPlas does not allege injuries
flowing from any anticompetitive conduct by DiversiTech. Def.’s Mot. at 2; Mem. in
Supp. at 23–24. As a result, it seeks dismissal of Counts I–III under Rule 12(b)(6).
Def.’s Mot. at 2.
With respect to Counts I and II, DuraPlas alleges DiversiTech engaged in
anticompetitive conduct in three ways. First, DuraPlas alleges DiversiTech “[e]ngag[ed]
in long-term conditional rebate programs and other loyalty-based agreements with
major distributors and high-volume customers that effectively operate as de facto
exclusive dealing arrangements.” Suppl. Compl. at ¶¶ 131(a) & 140(a). Second,
DuraPlas 	alleges 	DiversiTech 	“[t]hreaten[ed] 	to 	enforce 	patents 	knowingly 	and
willfully procured through fraud on the [PTO] by intentionally withholding material
prior art and making misleading statements during prosecution.” Id. at ¶¶ 131(b) &
140(b). 	Third, 	DuraPlas 	alleges 	DiversiTech 	“[r]einforc[ed] 	and 	enhanc[ed] 	the
effectiveness of the above exclusionary practices through threats and false claims made
to distributors and end customers attempting to deal with DuraPlas, including baseless
allegations 	of 	legal 	exposure, 	loss 	of 	rebates 	and 	access 	to 	products, 	or 	patent
infringement.” Id. at ¶¶ 131(c) & 140(c). With respect to Count III, DuraPlas alleges
DiversiTech engaged in anticompetitive conduct based on allegations similar to the
first and third allegations it uses to support Counts I and II. Id. at ¶¶ 149 & 151.
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First, the Court will address DuraPlas’s allegation that long-term conditional
rebate programs and other loyalty-based agreements with major distributors and high-
volume customers effectively operate as de facto exclusive dealing arrangements. Suppl.
Compl. at ¶¶ 131(a) & 140(a).
“Exclusive dealing . . . occurs when a seller agrees to sell its output of a
commodity to a particular buyer, or when a buyer agrees to purchase its requirements
of a commodity exclusively from a particular seller.” Apani Sw., Inc. v. Coca-Cola Enters.,
Inc., 300 F.3d 620, 625 (5th Cir. 2002). An “express exclusivity requirement” in an
agreement, however, “is not necessary.” ZF Meritor, LLC v. Eaton Corp., 696 F.3d 254,
270 (3d Cir. 2012). Courts “look past the terms of the contract to ascertain the
relationship between the parties and the effect of the agreement ‘in the real world.’” Id.
As a result, “de facto exclusive dealing claims are cognizable under the antitrust laws.”
Id. 	While 	“[e]xclusive 	dealing 	agreements 	are 	often 	entered 	into 	for 	entirely
procompetitive reasons, and generally pose little threat to competition,” exclusive
dealing 	can 	have 	adverse 	economic 	consequences 	by 	allowing 	one 	supplier 	to
unreasonably deprive other suppliers of a market for their goods. Id. Given the
potentially procompetitive benefits of exclusive dealing arrangements, they are judged
under the rule of reason, and their legality turns on whether they will foreclose
competition in such a substantial share of the relevant market that they adversely affect
competition. Id. at 271.
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The Court agrees with DuraPlas that it has sufficiently alleged that DiversiTech
engaged 	in 	de 	facto 	exclusive 	dealing 	arrangements 	using 	long-term, 	not-easily-
terminable contracts with significant volume commitments effectively preventing
distributors from purchasing the relevant product from any other supplier at any
meaningful volume. Suppl. Compl. at ¶¶ 60–66; see, e.g., ZF Meritor, 696 F.3d at 282–
83. The Court also agrees with DuraPlas that it has adequately pled that the alleged de
facto exclusive dealing arrangements resulted in substantial foreclosure of competition
in the relevant market. Suppl. Compl. at ¶ 63 (alleging the arrangements’ “practical
effect” is to foreclose “well over 40%” and “potentially closer to 80 or 90%” of the
relevant market); McWane, Inc. v. Fed. Trade Comm’n, 783 F.3d 814, 837 (11th Cir.
2015) (“Traditionally a foreclosure percentage of at least 40% has been a threshold for
liability in exclusive dealing cases. However, some courts have found that a lesser degree
of foreclosure is required when the defendant is a monopolist.”) (citation omitted).
Citing two cases, DiversiTech argues DuraPlas does not plausibly allege that
DiversiTech’s bulk-purchasing rebate program forecloses a substantial share of the
alleged plastic pad market given that DiversiTech’s customers were not obligated to
purchase from it and instead could “simply forego the negotiated discounts” and
purchase from others instead. Mem. in Supp. at 22 (citing Allied Orthopedic Appliances
Inc. v. Tyco Health Care Grp. LP, 592 F.3d 991, 997 (9th Cir. 2010); Eisai, Inc. v. Sanofi
Aventis U.S., LLC, 821 F.3d 394, 407 (3d Cir. 2016)). But in Allied Orthopedic Appliances
Inc., the Court noted that the agreements in question were “easily terminable” and cited
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a source indicating “[d]iscounts conditioned on exclusivity in relatively short-term
contracts are rarely problematic,” 592 F.3d at 997 (quoting XI Philip E. Areeda &
Herbert Hovenkamp, Antitrust Law, ¶ 1807a at 129 (2d ed. 2000)) (emphasis added).
Here, by contrast, DuraPlas alleges the agreements in question are “structured to
provide significant financial incentives only if the distributor sources a high percentage
(typically 80% to 90%) of its plastic pad requirements from DiversiTech over a multi-
year period.” Suppl. Compl. at ¶ 66 (emphasis added). Moreover, DuraPlas alleges
“DiversiTech has exercised its market power to anticompetitively exclude DuraPlas
from the plastic pad market through the use of long-term and not easily terminable, de
facto exclusive dealing arrangements structured as conditional rebate programs.” Id. at
¶ 60. And while in Eisai the court held that “the threat of a lost discount” did not rise
to the level of anticompetitive conduct, it did not given a “fail[ure] to demonstrate that
hospitals were foreclosed from purchasing competing drugs as a result of [this]
conduct.” Eisai, 821 F.3d at 407. By contrast, DuraPlas alleges “the practical effect of
these arrangements is to foreclose well over 40% of the plastic pad market (and, given
the required volume commitments and DuraPlas’s stalled efforts to contest further
share, potentially closer to 80% or 90%). Suppl. Compl. at ¶ 63. Notably, neither Allied
Orthopedic Appliances nor Eisai addressed a motion to dismiss for failure to state a claim.
The Court agrees with DuraPlas that the question of whether distributors were free to
forego these agreements rather than being coerced into keeping them is a factual
question more appropriate for discovery.
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Second, 	the 	Court 	will 	address 	DuraPlas’s 	allegation 	that 	DiversiTech
threatened to enforce patents knowingly and willfully procured through fraud on the
PTO by intentionally withholding material prior art and making misleading statements
during prosecution. Suppl. Compl. at ¶¶ 131(b) & 140(b).
Federal law “recognizes a presumption that the assertion of a duly granted patent
is made in good faith.” C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1369 (Fed. Cir.
1998). “[T]his presumption is overcome only by affirmative evidence of bad faith.” Id.
Communicating with possible infringers about patent rights “is not improper if the
patent holder has a good faith belief in the accuracy of the communication.” Mikohn
Gaming Corp. v. Acres Gaming, Inc., 165 F.3d 891, 897 (Fed. Cir. 1998). As a result, a
patent holder, “acting in good faith on its belief as to the nature and scope of its rights,
is fully permitted to press those rights even though he may misconceive what those
rights 	are.” 	Id. 	(quotation 	marks 	omitted) 	(quoting 	Kaplan 	v. 	Helenhart 	Novelty
Corp., 182 F.2d 311, 314 (2d Cir. 1950)).
Here, 	DuraPlas’s 	allegations 	of 	anticompetitive 	conduct 	on 	the 	basis 	of
DiversiTech’s patent enforcement efforts are based on allegations of “fraud on the
[PTO] 	by 	intentionally 	withholding 	material 	prior 	art 	and 	making 	misleading
statements during prosecution.” Suppl. Compl. at ¶¶ 131(b) & 140(b). For the same
reasons discussed above with respect to Counts IV and XI, in light of the relevant
exhibits and public records, DuraPlas fails to state a claim of fraud on the PTO by
intentionally withholding material prior art because it has failed to adequately allege
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nondisclosure of prior art and therefore intent to deceive. In short, as discussed above,
the relevant exhibits and public records show that the Hef-T-Pad was disclosed to the
PTO. Moreover, the Supplemental Complaint fails to state a claim of fraud on the PTO
by making misleading statements during prosecution. In short, there do not appear to
be any specific allegations in the Supplemental Complaint of misleading statements
made to the PTO during prosecution. Thus, DuraPlas fails to state a claim of
anticompetitive conduct on the basis of DiversiTech’s patent enforcement efforts.
Third, 	the 	Court 	will 	address 	DuraPlas’s 	allegation 	that 	DiversiTech
“reinforc[ed] and enhanc[ed] the effectiveness of the above exclusionary practices
through threats and false claims to distributors and end customers attempting to deal
with DuraPlas, including baseless allegations of legal exposure, loss of rebates and
access to products, or patent infringement.” Suppl. Compl. at ¶¶ 131(c) & 140(c).
With respect to alleged threats of loss of rebates and access to products, the
Supplemental 	Complaint 	fails to state a claim of 	anticompetitive 	conduct. The
Supplemental Complaint alleges “DiversiTech arranged for meetings with at least one
prospective distributor in discussions with DuraPlas, insinuating there would be
‘repercussions’ restricting the ‘overall access to all DiversiTech products.’” Id. at ¶ 112.
But the Court agrees with DiversiTech that this allegation does not specify that this
distributor 	was 	party 	to 	any 	kind 	of 	discount 	arrangement 	with 	DiversiTech.
Furthermore, the allegation is merely an “insinuation” of restricted overall access to
DiversiTech 	products; 	there 	is 	no 	specific 	allegation 	that 	DiversiTech 	actually
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threatened to restrict access to its products. In short, this allegation does not allow the
Court to draw a reasonable inference that DiversiTech has engaged in the alleged
anticompetitive conduct. Iqbal, 556 U.S. at 678. Thus, DuraPlas fails to state a claim
of anticompetitive conduct on the basis of alleged threats of loss of rebates and access
to products.
With respect to alleged threats and false claims of legal exposure and patent
infringement, the Supplemental Complaint repeatedly alleges threats of assertion of
fraudulently obtained patents. Suppl. Compl. at ¶¶ 49, 69, 110, 116. As discussed
above, communicating with possible infringers about patent rights “is not improper if
the patent holder has a good faith belief in the accuracy of the communication.” Mikohn
Gaming Corp., 165 F.3d at 897. Here, the only basis for alleged bad faith, fraud on the
PTO, is the alleged failure to disclose the Hef-T-Pad product. But, for the same reasons
discussed above with respect to Counts IV and XI, in light of the relevant exhibits and
public records, DuraPlas fails to state a claim of fraud on the PTO by intentionally
withholding material prior art because it has failed to adequately allege nondisclosure
of prior art and therefore intent to deceive. In short, as discussed above, the relevant
exhibits and public records show that the Hef-T-Pad was disclosed to the PTO. Thus,
DuraPlas fails to state a claim of anticompetitive conduct on the basis of alleged threats
of legal exposure and patent infringement.
Finally, 	the 	Court 	will 	address 	DiversiTech’s 	argument 	that 	DuraPlas’s
allegations are insufficient to plausibly plead anticompetitive injury.
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In short, the Court disagrees. First, DuraPlas’s allegations of injury are not vague
and conclusory. The Supplemental Complaint includes allegations that DuraPlas has
lost market share, been excluded from the market, and suffered lost sales, reputational
harm, diminished goodwill, and lost business relationships. See, e.g., Suppl. Compl. at
¶ 57 (“But for DiversiTech’s anticompetitive, tortious, and illegal conduct described
below, DuraPlas would be able to contest an even greater portion of DiversiTech’s
share.”); id. at ¶ 60 (“DiversiTech has exercised its market power to anticompetitively
exclude DuraPlas from the plastic pad market through the use of long-term and not
easily terminable, de facto exclusive dealing arrangements structured as conditional
rebate programs.”); id. at ¶ 120 (“DuraPlas estimates that, as a direct and proximate
result of DiversiTech’s anticompetitive, tortious, and unlawful conduct, it and previous
competitors that have since been acquired by DiversiTech have been foreclosed from
accessing millions of dollars of sales opportunities. In addition to these lost sales,
DiversiTech’s conduct has caused DuraPlas to suffer reputational harm, diminished
goodwill, lost business relationships, and other consequential damages that continue to
adversely impact DuraPlas’s competitive standing in the market.”).
Second, DuraPlas does allege these injuries flow from anticompetitive conduct
by DiversiTech. See, e.g., id. at ¶ 57 (“But for DiversiTech’s anticompetitive, tortious,
and illegal conduct described below, DuraPlas would be able to contest an even greater
portion of DiversiTech’s share.”); id. at ¶ 60 (“DiversiTech has exercised its market
power to anticompetitively exclude DuraPlas from the plastic pad market through the
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use of long-term and not easily terminable, de facto exclusive dealing arrangements
structured as conditional rebate programs.”); id. at ¶ 120 (“DuraPlas estimates that, as
a direct and proximate result of DiversiTech’s anticompetitive, tortious, and unlawful
conduct, it and previous competitors that have since been acquired by DiversiTech
have been foreclosed from accessing millions of dollars of sales opportunities. In
addition to these lost sales, DiversiTech’s conduct has caused DuraPlas to suffer
reputational 	harm, 	diminished 	goodwill, 	lost 	business 	relationships, 	and 	other
consequential damages that continue to adversely impact DuraPlas’s competitive
standing in the market.”).
As a result, and in the absence of any reason for dismissing the underlying claims
with prejudice, the Court DISMISSES WITHOUT PREJUDICE Counts I–III under
Rule 12(b)(6) to the extent they allege anticompetitive conduct on the basis of
DiversiTech’s patent enforcement efforts and on the basis of threats and false claims.
But the Court DENIES the Motion as to Counts I–III to the extent they are based on
the allegation of de facto exclusive dealing arrangements and resulting antitrust injury.
E. 	Counts VIII–X
DiversiTech argues DuraPlas’s claim under the Texas Antitrust Act (Count VIII)
must be dismissed because it relies on the same conduct as the federal claims that are
subject to dismissal. DiversiTech argues DuraPlas’s claims for unfair competition and
tortious interference with prospective business relations (Counts IX and X) both
require an independently tortious or unlawful act, but DuraPlas offers nothing separate
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to support these claims beyond its insufficient federal antitrust allegations. As a result,
it seeks dismissal of Counts VIII–X under Rule 12(b)(6). In response, DuraPlas argues
the Court should deny the motion to dismiss all the state law claims underlying Counts
VIII–X because it adequately pled its federal claims. Opp’n at 25.
Given that the parties agree these state law claims rise or fall with their
associated federal claims, for the reasons discussed above, and in the absence of any
reason for dismissing the underlying claims with prejudice, the Court DISMISSES
WITHOUT PREJUDICE Counts VIII–X under Rule 12(b)(6) to the extent they are
based on DiversiTech’s patent enforcement efforts and alleged threats and false claims.
But the Court DENIES the Motion as to Counts VIII–X to the extent they are based
on the allegation of de facto exclusive dealing arrangements and resulting injury.
IV. 	Conclusion
For the reasons stated above, the Court hereby DISMISSES WITHOUT
PREJUDICE: (1) Counts IV and XI under Rule 12(b)(6) to the extent they claim
unenforceability; (2) Counts V and XII under Rule 12(b)(6); (3) Counts I–III under
Rule 12(b)(6) to the extent they claim anticompetitive conduct on the basis of
DiversiTech’s patent enforcement efforts and alleged threats and false claims; and (4)
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Counts 	VIII–X 	under 	Rule 12(b)(6) to the 	extent 	they 	assert 	claims based on
DiversiTech’s patent enforcement efforts and alleged threats and false claims.
Any request for dismissal not specifically granted herein is DENIED.
SO ORDERED.
Signed February 25th , 2026.
____________________________________
ED KINKEADE
UNITED STATES DISTRICT JUDGE
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