Unreported / Non-Citable
Background
DuraPlas sued DiversiTech over competition in the market for plastic HVAC and refrigeration equipment pads. Its supplemental complaint asserted twelve claims, including federal and Texas antitrust claims, unfair competition, tortious interference, and requests for declarations concerning four DiversiTech patents.
DuraPlas alleged that DiversiTech used long-term conditional rebates and loyalty arrangements to induce major distributors to obtain 80% to 90% of their plastic-pad requirements from DiversiTech. It also alleged that DiversiTech made patent-infringement accusations and other threats to customers dealing with DuraPlas. DiversiTech moved to dismiss every claim for lack of subject-matter jurisdiction or failure to state a claim.
The Court’s Holding
The court granted the motion in part and denied it in part. DuraPlas plausibly alleged de facto exclusive dealing and resulting antitrust injury by claiming that DiversiTech used multi-year, difficult-to-terminate arrangements with substantial volume commitments that foreclosed more than 40%—and potentially 80% to 90%—of the relevant market. The federal and state claims based on that theory survived.
The court also found an actual controversy concerning the ’440 and ’653 patents because DiversiTech allegedly accused DuraPlas’s PolarPad products of infringing the only relevant patents then issued. But it dismissed without prejudice the unenforceability theories concerning the ’123 and ’468 patents because the cited records showed that the Hef-T-Pad prior art had been disclosed to the Patent and Trademark Office. It likewise dismissed the noninfringement counts because alleging that PolarPad merely practiced prior art addressed invalidity, not whether PolarPad practiced every claim element. The antitrust and state-law theories based on allegedly fraudulent patent enforcement, threats, and false claims were also dismissed without prejudice.
Key Takeaways
- A loyalty rebate can support a de facto exclusive-dealing claim when its duration, volume requirements, and practical effect allegedly prevent meaningful purchases from rivals.
- Patent accusations conveyed to a declaratory plaintiff’s customers can create an actual controversy even if the patent owner did not identify patent numbers directly to the plaintiff.
- An inequitable-conduct theory cannot rest on alleged nondisclosure when complaint exhibits and public prosecution records show that the prior art was disclosed.
- Practicing prior art is not itself a noninfringement defense; a noninfringement pleading must address the asserted patent’s claim limitations.
Why It Matters
The ruling permits DuraPlas to pursue discovery on whether DiversiTech’s rebate arrangements substantially foreclosed the plastic-pad market, while narrowing the case by rejecting patent-related theories contradicted by prosecution records or inadequately pleaded. It also illustrates that courts assessing loyalty programs at the pleading stage may look beyond formal freedom to buy elsewhere and consider the arrangements’ alleged real-world duration, volume commitments, and foreclosure effects.