Opinion

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF TEXAS

DALLAS DIVISION

DURAPLAS, LP, §

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Plaintiff-Counterclaim Defendant, §

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v. § Civil Action No. 3:25-CV-1310-K

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DIVERSITECH CORPORATION, §

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Defendant-Counterclaim Plaintiff. §

MEMORANDUM OPINION AND ORDER

Before the Court is Plaintiff-Counterclaim Defendant DuraPlas, LP’s

(“DuraPlas”) Motion for Protective Order (the “Motion”) (Doc. No. 167 (unsealed

version) and Doc. No. 169-1 (sealed version)), Appendix in Support of Plaintiff

DuraPlas, LP’s Motion for Protective Order (Doc. Nos. 168-1–168-10 (unsealed

exhibits) and Doc. Nos. 169-2–169-3 (sealed exhibits)) (the “Appendix”), Defendant-

Counterclaim Plaintiff DiversiTech Corporation’s (“DiversiTech”) Opposition to

DuraPlas, LP’s Motion for Protective Order (Doc. No. 175) (the “Opposition”), and

Plaintiff DuraPlas, LP’s Reply in Support of Its Motion for Protective Order (Doc. No.

186) (the “Reply”). The Court has carefully considered the Motion, Appendix,

Opposition, and Reply, as well as the applicable law and the relevant portions of the

record. The Court finds that DuraPlas has established that the requested relief is

warranted. Accordingly, the Court GRANTS the Motion.

I. Background

This is a patent infringement case. Among other things, DuraPlas seeks a

declaratory judgment that its Version 1 PolarPad products did not infringe certain

patents owned by DiversiTech. In response, DiversiTech has asserted, among other

things, that the Version 1 PolarPad products did infringe certain DiversiTech patents.

Notably, DuraPlas says that it is no longer selling the Version 1 PolarPad products.

As relevant here, DuraPlas filed its Motion requesting a protective order

“allowing it to engage in a targeted recycling of its withdrawn Version 1 PolarPad

inventory” and “preventing DiversiTech from using unfounded spoliation accusations

to interfere with DuraPlas’s good-faith business operations.” Doc. No. 167 at 4 (all

citations to CM/ECF page numbers unless otherwise noted). DuraPlas explains that it

“has begun recycling its excess Version 1 PolarPad inventory by removing the isolated

Version 1 pads from its warehouse, regrinding them, and recasting the material into

other products.” Id. It says it “is undertaking this process because continued storage of

obsolete Version 1 inventory imposes substantial and unnecessary warehousing and

handling costs, and because DuraPlas needs that space for its Version 2 operations.”

Id. at 4–5. According to DuraPlas, it “has ensured that all information relevant to the

disputed rib structure and other asserted patent issues is preserved” by “document[ing]

the Version 1 inventory through internal records and a third-party auditor” as well as

“preserv[ing] representative physical samples of Version 1 pads sufficient for any

legitimate discovery or expert examination[.]” Id. at 5. DuraPlas specifically requests

“a protective order (1) confirming that its documented recycling of Version 1 inventory

does not violate any preservation duty; (2) prohibiting DiversiTech from demanding

that DuraPlas indefinitely warehouse all Version 1 PolarPads; and (3) barring

DiversiTech from using DuraPlas’s recycling of Version 1 PolarPad inventory as a basis

for sanctions, adverse inferences, or any other litigation advantage in this action.” Id.

at 6. In support of this relief, DuraPlas argues it has satisfied its duty to preserve

evidence by retaining representative samples and documents related to its Version 1

PolarPad inventory, there is no basis for concluding its proposed recycling stems from

bad faith, and the recycling would not prejudice DiversiTech. Id. at 13–17.

In its Opposition, DiversiTech argues the Motion should be denied and

DuraPlas “should not be permitted to continue to destroy evidence without providing

basic information about what has already been destroyed[.]” Doc. No. 175 at 4.

Alternatively, it says, the Court should deny the motion “without prejudice to renewal

but only after (a) DuraPlas provides evidence identifying the specific dates it began

destroying V1 inventory and the number and types of V1 pads destroyed, (b)

DiversiTech is provided with the opportunity to test that evidence, as well as the

statements made in the declaration of Paul Phillips submitted with DuraPlas’s motion,

via deposition, and (c) DuraPlas permits DiversiTech to inspect the remaining V1 pads

it has not yet destroyed so that the parties may coordinate on which V1 pads should

be maintained as representative samples.” Id. (emphasis original). DiversiTech argues

DuraPlas’s “unilateral” and “undisclosed” decision to destroy its V1 inventory was

improper, that DuraPlas has not shown good cause because the evidence DuraPlas

provides with its Motion is “insufficient and wholly conclusory,” and that DuraPlas

“does not seek this protective order with clean hands.” Id. at 10–16.

In its Reply, DuraPlas highlights how, in its separate filing seeking a temporary

restraining order, DiversiTech asked the Court to order DuraPlas “to ‘destroy or

surrender’ any remaining V1 PolarPads[.]” Doc. No. 186 at 4 (quoting DiversiTech’s

Reply in Support of Its Emergency Motion for Reconsideration of Order Denying

Temporary Restraining Order and Preliminary Injunction and Brief in Support (Doc.

No. 181 at 9)) (emphasis added). As explained by DuraPlas, “[w]ithin the course of

one week, DiversiTech has asked this Court to order DuraPlas to destroy the same V1

inventory even as it opposes DuraPlas’s request for a protective order allowing DuraPlas

to recycle that same inventory pursuant to a documented preservation protocol.” Id.

(emphasis original). DuraPlas argues the separate request to order destruction of the

V1 PolarPads “reveals the true nature” of DiversiTech’s opposition, which is “not

grounded in preservation concerns, but in an effort to control the manner in which

DuraPlas operates its business and to impose unnecessary burdens that hinder

DuraPlas’s ability to compete with DiversiTech.” Id. at 5–6. DuraPlas also argues

DiversiTech “fails to identify any evidence that will be lost or any prejudice,”

DiversiTech “has not shown any entitlement to inspect DuraPlas’s ‘facilities,’”

DiversiTech is not entitled to “dictate DuraPlas’s preservation methodology or control

sample selection,” and DuraPlas “has no duty to disclose business ‘secrets’” including

its plan to transition to a second version of the PolarPad. Id. at 6–13.

II. Standard of Review

Under Federal Rule of Civil Procedure 26(c)(1), a party “may move for a

protective order in the court where the action is pending” to protect it “from . . . undue

burden or expense” upon a showing of “good cause” and with a “certification that the

movant has in good faith conferred or attempted to confer with other affected parties

in an effort to resolve the dispute without court action.” “Rule 26(c)’s requirement of

a showing of good cause to support the issuance of a protective order indicates that

‘[t]he burden is upon the movant to show the necessity of its issuance, which

contemplates a particular and specific demonstration of fact as distinguished from

stereotyped and conclusory statements.’” In re Terra Int’l, Inc., 134 F.3d 302, 306 (5th

Cir. 1998) (quoting United States v. Garrett, 571 F.2d 1323, 1326 n.3 (5th Cir. 1978)).

III. Analysis

After patent infringement lawsuits commence, alleged infringers—even in the

absence of orders expressly permitting them to do so, but only in the absence of

preliminary injunctions—may continue to sell allegedly infringing products. While

preliminary injunctions may be denied for various reasons, it is notable that, while

there is a public interest in the protection of patent rights, there is a counterbalancing

right to compete that may outweigh the interest in the protection of patent rights. See

Illinois Tool Works, Inc. v. Grip-Pak, Inc., 906 F.2d 679, 684 (Fed. Cir. 1990)

(“Recognizing a public interest in the protection of patent rights, the district court

deemed that interest counterbalanced in this case by Grip–Pak’s continuing right to

compete, which must be seen as legitimate at this motion stage in view of ITW’s

‘remote’ showing of likelihood of success in proving infringement at trial. We find no

error in that approach in this case.”). As applied here, the Court has not granted any

injunction in this case. Thus, it is not disputed that DuraPlas may dispose of the

allegedly infringing products through sales.

Here, however, DuraPlas does not seek to dispose of the allegedly infringing

products through sales but instead to destroy most (though not all) of its allegedly

infringing products. In many cases the patent owner seeks an order requiring just that,

the destruction of infringing products. See Bose Corp. v. JBL, Inc., 112 F. Supp. 2d 138,

170 (D. Mass. 2000), aff’d, 274 F.3d 1354 (Fed. Cir. 2001) (“Although some courts

have issued injunctions ordering the destruction of remaining infringing inventory, . . .

this remedy seems extraordinarily wasteful.”) (citation omitted). But DiversiTech

opposes this relief.

The Court finds good cause to allow DuraPlas to destroy all but representative

samples of the Version 1 PolarPad products pursuant to Rule 26(c)(1). In particular,

the Court finds DuraPlas has met its burden to show the necessity of a protective order

to protect it from undue burden and expense given particular and specific evidence

indicating unnecessary costs storing rather than recycling its Version 1 PolarPad

inventory. See Doc. No. 169-2 at 4–5, ¶14. Storing this inventory rather than recycling

it is burdensome and expensive given how the warehouse space storing it displaces a

substantial volume and associated sales of non-accused inventory, the substantial cost

of renting additional space to store it, the substantial cost of handling and supervising

it, and the substantial cost of buying new material for other products rather than using

recycled material. Id. Storing this inventory is also unnecessary given the lack of any

unique aspect of it in the context of this case and the circumstances. This is a patent

infringement case dependent upon the design of the allegedly infringing products rather

than, for example, manufacturing defects, and, regardless, DuraPlas has committed to

retain relevant documents and samples. DuraPlas has also provided a certification as

well as evidence that it has in good faith conferred with DiversiTech in an effort to

resolve this dispute without the Court’s action. See Doc. No. 167 at 19; Doc. Nos. 168-

9 & 168-10 (counsel correspondence). In short, DuraPlas has met all the requirements

for a protective order.

Neither party cites any opinion granting or denying the requested relief in the

present type of case—a patent infringement case. Instead, the parties dispute the

applicability of a district court’s grant of a protective order allowing destruction of “the

majority of the product” in a “putative product-liability class action,” where the

defendant “discovered that such products were potentially contaminated with beetle

parts and/or beetle larvae.” See Brandner v. Abbott Lab’ys, Inc., No. CIV.A. 10-3242,

2011 WL 2457683, at *1 (E.D. La. June 16, 2011), order amended on reconsideration, No.

CIV.A. 10-3242, 2011 WL 4853384 (E.D. La. Oct. 13, 2011). In that case, the court

recognized that “[c]ourts have not hesitated to issue protective orders . . . when the

cost of maintaining a recalled product poses an undue burden.” Id. at *3. That court

granted the underlying motion subject to a requirement to retain “unopened,

uncompromised units that were recalled” and a commitment by the defendant to work

with the plaintiff’s counsel “to retain the best representative sample.” Id. at *4. Here,

the Court similarly finds that issuing a protective order allowing destruction of V1

PolarPad products in this case, a patent infringement case, is appropriate because the

cost of maintaining those products poses an undue burden and the accused infringer

has committed to retain representative samples and documents related to those

products. Unlike in Brandner, however, the Court will not require agreement on

representative samples and documents given that this is a patent infringement case

related to the design of the accused products rather than a product-liability class action

related to alleged manufacturing defects.

With respect to Brandner, DiversiTech identifies three ways to distinguish the

case. First, it points out, “in contrast to Brandner, no governmental agency has

recommended the destruction of DuraPlas’s inventory.” Doc. No. 175 at 13. Second,

it says, “unlike the Brandner defendants, DuraPlas has not and does not propose that

it will coordinate with DiversiTech in order to identify representative samples of the

V1 PolarPads[.]” Id. Third, it continues, the initial order in Brandner permitting

destruction “was amended on reconsideration” to note that nothing in the first order

condoned or immunized any alleged spoliation by defendants that occurred before the

issuance date of the first order. Id. at 12, n.6. DiversiTech’s objections related to

Brandner do not withstand scrutiny. First, the lack of a government agency

recommendation to destroy the accused products does not eliminate the unnecessary

cost of storing rather than recycling them. Second, as already discussed, the Court does

not find coordination or agreement on representative samples to be necessary given the

focus on the design of the accused product here. Third, here, the Court similarly has

not condoned or immunized any alleged spoliation that occurred before the issuance

of this Order.

None of DiversiTech’s other objections overcome the Court’s conclusion that

DuraPlas has shown good cause for the requested relief. While DiversiTech desires

information about what DuraPlas has already destroyed, including the dates DuraPlas

began destroying V1 inventory and the number and types of V1 pads already destroyed

as well as deposition testimony related to this information, it can gain that information

and testimony through the normal discovery process. Next, while DiversiTech suggests

it should be entitled to an inspection and coordination related to representative

samples, it has not demonstrated any need for either. In this regard, the Court again

notes that this is a patent infringement case rather than a product-liability class action,

and the Court highlights how DuraPlas’s counsel has specifically represented that

DuraPlas “has preserved representative physical samples of Version 1 pads sufficient

for any legitimate discovery or expert examination[.]” Doc. No. 167 at 5. As for

DiversiTech’s complaint about DuraPlas’s “unilateral” and “undisclosed” decision to

recycle its products, DuraPlas ultimately did disclose to DiversiTech its decision to

recycle V1 pads and it ultimately sought permission to do so through its Motion. Next,

despite DiversiTech’s argument to the contrary, DuraPlas’s evidence is not insufficient

or wholly conclusory; rather, as discussed above, its Appendix identifies specific

burdens and costs. Finally, the Court rejects the idea that DuraPlas seeks the protective

order with unclean hands given the inability of DiversiTech to identify any potential

unique aspect of any destroyed product, and the Court agrees with DuraPlas that

DiversiTech has failed to identify any evidence that has been or will be lost or, more

broadly, any actual prejudice.

Finally, regardless of all the above analysis, the Court finds that DiversiTech

waived its objection to the relief requested in the Motion when it argued the following

in separate briefing in this case:

Specifically, DiversiTech now requests an order . . . . requiring DuraPlas to

destroy or surrender to DiversiTech any V1 PolarPads remaining in

DuraPlas’s possession, custody, or control (including pads returned through

part (d)), with verification by sworn declaration—an obligation that

simply makes enforceable DuraPlas’s existing voluntary representations .

. . .

DiversiTech’s Reply in Support of Its Emergency Motion for Reconsideration of Order

Denying Temporary Restraining Order and Preliminary Injunction and Brief in

Support (Doc. No. 181 at 9) (emphases added).

IV. Conclusion

As explained, DuraPlas has established that the requested relief is warranted. As

a result, the Court hereby GRANTS the Motion as follows. The Court hereby:

(1) confirms that DuraPlas does not violate any preservation duty to the extent

it recycles Version 1 PolarPad inventory while simultaneously preserving

related documentation and representative samples;

(2) confirms that DuraPlas is not required indefinitely to warehouse all Version

1 PolarPads; and

(3)bars DiversiTech from using DuraPlas’s recycling of Version | PolarPad

inventory consistent with the terms of this Order as a basis for sanctions,

adverse inferences, or any other litigation advantage in this action.

SO ORDERED.

Signed July 27", 2026.

Aikicheade

ED KINKEADE

UNITED STATES DISTRICT JUDGE

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