583 S.W.3d 49
Mo. Ct. App.2019Background
- Galen Suppes was a University of Missouri associate professor subject to the University's Collected Rules and Regulations (CRRs) requiring employees to disclose inventions and assign them to the University unless the University waived rights.
- From 2001–2008 Suppes filed multiple patent applications and created Renewable Alternatives (RA); he disclosed inventions on modified University forms and licensed PG (glycerol-to-propylene glycol) technology through RA to Missouri Soybean and sublicensee Senergy without timely assigning rights to the University.
- University-funded PG research (2003–2006) entitled the University to resulting inventions; Missouri Soybean had a license option and Suppes had a contractually-required disclosure/assignment obligation.
- University sued Suppes in 2009; after a jury trial the court entered judgment awarding the University $300,000 for breach of contract and $300,000 for breach of loyalty; the jury found for Suppes on tortious interference; the court ordered Suppes to execute assignments for PG-related inventions.
- Suppes appealed nine points arguing (inter alia) improper scope of assignment order, erroneous taxation/assessment of costs, instructional/submission errors (tortious interference, use of RA), inadequate proof of damages/remittitur, and redundant/duplicative judgments.
Issues
| Issue | Plaintiff's Argument (University) | Defendant's Argument (Suppes) | Held |
|---|---|---|---|
| Whether judgment required assignment of U.S. Patent No. 6,574,971 and a patent application | Judgment intended to require assignment only of inventions related to glycerol→PG (Exhibit A); University concedes patents unrelated to PG may be excluded from Exhibit A | Suppes contends judgment improperly orders assignment of the '971 patent and '682 application not pleaded or in evidence | Court accepted University's interpretation: '971 and '682 will be deleted from Exhibit A; affirmed judgment otherwise |
| Whether trial court abused discretion in awarding costs solely to University and whether costs are ripe for appeal | Costs may be awarded at court's discretion; prevailing party ordinarily recovers costs; itemized taxation by clerk not ripe for appeal yet | Suppes argued improper assessment and sought review of itemized costs now | Court found no abuse of discretion in awarding costs to Suppes; itemized challenges premature until clerk taxes costs |
| Whether tortious interference claim/instruction was improperly submitted | University offered evidence of interference with commercialization chain (University→Missouri Soybean→Senergy) and damages testimony applicable to all claims | Suppes argued Missouri law requires breach/termination of a business relationship and MAI 23.11 was not followed; claimed prejudice from damages testimony tied to that count | Court held submissibility sufficient and no prejudice because jury found for Suppes on that count; damages testimony was relevant to other claims too |
| Whether damages for breach of contract lacked reasonable certainty / remittitur required | University presented expert IP valuation (Falconer) providing a reasonable basis for lost-profit/royalty damages; other evidentiary support for costs/time spent | Suppes argued insufficient proof of damages and excessive award needing remittitur | Court held evidence supported damages with reasonable certainty and denied remittitur; jury award below amounts presented by expert |
| Whether instructions 9 and 15 improperly imposed liability based on acts of RA (corporate veil/alter-ego needed) | University sued Suppes personally for his own use of RA and breach of duties; no need to pierce veil because University did not seek to hold RA liable | Suppes argued liability rested on RA/Missouri Soybean conduct and that veil-piercing/alter-ego proof was required | Court held veil-piercing unnecessary; University alleged and proved Suppes's personal breaches and duty-of-loyalty violations; instructions proper |
| Whether instructions created duplicative/redundant damages (inconsistent theories) | The instructions addressed separate wrongs—breach of contract and breach of loyalty—and jury was instructed to award a single damage amount per claim; overlapping evidence is permissible so long as double recovery is not awarded | Suppes claimed the instructions permitted double recovery and relied on the same license/transaction (RA–Missouri Soybean) as source for multiple awards | Court found no inconsistent theories that would require election; separate legal duties can support separate damages; no claim of double recovery was made on appeal; point denied |
Key Cases Cited
- Gill Constr., Inc. v. 18th & Vine Auth., 157 S.W.3d 699 (Mo. App. W.D.) (trial court's discretion on motions to amend judgment)
- Trimble v. Pracna, 167 S.W.3d 706 (Mo. banc) (awarding costs and multiple theories of recovery)
- Riggs v. State Dep't of Social Servs., 473 S.W.3d 177 (Mo. App. W.D.) (taxation of costs by circuit clerk; ripeness)
- Ameristar Jet Charter, Inc. v. Dodson Int'l Parts, Inc., 155 S.W.3d 50 (Mo. banc) (proof of lost profits; reasonable certainty standard)
- Catroppa v. Metal Bldg. Supply, Inc., 267 S.W.3d 812 (Mo. App. S.D.) (types of contract damages and single recovery rule)