Martin L. Peterson

Bar No. 15838600

P. O. Box 368

Meridian, Texas 76665

(254) 386-6075

Attorney for Appellant

IDENTITY OF PARTIES & COUNSEL

The following is a complete list of the names and addresses of all parties to the trial court's judgment or order appealed from, and the names and addresses of all trial and appellate counsel.

Parties Trial Counsel Appellate Counsel

Evan Brown Not Represented Martin L. Peterson

(Pro se) P. O. Box 368

Meridian, Texas 76665

DSC Communications (1) Lynn Tillotson Same as Trial Counsel

Corporation n/k/a Alcatel & Pinker, L.L.P.

USA, Inc. (2) Eric W. Pinker, P.C.

(3) Scott M. Garelick

750 N. St. Paul Street,

Ste. 1400

Dallas, Texas 75201

TABLE OF CONTENTS

IDENTITY OF PARTIES AND COUNSEL i

TABLE OF CONTENTS ii-iii

INDEX OF AUTHORITIES iii-viii

EXPLANATION OF RECORD REFERENCES ix

STATEMENT OF THE CASE 1-2

ISSUES PRESENTED FOR REVIEW 2-3

STATEMENT OF FACTS 3-6

SUMMARY OF THE ARGUMENT 6-8

ARGUMENT AND AUTHORITIES 8-21

Regarding First Issue

Since the plaintiff failed to show that there were no disputed material facts,

and as a matter of law it was not entitled to judgment in its favor, the summary

judgment was improper and should be set aside 8-16

Regarding Second Issue

The judgment grants relief not supported by the contract nor the circumstances

of the case in any event 16-7

Regarding Third Issue

The sanction order was contrary to law 17-9

Regarding Fourth Issue

No attorney's fee should have been awarded, or the award should be reduced to

a reasonable amount 19-20

Regarding Fifth Issue

The record fails to reflect that the proper court exercised jurisdiction 21

PRAYER 21

CERTIFICATE OF SERVICE 22

INDEX OF AUTHORITIESCases

Alexander v. Russell, 699 S.W.2d 209 (Tex. 1985) 21

American Refining Co. v. Gasoline Products Co., 294 S.W. 967

(Tex.Civ.App.-Fort Worth 1927, writ ref'd) 11

Amgen, Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200 (Fed.Cir. 1991) 13

Amoco Production Co. v. Lindley, 609 P.2d 733 (Okla. 1980) 18

Anderson Chemical Co. v. Green, 66 S.W.3d 434 (Tex.App.- Amarillo

2001, no pet.) 9

Andreaggi v. Relis, 171 N.J. Super. 203, 408 A.2d 455 (1979) 15

Atlas Brick Co. v. North, 288 S.W. 146 (Tex.Comm.App. 1926, judg.adopted) 12

Bethel v. Butler Drilling Co., 635 S.W.2d 834 (Tex.App.- Houston [1^st Dist.]

1982, writ ref'd n.r.e.) 20

Bradford v. Vento, 997 S.W.2d 713 (Tex.App.- Corpus Christi 1999) 17

Brown v. DSC Communications Corporation, Inc., (Tex.App.- Dallas 1998

[No. 05-97-1098-CV])(unpublished) 8

Burroughs Wellcome Co. v. Barr Laboratories, Inc., 40 F.3d 1223 (Fed.Cir. 1994) 13

Castellow v. Swiftex Mfg. Co., 33 S.W.3d 890 (Tex.App.- Austin 2000, no pet.) 10

Cummings v. Cire, 74 S.W.3d 920 (Tex.App.- Amarillo 2002, no pet.) 19

Cases

Dew v. American Rio Grande Land & Irrigation Co., 13 S.W.2d 474

(Tex.Civ.App. 1929) 10

Fourticq v. Fireman's Fund Ins. Co., 679 S.W.2d 562 (Tex.App.- Dallas

1984, no writ) 8

G T I Corp. v. Calhoon, 309 F.Supp. 762 (S.D. Ohio 1969) 16, 17

Green Intern., Inc. v. Solis, 951 S.W.2d 384 (Tex. 1997) 19

Guth v. Minnesota Mining & Mfg. Co., 72 F.2d 385 (7^th Cir. 1934)

cert. denied, 294 U.S. 711 (1935) 16

Hallmark Personnel of Texas, Inc. v. Franks, 562 S.W.2d 933 (Tex.Civ.App.-

Houston [1^st Dist.] 1978, no writ) 12

Hanley v. Hanley, 813 S.W.2d 511 (Tex.App.- Dallas 1991, no writ) 18

Hazelwood v. Mandrell Industries Co., 596 S.W.2d 204 (Tex.Civ.App.-

Houston [1^st Dist.] 1980, writ ref'd n.r.e.) 10

Herring v. Bocquet, 933 S.W.2d 611 (Tex.App.- San Antonio 1996), rev'd

on another ground, 972 S.W.2d 19 (Tex. 1998) 20

Hollister v. Mfg.Co., 113 U.S. 59, 5 S.Ct. 717, 28 L.Ed. 901 (1885) 11

Hussong v. Schwan's Sales Enterprises., 896 S.W.2d 320 (Tex.App.-

Houtson [1^st Dist.] 1995, no writ) 14

INAC Corp. v. Underwriter's at Lloyds, 56 S.W.3d 242 (Tex.App.- Houston

[14^th Dist.] 2001, no pet.) 19

Ingersoll-Rand Co. v. Ciavatta, 216 N.J. Super. 667, 524 A.2d 866 (1987) 17

In re Anderson, 973 S.W.2d 410 (Tex.App.- Eastland 1998, orig. proc.) 18

In re Guzman, 19 S.W.3d 522 (Tex.App.- Corpus Christi 2000, orig. proc.) 18

Cases

In re N.R.C., 94 S.W.3d 799 (Tex.App.- Houston [14^th Dist.] 2002, pet. denied) 17

In re State Farm Mutual Auto. Ins. Co., 100 S.W.3d 341 (Tex.App.- San Antonio

2002, orig. proc.) 18

International Aircraft Sales, Inc. v. Betancourt, 582 S.W.2d 632 (Tex.Civ.App.-

Corpus Chrisit 1979, writ ref'd n.r.e.) 8

Jackson v. Houston Ind. Sch. Dist., 994 S.W.2d 396 (Tex.App.- Houston

[14^th Dist.] 1999, no writ); 19

Jamesbury Corp. v. Worchester Valve Co., 443 F.2d 205 (1^st Cir. 1971) 15

JHC Ventures, L.P. v. Fast Trucking, Inc., 94 S.W.3d 762 (Tex.App.-

San Antonio 2002, no pet.) 8

Johnson v. Breckenridge-Stephens Title Co., 257 S.W. 223 (Tex.Comm.App.

1924, judg. adopted) 8, 10

Koehring v. E. D. Etnyre & Co., 254 F.Supp. 334 (N.D. Ill. 1966) 14, 15

Light v. Centel Cellular Co., 883 S.W.2d 642 (Tex. 1994) 9

Long Trusts v. Atlantic Richfield Co., 893 S.W.2d 686 (Tex.App.- Texarkana

1995, no writ) 20

Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572 (Fed.Cir. 1996) 13

Merchants' Nat'l Bank v. Voudouris, 248 S.W. 810 (Tex.Civ.App.-

Austin 1923, no writ) 8, 9

Mississippi Glass Co. v. Franzen, 143 Fed. 501 (3^rd Cir.1906) 14

Montgomery County Hosp. Dist. v. Brown, 965 S.W.2d 501 (Tex. 1998) 9

NCNB Texas Nat'l Bank v. Carpenter, 849 S.W.2d 875 (Tex.App.- Fort Worth

1993, no writ) 20

Cases

Oblix, Inc. v. Winiecki, ___F.Supp.2d ___ (N.D. Ill. 2003) 13

Pony Express Courier Corp. v. Morris, 921 S.W.2d 817 (Tex.App.- San Antonio

1996, no writ) 13

RP&R, Inc. v. Territo, 32 S.W.3d 396 (Tex.App.- Houston [14^th Dist.] 2000, no pet.) 7

Ruffing v. 84 Lumber Co., 410 Pa. Super. 459, 600 A.2d 545 (1991) 17

Sacks v. Dallas Gold & Silver Exch., Inc., 720 S.W.2d 177 (Tex.App.- Dallas

1986, no writ) 10

Spohn Hosp. v. Mayer, 72 S.W.3d 52 (Tex.App.- Corpus Christi 2001, no pet.) 18

Sylvester v. Watkins, 538 S.W.2d 827 (Tex.Civ.App.- 1976, writ ref'd n.r.e.) 19

T. O. Stanley Boot Co. v. Bank of El Paso, 847 S.W.2d 218 (Tex. 1992) 14

Terrazas v. Sullivan, 470 S.W.2d 904 (Tex.Civ.App.- El Paso 1971, writ ref'd n.r.e.) 9

Tri-Continental Leasing Corp. v. Law Office of Burns, 710 S.W.2d 604 (Tex.App.-

Houston [1^st Dist.] 1985, writ ref'd n.r.e.) 13

Tucker v. Graham, 878 S.W.2d 681 (Tex.App.- Eastland 1994, no writ) 19

United States v. Dubilier Condenser Corp., 289 U.S. 178, 53 S.Ct. 554,

77 L.Ed. 1114 (1933) 11

Wade v. Austin, 524 S.W.2d 79 (Tex.Civ.App.- Texarkana 1975, no writ) 12

Walden v. Affiliated Computer Services, Inc., 97 S.W.3d 303 (Tex.App.- Houston

[14^th Dist.] 2003, no pet.) 9

Weed Eater, Inc. v. Dowling, 562 S.W.2d 898 (Tex.App.- Houston [1^st Dist.]

1978, writ ref'd n.r.e.) 12

Weitzman v. Steinberg, 638 S.W.2d 171 (Tex.App.- Dallas 1982, no writ) 14

Cases

Wiley v. Bertelsen, 770 S.W.2d 878 (Tex.App.- Texarkana 1989, no writ) 14

Wuagneux Builders, Inc. v. Candlewood Builders, Inc., 651 S.W.2d 919

(Tex.App.- Fort Worth 1983, no writ) 20

Statutes and Rules

Civil Practice & Remedies Code

Section 37.009 19

Section 38.001(8) 19

Section 38.003 20

California Labor Code (Deering 2003) 12

Texas Rules of Appellate Procedure

Rule 34.5(c) 2

Texas Rules of Civil Procedure

Rule 166a (a) 2, 5

Rule 166a (c) 5

Rule 192.7 18

Rule 215 17, 18

Rule 215.2 7

Statutes and Rules

Texas Disciplinary Rules of Professional Conduct

Rule 1.04(a) 20

Secondary Sources

Words and Phrases (West 1958) 13

S. Cherensky, A Penny for Their Thoughts: Employee Inventors,

Preinvention Assignment Agreements, Property, and Personhood,

81 Cal.L.Rev. 595 (1993) 11

To comply to Tex.R.App.P. 38.1 (d) and (h), Appellant has sought to include references to the record supporting the factual statements made in the brief. The initial Clerk's Record (filed January 17, 2003) has subsequently been supplemented on January 29, 2003, May 5, 2003, July 21, 2003, and September 25, 2003. The original Clerk's Record consisted of seven numbered volumes. References to documents therein are cited as e.g., "C.R. III at 995", meaning the document appears in Volume 3 of the original record at page 995. References to the Supplemental Record filed on January 29, 2003 are as follows: "Supp. C.R. at 89", meaning the document appears at page 89 of that supplement. References to the Supplemental Records filed on May 5, 2003, July 21, 2003 and September 25, 2003 are cited as: "2^nd Supp. C.R. at 1", "3^rd Supp. C.R. at 1" and "4^th Supp. C.R. at 1". As will be noted, it is anticipated that yet another supplement to the Clerk's Record will be filed in order to properly bring the trial court's discovery abuse sanction order of January 19, 2000 before this Court.

No. 05-02-01678-CV

IN THE COURT OF APPEALS

FIFTH DISTRICT

DALLAS, TEXAS

_______________________________________________

EVAN BROWN, Appellant

VS.

ALCATEL USA, INC., Appellee

_______________________________________________

On Appeal from the 199^th District Court of Collin County, Texas

APPELLANT'S BRIEF

TO THE HONORABLE COURT OF APPEALS:

In 1987 Appellant signed a contract whereby he agreed to turn over to Appellee any invention made or conceived by him while in Appellee's employ. Appellee instituted this suit in 1997 shortly after terminating Appellant's said employment. Appellee claimed injury or potential injury as a result of an alleged breach of the contract. The judge of the court in which the case was filed was determined to be disqualified and a different judge was assigned to hear and determine all further proceedings in the case. (C.R. I at 43). The court issued a temporary mandatory injunction from which Appellant unsuccessfully took an interlocutory appeal. (C.R. I at 48). The court thereafter entered a sanction order for discovery abuse which transferred a part interest in Appellant's invention to Appellee. Note: This item will be added to the Clerk's Record pursuant to Tex.R.App.P. 34.5(c). The court thereafter granted the plaintiff's motion for summary judgment upon certain of its claims. (C.R. VI at 1958). The court declined to hear Appellant's countermotion for summary judgment (C.R. I at 200). The court observed, however, that its order was also effectively a denial of Appellant's motion because the same arguments were presented in the Response to the Appellee's motion.

This appeal was perfected to challenge such judgment and the sanction order, but the appeal was abated by this court on March 17, 2003 because the initial judgment failed to dispose of all of the issues in the case. The appeal was reinstated after an amended or substitute final judgment was entered by the trial court. (2^ndSupp. C.R. at 238). The judgment divests Appellant of any interest in his so-called "solution" to a computer software problem (including any further advances made in its development) and requires Appellant to pay $332,000 in attorney's fees to Appellee.

First: Did the trial court err in granting Alcatel judgment under Tex.R.Civ.P. 166a (a) when it was not shown that there were no genuine issues as to any material fact nor that Alcatel was entitled to judgment as a matter of law on the issues expressly set out in its motions ⁽¹⁾ or Appellant's responses? (C.R. II at 605)

Second: Did the trial court err in granting a perpetual injunction which prohibits Appellant from ever completing his invention or from reaping the benefits from such post-employment work thereon, if any?

Third: Did the trial court abuse its discretion in allowing Appellee to recover a part of the res of the suit as a discovery abuse sanction, particularly if Alcatel had no right to the requested discovery?

Fourth: Did the trial court err in awarding a judgment for Appellee's attorney's fees against Appellant, or should such award in any event be reduced to reflect a reasonable amount?

Fifth: Are the judgment and other orders void because they do not show to have been rendered in the 199^th District Court?

In April, 1997, DSC Communications Corporation (which was subsequently merged with another company and became known as Alcatel USA, Inc. and is hereafter referred to either as "DSC" or "Alcatel") filed suit alleging that Appellant (hereafter "Brown") had recently "conceived" computer programming which would make possible an automated translation of the computer code in an older Z8000 language used in much of DSC's equipment to the new C or C++ languages. It considered this to be an "invention" within the meaning of the "Employment, Copyright, and Proprietary Information Agreement" (hereinafter "agreement") which Brown had signed in 1987 just after he became an at-will employee of DSC. (C.R. I at 81).

In relevant part, the agreement provided that Brown would "communicate to an officer of [DSC] promptly and fully all inventions (including but not limited to . . . computer programs . . .) made or conceived by [Brown] . . . from the time of entering [DSC's] employ until [he leaves], (1) which are along the lines of the business, work or investigations of the Company or [subsidiaries] at the time of such inventions, or (2) which result from or are suggested by any work which [Brown might] do for or on behalf of the Company."

DSC thus asserted a right to exclusively control any further development or use of the invention and demanded that Brown supply it with full information concerning his invention so that it could obtain for itself sole use or the complete economic benefit of Brown's discovery ⁽²⁾. DSC asked for (and received) a temporary mandatory injunction whereby the court would force Brown to comply with the disclosure provisions of the contract.

After much legal wrangling, in late 2002 DSC convinced the trial court (purportedly as a matter of law under Tex.R.Civ.P. 166a (a)(c)) that the agreement was supported by an adequate consideration to be legally enforceable, that as a matter of public policy such a contract should be enforced, and that Brown had breached the agreement. This latter conclusion was reached even though by that point Brown had revealed to DSC all of the information associated with his idea and it had turned out that his method did not, in fact, make possible any easier translation of computer codes. Furthermore, the court made no findings that such communication was not made "promptly and fully" in accordance with the contract. ⁽³⁾

Based on these conclusions, the court determined that DSC was entitled to recover all of its attorney's fees from Brown (including those for services rendered in other legal proceedings). The court accordingly entered judgment allowing DSC to recover $332,000 from Brown plus post-judgment interest thereon. (2^nd Supp.C.R. at 238) Of potential significance, the judgment further provides that, although Brown had not been employed by DSC for several years, he cannot legally "further develop" his ideas about how to accomplish an automated translation of computer codes to more modern languages.

The final judgment (rendered solely upon "summary judgment evidence"), is wrong for several reasons:

1. Similar contracts have repeatedly been held void for want of consideration or as being in violation of public policy or unconscionable.

2. Time has established that Brown never conceived an invention. To be classified as an invention, the thing created must possess elements of novelty and utility in kind and measure different from and greater than that already available or known. It must be useful and advantageous in a pursuit of life and capable of adding to the enjoyment of mankind.

Certainly this case potentially involved an invention. But, it is now clear that Brown's ideas, at least in their current stage of development, have no such value or utility. While his abilities as a computer programmer may someday enable Brown to perfect or significantly improve a means to make possible an easier translation of computer code, he never possessed an invention within the meaning of the contractual language at issue. Thus, he could not have breached the agreement.

3. Other material facts necessary to establish that the contract in question had been breached were shown by the summary judgment evidence to remain in dispute, including whether the so-called invention had been "conceived" during the period of Brown's employment at DSC (or what that term means) and whether Brown's invention was "along the lines of the business, work or investigations" of DSC at the time of "conception".

4. The court granted relief: (1) not called for by the contract or circumstances of the case and (2) which essentially deprives Brown of his free will perpetually by stating that he cannot try to "further develop" or evolve his knowledge concerning the interrelation between computer languages. Such prohibition further operates to legitimate a tortious interference with Brown's ability to form prospective contracts or business relationships concerning his chosen profession.

5. Upon examination of the proceedings below, the Court can determine as a matter of law that the amount of attorney's fees awarded was not "reasonable" in light of the services actually necessary, or that no fees should have been awarded.

6. The record reflects that the judgment was rendered by a court which did not have jurisdiction.

The interlocutory relief granted by the court to DSC ⁽⁴⁾ was also wrong in several respects and for several reasons. Even so, Brown abandons any claim for the harm he suffered as a result, except with respect to the so-called discovery abuse sanction whereby it is anticipated Alcatel might still assert some claim to Brown's ideas. ⁽⁵⁾ The order granting such sanction is subject to review in this appeal. JHC Ventures, L.P. v. Fast Trucking, Inc., 94 S.W.3d 762, 776 (Tex.App.- San Antonio 2002, no pet.).

"Consideration" is a fundamental element of every valid contract. Fourticq v. Fireman's Fund Ins. Co., 679 S.W.2d 562, 564 (Tex.App.- Dallas 1984, no writ); Johnson v. Breckenridge-Stephens Title Co., 257 S.W. 223 (Tex.Comm.App. 1924, judg. adopted). In the context of the agreement, the consideration, if any, would have been "something that is given up in exchange, something that is mutual, or something which is the inducement to the contract", and that is both lawful and valuable. Merchants' Nat'l Bank v. Voudouris, 248 S.W. 810, 812 (Tex.Civ.App.- Austin 1923, no writ). Consideration may consist either of a benefit for the promisor or a loss or detriment for the promisee. Consideration must be distinguished from the mere motive that induced the execution of the agreement. That the promisor was motivated or had an object in signing does not amount to, nor can it take the place of, consideration for the promise. International Aircraft Sales, Inc. v. Betancourt, 582 S.W.2d 632, 636 (Tex.Civ.App.- Corpus Chrisit 1979, writ ref'd n.r.e.).

The agreement recites that the consideration (from Brown's standpoint) is his "continued employment" with DSC and the salary or wages to be paid for his services in such employment. A promise to pay money is, of course, a legally sufficient consideration. E.g., Terrazas v. Sullivan, 470 S.W.2d 904, 907 (Tex.Civ.App.- El Paso 1971, writ ref'd n.r.e.). But, there was no evidence that Brown's salary was increased as a result of his signing the agreement. Furthermore, the money promised was that paid for his services (not for his inventions or the detriment he suffered under the agreement). "[I]f one party merely agrees to do what he is already bound to do, there is no consideration." Merchants' Nat'l Bank, 248 S.W. at 813. Walden v. Affiliated Computer Services, Inc., 97 S.W.3d 303, 319 (Tex.App.- Houston [14^th Dist.] 2003, no pet.).

The promise of continued employment was also illusory ⁽⁶⁾, because Brown remained an at-will employee subject to termination at any time and for virtually any reason. Montgomery County Hosp. Dist. v. Brown, 965 S.W.2d 501, 502 (Tex. 1998).

Any promise that depends on an additional period of employment is illusory because it is conditioned on something within the exclusive control of the employer who retains the option of discontinuing employment.

Anderson Chemical Co. v. Green, 66 S.W.3d 434, 438 (Tex.App.- Amarillo 2001, no pet.).

"When illusory promises are all that support a purported bilateral contract, there is no contract." Light v. Centel Cellular Co., 883 S.W.2d 642, 645 (Tex. 1994). Hence, the only motive for Brown's signing or assenting to the agreement was the threat that he would otherwise immediately lose his employment. (C.R. II at 679). The trial court failed to recognize the legal significance of this fact.

Nor did DSC gain anything in this regard by the fact that it employed Brown for several years before it sought to enforce the agreement. Such conduct does "not serve to render valid for any future time a contract originally not binding for its lack of consideration." Johnson, 257 S.W. at 227.

A business like DSC engenders at least some of its employees with the ability to become inventors and such companies should at a minimum have some control over or interest in the resulting inventions. But, the interests of the employee must be balanced against those of his employer so that the best interest of the public is ultimately served. See Castellow v. Swiftex Mfg. Co., 33 S.W.3d 890 (Tex.App.- Austin 2000, no pet.); Sacks v. Dallas Gold & Silver Exch., Inc., 720 S.W.2d 177, 180 (Tex.App.- Dallas 1986, no writ). Each case must be considered separately, since there is no absolute rule for determining whether a given agreement contravenes the public good. Dew v. American Rio Grande Land & Irrigation Co., 13 S.W.2d 474, 476 (Tex.Civ.App. 1929), rev'd on another ground, 25 S.W.2d 603 (Tex.Comm.App. 1930, holdings approved). This is judged according to its possible or probable effect on the public rather than its actual effect on, or the motives of, the parties in making it. Hazelwood v. Mandrell Industries Co., 596 S.W.2d 204, 206 (Tex.Civ.App.- Houston [1^st Dist.] 1980, writ ref'd n.r.e.).

The contract in question is too broadly worded. It requires transfer of ownership (all of the economic value) of: (1) "all inventions" suggested by any work Brown might do for DSC, as well as (2) of those inventions which are merely "conceived" during the period of his employment so long as they "are along the lines of the business, work or investigations of" DSC or its subsidiaries, even though such conception has no tangible form or known value or use at the time he ceases employment.

This can hardly be characterized as anything other than an appropriation of one's thoughts and all knowledge stored in the brain, i.e., one's inventive skill (which was defined in Hollister v. Mfg.Co., 113 U.S. 59, 72, 5 S.Ct. 717, 724, 28 L.Ed. 901, 905 (1885) as "that intuitive faculty of the mind put forth in the search for new results, or new methods, creating what had not before existed".) There is simply no need for a business entity to acquire its employees' inventive skill to protect its own legitimate interests. Cf. American Refining Co. v. Gasoline Products Co., 294 S.W. 967, 974-5 (Tex.Civ.App.- Fort Worth 1927, writ ref'd).

Great thinkers and problem-solvers play a vital role in our society, but the mere fact that they are sometimes located in the employ of large businesses which facilitate to some degree their course of invention, does not mean they should be deprived of the benefit of their personal talents. United States v. Dubilier Condenser Corp., 289 U.S. 178, 187-9, 53 S.Ct. 554, 557-8, 77 L.Ed. 1114, 1118-9 (1933). They remain human beings and must be treated as such. S. Cherensky, A Penny for Their Thoughts: Employee Inventors, Preinvention Assignment Agreements, Property, and Personhood, 81 Cal.L.Rev. 595, 648 (1993). Where a company hires and pays someone to engage in a particular investigation or task, that person should not, of course, be permitted to steal for his own aggrandizement the results of his work. But to say that merely because a company has contracted for specified services it must also reap every benefit that might flow from those services derides the individual freedoms and economic principles which made this country great. ⁽⁷⁾

In any event, the Texas courts early recognized that the mere relationship of employer and employee is not sufficient to invest the employer with title to all the product of the employee's own industry. Rather, ownership of an invention made by an employee must depend largely on whether the employee used materials, labor, and equipment of the employer in achieving the invention or discovery. See also Cal. Labor Code §2870. It is simply not enough that the inventor was employed at the time it was conceived. Atlas Brick Co. v. North, 288 S.W. 146 (Tex.Comm.App. 1926, judg.adopted). In the words of the court:

This is so because the employee may perform all the duties properly assignable to him, and during the same period independently exert his conceptive faculties, 'with the assurance that whatever invention he may thus conceive and perfect is his individual property.'"

North, 288 S.W. at 147.

Furthermore, at least in Texas,

[t]he efficiency and skills which an employee develops through his work belong to him and not to his former employer, and the employee is not obligated to forego the exercise of his inventive powers even if his exercise was gained in the performance of his contractual duties.

Hallmark Personnel of Texas, Inc. v. Franks, 562 S.W.2d 933, 936 (Tex.Civ.App.- Houston [1^st Dist.] 1978, no writ).

If nothing else, as a matter of equity, the trial court should have refused to grant specific performance of the agreement in favor of DSC. Wade v. Austin, 524 S.W.2d 79, 86 (Tex.Civ.App.- Texarkana 1975, no writ) describes the circumstances which can make a contract so oppressive or unreasonable that its enforcement will be denied . The agreement was clearly unfair because of its overall one-sidedness or the gross one-sidedness of some of its terms. There were no legitimate commercial reasons offered by Alcatel justifying the broad language describing the covered property or its need to have Brown's method. Pony Express Courier Corp. v. Morris, 921 S.W.2d 817, 821 (Tex.App.- San Antonio 1996, no writ); Tri-Continental Leasing Corp. v. Law Office of Burns, 710 S.W.2d 604, 609 (Tex.App.- Houston [1^st Dist.] 1985, writ ref'd n.r.e.); Oblix, Inc. v. Winiecki, ___ F.Supp.2d ___ (N.D. Ill. 2003).

It is obvious that in drafting the agreement, DSC sought to obtain the right to as much of the intellectual abilities of its employees as it possibly could. But, the ability to make that determination is not enough to say the contract was unambiguous. As the facts presented illustrate, the words "invention" ⁽⁸⁾ and "conceived ⁽⁹⁾ from the time of entering the Company's employ until I leave" and "which result from or are suggested by any work which I may do for or on behalf of the Company" are ambiguous. Thus, the contract was not sufficiently definite in its terms that the courts could understand what the promisor undertook. T. O. Stanley Boot Co. v. Bank of El Paso, 847 S.W.2d 218, 221 (Tex. 1992).

The agreement leaves reasonable doubt as to what the parties intended or what the court would be called upon to enforce. The parties could reasonably misunderstand the terms. Cf. Wiley v. Bertelsen, 770 S.W.2d 878, 883 (Tex.App.- Texarkana 1989, no writ). It does not describe the subject matter of the rights being assigned to DSC with sufficient precision to thereafter enable the courts to determine the obligations of the parties. Weitzman v. Steinberg, 638 S.W.2d 171, 175 (Tex.App.- Dallas 1982, no writ). It is also important to recognize that "[w]here the contract contains an ambiguity, the granting of a motion for summary judgment is improper because the interpretation of the instrument becomes a fact issue." Hussong v. Schwan's Sales Enterprises, 896 S.W.2d 320, 324 (Tex.App.- Houtson [1^st Dist.] 1995, no writ).

To prove it was entitled to recover as a matter of law, DSC had to prove something had been invented. In one of the earliest cases to deal with this type of contract, the court was careful to note "that a mere mental conception, not tested or reduced to practice, nor followed by any embodiment of the idea, is not an invention." Mississippi Glass Co. v. Franzen, 143 Fed. 501, 506 (3^rd Cir.1906). Brown took the position that, despite any statement to the contrary made by him in 1996, by 2001 it became evident to all that his method is still not developed to the extent that it would constitute material subject to the agreement. (C.R. II at 508). The court dealt with a similar situation in Koehring v. E. D. Etnyre & Co., 254 F.Supp. 334 (N.D. Ill. 1966).

Analogous to DSC's stance here, the court characterized Koehring's position as:

tantamount to an assertion that an employee, upon terminating his employment, must search his mind for all thoughts relating to the business of his employer and set these down for the employer's reference and that thereafter, he is forever precluded from employing such thoughts in a competitive enterprise.

The court tersely responded that "[t]he absence of merit in this assertion is patent." 254 F.Supp at 355.

It later explained:

An agreement requiring an employee to disclose all improvements, discoveries, and inventions developed by him while employed and specifying that such matter becomes the property of the employer does not give an employer a mortgage on all thoughts occurring to the employee, but is limited to those thoughts which . . . can in fact be deemed an improvement, discovery or invention and are sufficiently concrete to be considered a 'development' or 'conception'. Ideas which are disclosed to an employer but do not meet these standards do not become the property of the employer.

254 F.Supp. at 362.

As should have occurred here, the court refused to make its employee's inventive skill a "trade secret" which Koehring could ever own or continue to own despite termination of the employment relationship. 254 F.Supp at 339.

If for no other reason, Brown's position was correct because the language of the agreement must be construed to require that the idea be put into practice or be embodied in some tangible form before it would qualify as an "invention". Jamesbury Corp. v. Worchester Valve Co., 443 F.2d 205, 213 (1^st Cir. 1971); cf. Andreaggi v. Relis, 171 N.J. Super. 203, 408 A.2d 455, 464 (1979). Obviously, this had not occurred at the time Brown's employment with DSC was terminated (nor even to this date).

It was also disputed whether Brown's computer programming solution was "along the lines of the business, work or investigations" of DSC at the time of "conception". This was not an issue that could be resolved without complete evidence as to DSC's operations in 1996. Furthermore, Brown offered summary judgment evidence that he had been working out his ideas for many years and did not believe they were significantly related to DSC's telecommunications business. (C.R. II at 605)

In at least one respect, the judgment grants relief which is too broad (yet this provision serves to show why the contract should be voided as contrary to public policy ⁽¹⁰⁾

). The judgment states that Brown cannot further develop or market the solution to anyone other than Alcatel. While, of course, there is no "market" for his current ideas about translation of computer languages, the agreement should not be interpreted to allow Alcatel to prevent Brown from ever completing his work or from reaping the benefits from such subsequent work, if any. The contractual language should not be declared as a privilege or justification for Alcatel to prevent or interfere with Brown's ability to contract with third parties. The agreement does not grant Alcatel any patent or similar protection.

An employee cannot be deprived of the right to use his general skills and knowledge * * * Beyond . . . trade secret, confidential information, and Patent Act protection . . . the employer's interests must give way to an employee's right to leave his job and use elsewhere those skills and that knowledge of the trade or industry he has acquired during his employment.

Ingersoll-Rand Co. v. Ciavatta, 216 N.J. Super. 667, 524 A.2d 866, 872 (1987).

Brown did not contract away his right to be protected against such tortious interference with prospective contractual relationships. See Bradford v. Vento, 997 S.W.2d 713, 730-1 (Tex.App.- Corpus Christi 1999), rev'd on another ground, 48 S.W.3d 749 (Tex. 2001); Ruffing v. 84 Lumber Co., 410 Pa. Super. 459, 600 A.2d 545 (1991), alloc. denied, 610 A.2d 46 (Pa. 1992) . In any event, "[p]ublic policy protects any individual against being restrained by contract or otherwise from earning a living based upon his personal skill, knowledge and experience." G T I Corp., 309 F.Supp. at 773.

The trial court on January 19, 2000 determined Brown should lose 20% of the value of his invention and purported to accomplish this feat by entering an order divesting him of that part of his invention. (5^th Supp. C.R. at __). The order, in fact, bore no relationship to discovery and did not further one of the purposes that Tex.R.Civ.P. 215 was intended to further and thus is void. In re N.R.C., 94 S.W.3d 799, 808 (Tex.App.- Houston [14^th Dist.] 2002, pet. denied).

The order grew out of Brown's supposed failure to properly respond to an interrogatory which DSC had submitted in 1997 in which it requested disclosure of the information then stored in Brown's brain concerning what had become known as "the solution". Obviously, the discovery rules refer to tangible items, since nothing else meets the definition of "possession, custody or control" contained in Tex.R.Civ.P. 192.7 (b). See also Amoco Production Co. v. Lindley, 609 P.2d 733, 739 (Okla. 1980) (discovery order cannot "encompass all the mental concepts of a man."). ⁽¹¹⁾

Furthermore, it is well established that "the [discovery] rules do not permit the trial court to force a party to create" a document in order to comply with a discovery request. In re Guzman, 19 S.W.3d 522, 525 (Tex.App.- Corpus Christi 2000, orig. proc.). Nor are privileged matters generally discoverable. In re Anderson, 973 S.W.2d 410, 411 (Tex.App.- Eastland 1998, orig. proc.).

Hence, the prior orders which supposedly resulted in the "abuse" by Brown were void and did not truly relate to the discovery provisions of the Rules of Civil Procedure, but rather to one of DSC's many tactics whereby it sought to obtain compliance with the agreement prior to the time the validity of the agreement was determined.

The sanction (direct transfer of an interest in property) was not of a type authorized by the rule. ⁽¹²⁾ Sanctions should not be used to adjudicate the merits of a case. Spohn Hosp. v. Mayer, 72 S.W.3d 52, 63 (Tex.App.- Corpus Christi 2001, no pet.). The sanction was of unknown value at the time it was assessed and clearly had the potential to be excessive. Cummings v. Cire, 74 S.W.3d 920, 927 (Tex.App.- Amarillo 2002, no pet.).

DSC did not recover any damages or even anything of value. Therefore, it was not entitled to recover any attorneys' fees. Green Intern., Inc. v. Solis, 951 S.W.2d 384, 390 (Tex. 1997).

In any event, this dispute involved fairly simple factual determinations and the interpretation and application of just a few sentences of a contract. The plaintiff considered it straight-forward enough to warrant requesting a "summary" judgment. This brief was prepared in less than 40 hours, yet it more fully addresses the legal issues than anything presented by either party to the trial court. What could have been accomplished in relatively little time, instead apparently took the plaintiff's attorneys hundreds of hours.

Thus, it is preposterous to think that $332,000 has now become a "reasonable" fee for our average citizen to have to pay for the services of legal counsel in obtaining a summary judgment. Assuming it could recover its attorney's fees under §38.001(8) of the Civil Practice and Remedies Code ⁽¹³⁾, Alcatel was entitled only to a reasonable amount, which was not necessarily the amount it had expended. ⁽¹⁴⁾

Brown did not adopt the rather simple approach of getting another expert to controvert the affidavit of Alcatel's attorneys. Unless the summary judgment is set aside ⁽¹⁵⁾, Brown will likely bear the brunt of the rule that this court will overturn an award of attorney's fees only if it can characterize the award as being an abuse of discretion. Long Trusts v. Atlantic Richfield Co., 893 S.W.2d 686, 688 (Tex.App.- Texarkana 1995, no writ). Yet, an abuse of discretion is exactly what the Court should find.

Brown remains confident that he will not be merely penalized for the extravagance DSC and Alcatel chose to utilize in making their claim. In truth, the amount awarded does not bear a logical relationship to the amount in controversy ($0) nor the complexity of the issues. Cf. Herring v. Bocquet, 933 S.W.2d 611, 615 (Tex.App.- San Antonio 1996), rev'd on another ground, 972 S.W.2d 19 (Tex. 1998) ; Bethel v. Butler Drilling Co., 635 S.W.2d 834, 841 (Tex.App.- Houston [1^st Dist.] 1982, writ ref'd n.r.e.)(uncontradicted expert opinion does not render amount of award conclusive or mandatory). This court has a duty to reduce the amount of the fee, or at least remand this issue for proper determination by the trial court. Wuagneux Builders, Inc. v. Candlewood Builders, Inc., 651 S.W.2d 919, 922-3 (Tex.App.- Fort Worth 1983, no writ).

Many of the orders, including the final judgment, purport on their face to have originated in the 219^th District Court ⁽¹⁶⁾. If that were true, then they would be void because the 219^th District Court had no jurisdiction over the case. While 219^th District Judge Henderson had authority to act in the matters, such power derived from an order assigning him to serve in the stead of the regular judge of the 199^th District Court (where the case was filed and always pending). (C.R. I at 43). Judge Henderson could thus act as the presiding judge in the case, but not as or for the 219^th District Court. Where the record fails to reflect that the proper court exercised jurisdiction, its orders are void. Alexander v. Russell, 699 S.W.2d 209 (Tex. 1985).

Wherefore, Appellant prays that the judgment below and discovery abuse sanction order of January 19, 2000 will be set aside in whole or in part, and that judgment will be rendered by this Court that Appellee is entitled to recover nothing from him or only such relief as this court may determine proper, or alternatively, that this cause will be remanded to the trial court for such further proceedings as may be consistent with the rulings of this Court.

Respectfully submitted,

_____________________________

Martin L. Peterson

Bar No. 15838600

P. O. Box 368

Meridian, Texas 76665

(254) 386-6075

Attorney for Appellant

I hereby certify that a true copy of the foregoing Appellant's Brief (Substitute) was served by hand deliver upon Mr. Eric W. Pinker, Attorney for Appellee, at Lynn Tillotson & Pinker, L.L.P., 750 N. St. Paul St., Ste. 1400, Dallas, Texas 75201 on this 20^th day of November, 2003.

__________________________

1. Although neither was designated as a motion for partial summary judgment, Alcatel actually filed two separate motions for summary judgment each dealing with separate parts of its requested relief. The first motion appears in Supp. C.R. at 2 and see also C.R. II at 575. The second motion will be included in the 5^th supplement to the Clerk's Record. The results of the hearings on each motion were consolidated in the single final judgment (which itself superceded an ¹ earlier attempt in July, 2002 to render a judgment in the case).

2. The sole proof that such "invention" existed was what proved to be an overly optimistic statement made in a memorandum, dated April 19, 1996, Brown had submitted to DSC. (C.R.III at 802). In it he said: "I have developed a method of converting machine executable binary code into a high level source code form . . . to take existing executable programs and 'reverse engineer' the intelligence from the programs and 're-code' [it] into a portable high level language." Brown later claimed his "idea . . . solves the problem of converting executable machine code into a specified high level language. The process involves extracting logic flow and data references from the executable machine code. These references are then used to produce a high level language source code." Memo to Larry Sewell, dated June 28, 1996. Had these statements been accurate, there is little doubt such "method" would have constituted an invention.

This is because computer programs are most often written in a "high-level" programming language which human programmers can easily understand and work with. In order to make the programs work, however, the resulting "source" code is converted into "machine code", which few humans can understand or work with effectively but which provides instructions that computers can execute. The programs which conduct such conversions are called "compilers". For various reasons the source code for many existing software programs has been lost over time. Hence those programs cannot very easily be made to work on newer computer hardware.

The compilation process is usually composed of several steps during which the source code is first translated into an "intermediate language" . A code program called a "generator" then translates this intermediate language into the machine-readable "object" code. "Reverse engineering" describes a process by which a subject is analyzed in order to: (1) identify its components and relationships between them and (2) create a representation of the subject at a higher level of abstraction.

Brown's method, if workable, would be immediately recognized as a stellar technological development because it would allow computer users to upgrade their systems without having to worry about software compatibility. Such a ² program would presumably allow computers to automatically reverse-engineer existing programs and produce source code that could be easily adapted for use on new computer systems. Obsolete computer languages could be much more easily converted into modern computer language that newer systems could read and execute.

At present, such fully automated "decompilation" is commonly considered to be impossible because of the nature of the compilation process. No two compilers act exactly alike, so designing a single tool that can successfully reverse-engineer the object code generated by a compiler is theoretically impossible. While decompilation techniques have been in use since the 1960's, they rely on external information, such as the type of compiler originally used to generate the machine code, and generally require human input at various stages of the process.

Brown made his claim in a letter sent for the purpose of securing a release from DSC, which would in turn permit him to pursue development of his idea free from any threat of interference from the company (as a result of the agreement). The company took the letter at face value and interpreted it as evidence that Brown had breached, or was threatening to breach, his obligations under the contract.

3. The Court had earlier found disclosure was not made at various times or in the manner it had specified in orders it had issued (including the temporary injunction order).

4. This included assessment of monetary sanctions and the transfer of a 20% interest in Appellant's idea, supposedly as a sanction under Tex.R.Civ.P. 215.2 (5^th Supp. C.R. at ___ ), as well as the entry of an injunction (C.R. I at 48) which required disclosure of Appellant's ideas to DSC prior to any determination DSC had any interest therein under the agreement (i.e., which granted DSC essentially the full relief it sought in the suit based solely on a finding of probable right of recovery). Cf. RP&R, Inc. v. Territo, 32 S.W.3d 396, 400-1 (Tex.App.- Houston [14^th Dist.] 2000, no pet.) (temporary mandatory injunction requires that it be clearly established that the party seeking such relief is threatened with an actual irreparable injury or will experience extreme hardship if the injunction is not granted).

5. This court refused to prevent at least some of the wrongs upon the theory that such hardship could be cured by a prompt trial of the merits. Brown v. DSC Communications Corporation, Inc., (Tex.App.- Dallas 1998 [No. 05-97-1098-CV])(unpublished). In fact, the injunctive relief rendered a trial on the merits largely moot and forced an involuntary servitude upon Brown.

6. Indeed, the agreement concluded by making clear that it did "not constitute a contract of employment and that . . . the company . . . can terminate the employment relationship at any time . . ."

7. DSC proposed a remedy to the court as though it were dealing with a trade secret. See e.g., Weed Eater, Inc. v. Dowling, 562 S.W.2d 898, 901 (Tex.Civ.App.- Houston [1^st Dist.] 1978, writ ref'd n.r.e.). But what Appellant possessed was clearly not a trade secret he acquired from DSC.

8. This term occupies some 72 pages in Words and Phrases (West 1958).

9. "Conceived" has been construed to mean at least "the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention". Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed.Cir. 1996). "Conception requires both the idea of the invention's structure and possession of an operative method of making it." Amgen, Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 1206 (Fed.Cir. 1991). In other words, "conception is complete only when the idea is so clearly defined in the inventor's mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation." Burroughs Wellcome Co. v. Barr Laboratories, Inc., 40 F.3d 1223, 1228 (Fed.Cir. 1994). Obviously, DSC and the trial court sought a markedly different definition of this term.

10. Such contracts must not be limitless as to the extent of time or subject matter of the invention. Guth v. Minnesota Mining & Mfg. Co., 72 F.2d 385 (7^th Cir. 1934), cert. denied, 294 U.S. 711 (1935). Such provisions contravene the public policy of the land, which is one that encourages inventions and discourages the exclusion of an employee from engaging in gainful occupation for which he is particularly fitted for all time, anywhere in the nation. 72 F.2d at 388-9. See also G T I Corp. v. Calhoon, 309 F.Supp. 762, 768 (S.D. Ohio 1969)(an employer is only entitled to restrain a former employee from disclosing and using confidential information which was developed as a result of the employer's initiative and investment and which the employee learned as a result of the employment relationship).

11. An exception to this principle appears in Rule 192.3 (e)(3). In re State Farm Mutual Auto. Ins. Co., 100 S.W.3d 341, 342 (Tex.App.- San Antonio 2002, orig. proc.).

12. Rule 215 lists certain types or examples of sanctions that the court might utilize, but then refers to any "other" that could be considered "just". See Hanley v. Hanley, 813 S.W.2d 511, 521 (Tex.App.- Dallas 1991, no writ).

13. Alcatel alternatively sought (and might have been awarded) its fees under §37.009 of the Civil Practice and Remedies Code. But this statute even more pointedly provides that such an award must be equitable and just. Furthermore, it is clear Alcatel was merely seeking declaratory relief as an affirmative ground of recovery to revise or alter the parties contractual rights or legal relations and thus should have been denied any such relief . Jackson v. Houston Ind. Sch. Dist., 994 S.W.2d 396, 402-3 (Tex.App.- Houston [14^th Dist.] 1999, no writ); Tucker v. Graham, 878 S.W.2d 681, 683 (Tex.App.- Eastland 1994, no writ); Sylvester v. Watkins, 538 S.W.2d 827, 831 (Tex.Civ.App.- 1976, writ ref'd n.r.e.). In any event, DSC's declaratory judgment action overlapped with the relief sought under its breach of contract claims, precluding recovery of attorney's fees under §37.009. INAC Corp. v. Underwriter's at Lloyds, 56 S.W.3d 242, 256 (Tex.App.- Houston [14^th Dist.] 2001, no pet.).

14. Appellant does not mean to suggest by this argument that Alcatel's attorneys had charged or collected an unconscionable fee in violation of Tex.Discip.R.Prof.Cond. 1.04(a). He does not necessarily dispute that the hourly rates charged by the attorneys were not customary or accepted in Collin County. See also §38.003, Tex.Civ.Prac.& Rem.Code. Rather, it is the quantity of time which the attorneys asserted by affidavit to be reasonably necessary to the task at hand that he questions.

15. NCNB Texas Nat'l Bank v. Carpenter, 849 S.W.2d 875, 882 (Tex.App.- Fort Worth 1993, no writ).

16. Indeed, for reasons not explained by the record, many of the parties' pleadings also purport to have been filed in the 219^th District Court.