IDENTITY OF PARTIES & COUNSEL

The following is a complete list of the names of all parties to the trial court’s final judgment, 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

INDEX OF AUTHORITIES.................................................................................................. iii-viii

STATEMENT OF THE CASE................................................................................................... 1-2

STATEMENT OF JURISDICTION............................................................................................... 3

ISSUES PRESENTED FOR REVIEW......................................................................................... 3

STATEMENT OF FACTS.......................................................................................................... 3-5

SUMMARY OF THE ARGUMENT......................................................................................... 5-6

ARGUMENT AND AUTHORITIES....................................................................................... 6-20

Regarding First Issue

Summary judgment was improper because the plaintiff failed to show that

there were no disputed material facts or that as a matter of law it was entitled

to judgment in its favor........................................................................................................... 6-17

Regarding Second Issue

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

a reasonable amount.............................................................................................................. 17-19

Regarding Third Issue

The record fails to reflect that the proper court exercised jurisdiction........................... 19-20

PRAYER....................................................................................................................................... 20

CERTIFICATE OF SERVICE..................................................................................................... 21

APPENDIX

INDEX OF AUTHORITIES

Cases

Alexander v. Russell, 682 S.W.2d 370 (Tex.App.– El Paso 1984), rev’d,

699 S.W.2d 209 (Tex. 1985)..................................................................................................... 20

Alexander v. Russell, 699 S.W.2d 209 (Tex. 1985) ............................................................. 19

American 10-Minute Oil Change, Inc. v. Metropolitan Nat. Bank-Farmers Branch,

783 S.W.2d 598 (Tex.App.– Dallas 1989, no writ).................................................................. 18

Amgen, Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200 (Fed.Cir. 1991) ....... 16

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).............................................. 8

Armbruster v. Memorial Southwest Hosp., 857 S.W.2d 938 (Tex.App.– Houston

[1^st Dist.] 1993, no writ)............................................................................................................... 7

Atlas Brick Co. v. North, 288 S.W. 146 (Tex.Comm.App. 1926, judg.adopted) ........... 14, 15

A. W. Wright & Assoc., P.C. v. Glover, Anderson Chandler & Uzick, L.L.P.,

993 S.W.2d 466 (Tex.App.– Houston [14^th Dist.] 1999, rev. denied).................................... 12

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

1982, writ ref’d n.r.e.)................................................................................................................. 18

Burroughs Wellcome Co. v. Barr Laboratories, Inc., 40 F.3d 1223 (Fed.Cir. 1994) ..... 16

Castellow v. Swiftex Mfg. Co., 33 S.W.3d 890 (Tex.App.– Austin 2000, no pet.)............... 13

Cubic Corp. v. Marty, 185 Cal.App.3d 438, 229 Cal.Rptr. 828 (1986)................................ 12

Cuyler v. Minns, 60 S.W.3d 209 (Tex.App.– Houston [14^th Dist.] 2001,

rev. denied)................................................................................................................................... 18

INDEX OF AUTHORITIES (cont.)

Cases

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

(Tex.Civ.App. 1929), rev’d on another ground, 25 S.W.2d 603 (Tex.

Comm.App. 1930, holdings approved)...................................................................................... 13

Feldman v. Kohler, 918 S.W.2d 615 (Tex.App.– El Paso 1996, rev. denied)...................... 12

Frazin v. Hanley, 130 S.W.3d 373 (Tex.App.– Dallas 2004, no pet.)................................... 12

Gaspard v. Gaspard, 582 S.W.2d 629 (Tex.Civ.App.– Beaumont 1979,

no writ)......................................................................................................................................... 19

Gibson v. John D. Campbell & Co., 624 S.W.2d 728 (Tex.App.– Fort Worth

1981, no writ)................................................................................................................................ 7

Goldwasser v. Smith Corona Corp., 817 F.Supp. 263 (D. Conn. 1993).............................. 12

G T I Corp. v. Calhoon, 309 F.Supp. 762 (S.D. Ohio 1969).................................................. 14

Green Intern., Inc. v. Solis, 951 S.W.2d 384 (Tex. 1997)...................................................... 17

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

cert. denied, 294 U.S. 711 (1935)................................................................................................. 14

Hallmark v. Port/Cooper T. Smith Stevedoring Co., 907 S.W.2d 586 (Tex.App.–

Corpus Christi 1995, no pet.)..................................................................................................... 12

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

Houston [1^st Dist.] 1978, no writ)................................................................................................. 15

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

Houston [1^st Dist.] 1980, writ ref’d n.r.e.)..................................................................................... 13

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) ........................................................................ 18

Hollister v. Mfg.Co., 113 U.S. 59, 5 S.Ct. 717, 28 L.Ed. 901 (1885) ................................ 13

INDEX OF AUTHORITIES (cont.)

Cases

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

Houtson [1^st Dist.] 1995, no writ).................................................................................................. 16

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

[14^th Dist.] 2001, no pet.) ......................................................................................................... 17

Ingersoll-Rand Co. v. Ciavatta, 216 N.J. Super. 667, 524 A.2d 866 (1987)...................... 14

In re Halliburton Co., 80 S.W.3d 566 (Tex. 2002)................................................................ 10

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

Corpus Chrisit 1979, writ ref’d n.r.e.)........................................................................................... 9

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

[14^th Dist.] 1999, no writ); ...................................................................................................... 17

Jamesbury Corp. v. Worchester Valve Co., 443 F.2d 205 (1^st Cir. 1971)............................. 8

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

San Antonio 2002, no pet.)........................................................................................................... 6

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

1924, judg. adopted)................................................................................................................... 10

Koehring v. E. D. Etnyre & Co., 254 F.Supp. 334 (N.D. Ill. 1966)..................................... 7, 8

Light v. Centel Cellular Co., 883 S.W.2d 642 (Tex. 1994) .................................................. 11

Lone Star Gas Co. v. EFP Corp., 92 S.W.3d 417 (Tex. 2001)................................................ 9

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

1995, no writ).............................................................................................................................. 18

Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572 (Fed.Cir. 1996).................................................. 16

Mariner Financial Group, Inc. v. Bossley, 79 S.W.3d 30 (Tex. 2002).................................. 9

INDEX OF AUTHORITIES (cont.)

Cases

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

Austin 1923, no writ).................................................................................................................. 10

Mississippi Glass Co. v. Franzen, 143 Fed. 501 (3^rd Cir.1906)................................................ 7

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

1993, no writ)............................................................................................................................. 17

North Central Oil Corp. v Louisiana Land & Explor. Co., 22 S.W.3d 572

(Tex.App.– Houston [1^st Dist.] 2000, rev. denied)................................................................... 16

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

1996, no writ)............................................................................................................................. 15

Progressive County Mutual Ins. Co. v. Bailey, 133 S.W.3d 272 (Tex. 2004)...................... 6

Rhone-Poulenc, Inc. v. Steel, 997 S.W.2d 217 (Tex. 1999).................................................. 18

Rios v. Texas Commerce Bancshares, Inc., 930 S.W.2d 809 (Tex.App.–

Corpus Christi 1996, rev. denied)................................................................................................ 9

Roberts v. Ernst, 668 S.W.2d 843 (Tex.App.– Houston [1^st Dist.] 1984,

orig. proc.)................................................................................................................................... 19

RP&R, Inc. v. Territo, 32 S.W.3d 396 (Tex.App.– Houston [14^th Dist.] 2000, no pet.)......... 6

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

1986, no writ).............................................................................................................................. 13

Sylvester v. Watkins, 538 S.W.2d 827 (Tex.Civ.App.– 1976, writ ref’d n.r.e.).................... 17

Tenet Healthcare, Ltd. v. Cooper, 960 S.W.2d 386 (Tex.App.– Houston

[14^th Dist.] 1998, writ dism’d w.o.j.)......................................................................................... 12

T. O. Stanley Boot Co. v. Bank of El Paso, 847 S.W.2d 218 (Tex. 1992)............................ 16

INDEX OF AUTHORITIES (cont.)

Cases

Tucker v. Graham, 878 S.W.2d 681 (Tex.App.– Eastland 1994, no writ)............................. 17

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

77 L.Ed. 1114 (1933)................................................................................................................. 14

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

[14^th Dist.] 2003, no pet.)........................................................................................................... 10

Weitzman v. Steinberg, 638 S.W.2d 171 (Tex.App.– Dallas 1982, no writ)........................ 16

Wiley v. Bertelsen, 770 S.W.2d 878 (Tex.App.– Texarkana 1989, no writ).......................... 16

Wilson & Wilson Tax Services, Inc. v. Mohammed, 131 S.W.3d 231 (Tex.App.–

Houston [14^th Dist.] 2004)......................................................................................................... 12

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

(Tex.App.– Fort Worth 1983, no writ).................................................................................... 18

Constitutions, Statutes and Rules

Texas Constitution

art. V., §11.................................................................................................................................... 19

Civil Practice & Remedies Code

Section 37.009............................................................................................................................ 17

Section 38.001(8)....................................................................................................................... 17

Government Code

class=Section3>

Section 22.001 (a)(2), (3), (6)..................................................................................................... 3

INDEX OF AUTHORITIES (cont.)

Rules

Texas Rules of Appellate Procedure

Rule 47.2(a)................................................................................................................................... 2

Rule 53.7(a)................................................................................................................................... 2

Texas Rules of Civil Procedure

Rule 166a.................................................................................................................... 1, 2, 5, 9, 19

Rule 166a (a)................................................................................................................................. 4

Rule 166a (c)................................................................................................................................. 4

Rule 215.2...................................................................................................................................... 6

Secondary Sources

Restatement (Second) of Contracts (A.L.I. 1981)

§45................................................................................................................................................ 12

§73, comment a........................................................................................................................... 12

Words and Phrases (West 1958).................................................................................................. 16

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

Preinvention Assignment Agreements, Property, and Personhood,

81 Cal.L.Rev. 595 (1993)....................................................................................................... 14

A. Bartow, Inventors of the World, Unite! A Call for Collective Action by

Employee-Inventors, 37 Santa Clara L. Rev.673 (1997).............................................. 15

class=Section4>

class=Section5>

No.

IN THE SUPREME COURT

OF TEXAS

AUSTIN, TEXAS

_______________________________________________

EVAN BROWN, Petitioner

VS.

ALCATEL USA, INC., Respondent

________________________________________________

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

PETITION FOR REVIEW

TO THE HONORABLE SUPREME COURT OF TEXAS:

Statement of the Case

The judgment appealed from was signed by the Honorable Curt B. Henderson. The

case was assigned for trial to the 199^th District Court of Collin County. The trial court granted the plaintiff’s motions for summary judgment and granted injunctive relief and awarded attorneys’ fees as requested. The parties in the Court of Appeals for the Fifth District (sitting in Dallas) were Evan Brown as Appellant and Alcatel USA, Inc., as Appellee. The Justices

class=Section6>

who participated in the decision in the Court of Appeals (whereby the judgment of the trial court was affirmed) were Martin Richter (author of the opinion), Douglas Lang and Carolyn Wright. Their opinion appears and may be cited as follows: 2004 Tex.App. LEXIS 5687; 2004 WL 1432541.

Alcatel USA, Inc. (then known as DSC Communications Corp.) instituted this suit in 1997 alleging Petitioner had breached an agreement to disclose to it certain inventions which he might make or conceive while an Alcatel employee. It sought a preliminary mandatory injunction to require Brown to reveal information about the invention, declaratory relief, and an award of attorneys fees.

Ultimately, the court granted the plaintiff’s motions for summary judgment upon certain of its claims and Alcatel abandoned the remainder of its claims and the court dismissed Brown’s counterclaims. (2^nd Supp.C.R. at 238 )

The court divested Brown of any interest in his so-called “solution” to a computer software problem (including any further advances made in its development) and required Brown to pay $332,000 in attorney’s fees to Alcatel. By a timely appeal, Brown challenged the final judgment and an earlier sanction order. In what it designated as a memorandum opinion^{^[1]} delivered on June 28, 2004, the Court of Appeals panel affirmed the decision of the trial court. Brown timely filed a motion for rehearing by the panel, which was denied by order dated August 2, 2004. This petition is timely filed on or before September 16, 2004 pursuant to Tex.R.App.P. 53.7(a).

Statement of Jurisdiction

This court has jurisdiction of the subject matter (questions of law presented) under §22.001 (a)(2), (3), and (6) of the Government Code.

Issues Presented^{^[2]}

First: Did the trial court err in granting Alcatel summary judgment upon its claim for a breach of an invalid contract that never occurred?

Second: Did the trial court err in awarding a judgment for Respondent’s attorney’s fees against Petitioner even though Respondent recovered no damages nor anything of value? Should such award in any event be reduced to reflect a reasonable amount?

Third: Is the judgment void because it does not show to have been rendered in the 199^th District Court?

Statement of Facts

In April, 1997, Respondent (“Alcatel”) filed this suit alleging that Petitioner (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 Alcatel’s equipment to the new C or C++ languages. In relevant part, an “Employment, Copyright, and Proprietary Information Agreement” (hereinafter “agreement”) which Brown had signed in 1987 just after he became an employee of Alcatel, provided that Brown would

class=Section7>

communicate to an officer of [Alcatel] promptly and fully all inventions (including but not limited to . . . computer programs . . .) made or conceived by [Brown] . . . from the time of entering [Alcatel’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. (C.R. I at 81).

class=Section8>

Alcatel asserted a right to exclusively control any further development or use of the programming and demanded that Brown supply it with full information concerning his “invention” so that it could obtain for itself the sole use or the complete economic benefit thereof ^{^[3]}. Alcatel asked for (and received) a preliminary mandatory injunction whereby the court would force Brown to comply with the disclosure provisions of the contract.

Ultimately, even after such disclosure, Alcatel convinced the trial court (purportedly as a matter of law under Tex.R.Civ.P. 166a (a)(c)) that the agreement was legally enforceable and that Brown had breached it. This latter conclusion was reached even though by that point it had turned out that his method did not, in fact, make possible any easier translation of computer codes.^{^[4]}

Summary of the Argument

Resolving the case based solely upon “summary judgment evidence” was wrong for several reasons:

1. Material facts– necessary to establish that the contract in question had been breached– were shown to remain in dispute. These included whether Brown’s idea qualified as an invention^{^[5]} or had been “conceived” during the period of Brown’s employment. The agreement did not grant Alcatel a mortgage on Brown’s pre-invention thoughts.

2. Similar contracts have been held void for want of consideration or as being in violation of public policy or unconscionable. Although not previously applied in Texas to the type of contract involved here, established principles of law show the contract is not valid.

3. Upon examination of the proceedings below and the summary judgment evidence, the Court can determine as a matter of law either that the amount of attorney’s fees awarded was not “reasonable” in light of the services actually necessary or that no award of fees was justified.

4. The record reflects that the judgment is void because it was rendered by a court which did not have jurisdiction.

The court also granted improper interlocutory relief.^{^[6]} But, the only part thereof which Brown asked the Court of Appeals to review was the so-called discovery abuse sanction whereby it is anticipated Alcatel might still assert some claim to Brown’s ideas. See JHC Ventures, L.P. v. Fast Trucking, Inc., 94 S.W.3d 762, 776 (Tex.App.– San Antonio 2002, no pet.). This issue was, however, not reached by the intermediate court because it became moot. If the judgment is set aside, then this case should be remanded to the Court of Appeals for consideration of the validity of the sanction order. E.g., Progressive County Mut. Ins. Co. v. Bailey, 133 S.W.3d 272 (Tex. 2004).

Argument and Authorities under First Issue Presented

Genuine Issue as to Material Fact Remained

To prove it was entitled to recover as a matter of law, Alcatel had to prove something had been invented. In its motion, all Alcatel could say was that “Brown [had] claimed that he had developed a method . . . that would automatically convert DSC’s legacy software into newer portable, higher-level programming languages”. (1^st Supp.C.R. at 3, 8).^{^[7]}

“[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). Despite the claim he made in 1996, by 2001 it became evident to all that Brown’s method is still not developed to the extent that it would fall within the agreement. (C.R. II at 508).^{^[8]}

Even if one assumes there is still some hidden knowledge residing in Brown’s brain, it would not belong to Alcatel. The court dealt with a similar situation in Koehring v. E. D. Etnyre & Co., 254 F.Supp. 334 (N.D. Ill. 1966).

Analogous to Alcatel’s stance here, the court characterized Koehring’s position as:

class=Section9>

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.

class=Section10>

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

It later explained:

class=Section11>

class=Section12>

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.

class=Section13>

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). This had not occurred at the time Brown’s employment was terminated. While stating it understood evidence favorable to the nonmovant must be taken as true, the Court of Appeals treated Brown’s initial description of his idea like a judicial admission^{^[9]} and discounted all else as not “credible”. If its purpose is to be preserved, Tex.R.Civ.P. 166a cannot be allowed to operate in that fashion. Lone Star Gas Co. v. EFP Corp., 92 S.W.3d 417 (Tex. 2001); Mariner Financial Group, Inc. v. Bossley, 79 S.W.3d 30, 34 (Tex. 2002) (facts without evidentiary basis cannot be presumed in favor of movant).

Lack of Consideration

“Consideration” is a fundamental element of every valid contract that must be distinguished from the mere motive that induced the execution of the agreement. International Aircraft Sales, Inc. v. Betancourt, 582 S.W.2d 632, 636 (Tex.Civ.App.– Corpus Chrisit 1979, writ ref’d n.r.e.).

Despite the illusory nature of its promise when made^{^[10]}, Alcatel argued and the Court

of Appeals found that Brown ultimately received consideration because he had been permitted to work and was paid a salary. Because this would not have occurred but for Brown having offered to assign his inventions, the court found Alcatel had performed under the contract in reliance on Brown’s offer. Apparently, the court considered Alcatel to have suffered a detriment in the process.

Normally, such conduct does “not serve to render valid for any future time a contract originally not binding for its lack of consideration.” Johnson v. Breckenridge-Stephens Title Co., 257 S.W. 223, 227 (Tex.Comm.App. 1924, judg. adopted). “While from the very nature of a unilateral contract, mutuality of obligation is not essential, such is the case only where some other consideration for the option passed to the promisor at the time of making the promise.” Johnson, 257 S.W. at 225.

Brown received no “equitable” consideration, only that which was already promised to him before the agreement was ever drafted, namely, his wages (once earned) and the other benefits commonly received by Alcatel employees in his position. “[I]f one party merely agrees to do what he is already bound to do, there is no consideration.” Merchants’ Nat’l Bank v. Voudouris, 248 S.W. 810, 813 (Tex.Civ.App.– Austin 1923, no writ); Walden v. Affiliated Computer Services, Inc., 97 S.W.3d 303, 319 (Tex.App.– Houston [14^th Dist.] 2003, no pet.).

In its Motion for Summary Judgment (1^st Supp.C.R. at 8, 15), Alcatel argued that “in exchange for” Brown’s promise it “offered Brown [continued] employment” and that Brown then “consented” to the new burdens being attached to such employment. It also argued that the agreement became enforceable when it “rendered full performance of its obligations under the contract.” Of course, it had no obligations under the contract and that is the very reason there was nothing for it to “perform”.

To support its contrary conclusion, the Court of Appeals cited In re Halliburton Co., 80 S.W.3d 566 (Tex. 2002). But the explanation there provided by this court (80 S.W.3d at 569) serves rather to elucidate why there was no new detriment suffered by Alcatel. This Court carefully noted that with respect to the arbitration agreement tacked on as a new condition of Myers’s employment by Halliburton, both parties became bound to use the arbitration procedure even after termination of the employment. In contrast, all of Alcatel’s promises in the agreement were dependent on Brown’s continued employment and it could suffer no detriment after the employment ended.

In addition, “[t]o form such a unilateral contract (1) the performance must be bargained-for so that it is not rendered past consideration.” Light v. Centel Cellular Co. of Texas, 883 S.W.2d 642, 648 fn. 6 (Tex. 1994). An employer’s promise to pay a certain wage is accepted and relied upon by the employee and becomes binding, though neither party was initially bound to perform. But, because Brown received nothing at the time he made his promise, not even a remote benefit (but only the illusory promise of continued employment), Alcatel’s subsequent performance under the separate employment arrangement (exchanging cash for prior services) was always destined to be “past consideration” (and no consideration for the assignment agreement).

Light illustrates the distinction between what happened here and the formation of a unilateral contract. The court said that if an employer promised some new or additional benefit to an employee or to incur some additional detriment (e.g. to share a trade secret) in return for the employee’s promise to protect such secret, that the employee could become bound to his promise once the employer performed (incurred the detriment). Merely giving the employee work to do or a salary, however, would not be enough because although it could perhaps be construed as a detriment (i.e. the employer must then reduce its earnings or profits), all the employer truly “bargained for” was the services and there was no additional detriment associated with the additional benefit it seeks. A promise (i.e. offer to perform) is accepted (becomes binding) by the invited performance of the offeree (in reliance thereon). Restatement (Second) of Contracts (A.L.I. 1981), §45. “If the performance was not in fact bargained for and given in exchange for the promise, . . . there is no consideration.” Restatement (Second) of Contracts §73, comment a; Tenet Healthcare, Ltd. v. Cooper, 960 S.W.2d 386, 389 (Tex.App.– Houston[14th Dist.] 1998, writ dism’d w.o.j.); Wilson & Wilson Tax Services, Inc. v. Mohammed, 131 S.W.3d 231, 242 (Tex.App.– Houston [14^th Dist.] 2004) (“A contract in which there is no consideration moving from one party or no obligation upon him . . . is . . . unenforceable.”)

If Alcatel approached its employee and said: “you can continue to work here (if you so choose) and receive what we have already agreed as your compensation, but you must now give me something more, i.e. your home”, it would not be bargaining for the home. Such a bargain only imposes a detriment upon the employee without any valid consideration.

Other Reasons the Contract was Invalid ^{^[11]}

While an employer should have some control over or interest in its employees’ inventions, 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. 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). Whether an agreement contravenes the public good 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 Alcatel, 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” Alcatel or its subsidiaries, even though such conception has no tangible form or known value or use at the time he ceases employment.

Alcatel sought to appropriate Brown’s thoughts or 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. Guth v. Minnesota Mining & Mfg. Co., 72 F.2d 385, 386-8 (7^th Cir. 1934), cert. denied, 294 U.S. 711 (1935). See also G T I Corp. v. Calhoon, 309 F.Supp. 762, 768 (S.D. Ohio 1969). Inventors should not 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).

class=Section14>

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).

class=Section15>

Until the decision in this case, the law in Texas was that the mere relationship of employer and employee was 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 depended largely on whether the employee used materials, labor, and equipment of the employer in achieving the invention or discovery. It was 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:

class=Section16>

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).

class=Section17>

If nothing else, as a matter of equity, the trial court should have refused to grant specific performance of the agreement because of its overall one-sidedness or the gross one-sidedness of some of its terms and the lack of any legitimate commercial reasons therefor. Wade v. Austin, 524 S.W.2d 79, 86 (Tex.Civ.App.– Texarkana 1975, no writ); Pony Express Courier Corp. v. Morris, 921 S.W.2d 817, 821 (Tex.App.– San Antonio 1996, no writ).^{^[12]}

In drafting the agreement, Alcatel sought to obtain the right to as much of the intellectual abilities of its employees as it possibly could. But, as the facts presented illustrate, the provisions “invention”^{^[13]} and “conceived ^{^[14]} 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).^{^[15]}

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 Alcatel 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).

Argument and Authorities under Second Issue Presented

Respondent 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. What could have been accomplished in relatively little time, instead apparently took the plaintiff’s attorneys hundreds of hours.

It is preposterous to think that $332,000 can be a “reasonable” fee for someone 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^{^[16]}, Alcatel was entitled only to a reasonable amount, which was not necessarily the amount it had expended.

Unless the summary judgment is set aside^{^[17]}, Brown will likely bear the brunt of the rule that an award of attorney’s fees will be overturned only if the award must be characterized 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 by Judge Henderson is exactly what this Court should find because 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).

The summary judgment concerning attorney’s fees must stand on its own merits. Rhone-Poulenc, Inc. v. Steel, 997 S.W.2d 217, 223 (Tex. 1999). Furthermore, “[i]n order to support a summary judgment, an expert’s affidavit must offer an opinion (1) which has a reasoned, demonstrable basis.” Cuyler v. Minns, 60 S.W.3d 209, 215 (Tex.App.-Houston [14th Dist.] 2001, rev. denied). The evidence submitted by Alcatel in support of its attorney’s subjective conclusions demonstrates the falsity and outrageous character of those conclusions. (2^nd Supp. C.R. at 2) At a minimum, Petitioner was entitled to have the appellate court review whether the summary judgment proof in this regard was indeed “clear, positive and direct, otherwise credible and free from contradictions and inconsistencies.” American 10-Minute Oil Change, Inc. v. Metropolitan Nat. Bank-Farmers Branch, 783 S.W.2d 598, 602 (Tex.App.– Dallas 1989, no writ). Once again, the intermediate court misconstrued Tex.R.Civ.P. 166a.

Argument and Authorities under Third Issue Presented

The final judgment purports on its face to have originated in the 219^th District Court. It is therefore 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 case, 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 pending). 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).

This was not a situation where Judge Henderson was merely exchanging benches or hearing a case (“holding court”) for another court in Collin County under art. 5, §11 of the Texas Constitution. There is a difference between the two capacities. See Roberts v. Ernst, 668 S.W.2d 843, 846 (Tex.App.– Houston [1^st Dist.] 1984, orig. proc.). Hence, while it may have been immaterial to the court of civil appeals in Gaspard v. Gaspard, 582 S.W.2d 629, 631 (Tex.Civ.App.– Beaumont 1979, no writ) whether Judge Brookshire was acting as the 58^th District Judge or as presiding judge of the 317^th District Court, Alexander requires greater clarity in the judgment here for it to be valid. If anything, the judgment in the record appears to conclusively prove that Judge Henderson acted in his capacity as 219^th District Judge rather than as the presiding judge of the 199^th District Court (exactly the opposite of what Alexander holds must be shown).

Apparently without any exception for clerical error, this court declared that when “the record does not show that the court with . . . jurisdiction was actually the court which exercised jurisdiction . . ., the cause must be reversed and remanded.” This is because “a judge is not the court . . . the persons by whom judicial functions are to be exercised are essential to complete the idea of a court”. Alexander v. Russell, 682 S.W.2d 370, 376 (Tex.App.– El Paso 1984), rev’d, 699 S.W.2d 209 (Tex. 1985) (Preslar, C.J. dissenting).

Prayer

Wherefore, Petitioner prays that the Court will grant review to protect the jurisprudence of the state and provide authoritative answers to the important questions presented. He asks the Court: (1) to set aside the judgment below, in whole or in part, and that judgment will be rendered by this Court that Respondent is entitled to recover nothing from him for breach of contract or under the attorneys fee statutes, or (2) that the judgment will be set aside as void. In either event, he further asks the Court to remand this cause to the court of appeals for consideration of the propriety of the sanction order of January 19, 2000, and, if necessary, to remand this case to the 199^th District Court for trial..

Respectfully submitted,

_____________________________

Martin L. Peterson

Bar No. 15838600

P. O. Box 368

Meridian, Texas 76665

(254) 435-2993

Attorney for Appellant

Certificate of Service

I hereby certify that a true copy of the foregoing Petition for Review was served by mail upon Mr. Eric W. Pinker, Attorney for Respondent, at Lynn Tillotson & Pinker, L.L.P., 750 N. St. Paul St., Ste. 1400, Dallas, Texas 75201 on this ____ day of August, 2004.

__________________________

^{^[1]} In its view, the Court of Appeals found all of the dispositive issues to be clearly settled in the law in favor of the Respondent. In fact, as will be demonstrated, the court refused to recognize or follow a decision of this court material to the enforceability of the contract at issue and misapplied Tex.R.Civ.P. 166a to the facts. That the case involves legal issues of continuing public interest which are important to the jurisprudence of the state (and a matter of first impression) should not be overlooked merely because of the designation assigned by the Court of Appeals under Tex.R.App.P. 47.2(a). The case has spawned articles in The Texas Lawyer, The New York Times, Time, the Journal of Computer & Information Law, and numerous other newspapers, magazines and journals worldwide.

^{^[2]} As preserved for appellate review in the trial court (where necessary) and assigned as error in the Court of Appeals.

^{^[3]} The only proof offered to show that such “invention” existed at any time was an overly optimistic statement made in a memorandum, dated April 19, 1996, which Brown had submitted to Alcatel. (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.

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. Current decompilation techniques 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 sent the letter for the purpose of securing a commitment from Alcatel as to the meaning or scope of the agreement, which might in turn permit him to pursue development of his idea free from any threat of interference from the company. Alcatel instead interpreted it as evidence that Brown had breached, or was threatening to breach, his obligations under the contract (though it initially offered to purchase Brown’s idea from him).

^{^[4]} Obviously, the trial judge and the plaintiff had very little means of knowing the true contents of Brown’s mind and thus the plaintiff could only operate on assumptions in protecting its perceived interests. But, that difficulty alone should not alter the requirements of Tex.R.Civ.P. 166a or, indeed, the quantum of proof required at trial. Without any proof that Brown or anyone else has ever actually performed an automated translation of computer languages or that his idea was as good as a working software program, it can only be said that Alcatel and the trial court jumped the gun. While it is certainly true that Brown could have purposely provided less information about his “algorithm” than he possesses, in order to say that his conduct constitutes a breach of the contract one must say that the term “conceived invention” reaches the mere memory of the human brain– a rather remarkable conclusion and one without support in the prior case law.

^{^[5]} A true invention must possess elements of novelty and utility in kind and measure different from and greater than that already available or known that is useful and advantageous in a pursuit of life and capable of adding to the enjoyment of mankind.

^{^[6]} This included assessment of monetary sanctions and the transfer of a 20% interest in Brown’s idea, supposedly as a sanction under Tex.R.Civ.P. 215.2 (5^th Supp. C.R. at 2 ), as well as the entry of an injunction (C.R. I at 48) which required disclosure of Brown’s ideas to Alcatel prior to any determination Alcatel had any interest therein under the agreement (i.e., which granted Alcatel 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).

^{^[7]} Where the ultimate conclusion to be drawn from uncontradicted evidence would not necessarily be the only conclusion possible to be made from the same evidence by reasonable minds, such conclusion would be a conclusion of fact (precluding summary judgment), and not a conclusion of law. Gibson v. John D. Campbell & Co., 624 S.W.2d 728, 732 (Tex.App.– Fort Worth 1981, no writ). A movant’s own summary judgment evidence may establish existence of a genuine issue of material fact. Armbruster v. Memorial Southwest Hosp., 857 S.W.2d 938, 941(Tex.App.– Houston [1^st Dist.] 1993, no writ).

^{^[8]} Throughout the litigation Brown consistently argued over and over again that the solution was a mere intangible idea stored in his brain. See e.g. C.R. I at 200-01, 203; 1^st Supp. C.R. at 113-14. Brown’s testimony was only that his idea reached the stage that he decided he “wanted to pursue it”. (1^st Supp.C.R. at 62). In his affidavit Brown stated:

The idea which I have developed is only in my mind. There is no computer program, computer model or any other tangible representation of [it]. Moreover, I have not written the idea down on paper. * * * The idea needs a great deal of further development and refinement before there is any chance of it functioning. It must be meticulously documented and thoroughly tested before I can even determine if my theory will work in practice. At this point, I have nothing more than an abstract idea to a perplexing problem.” (C.R. II at 682-3).

In his response to Alcatel’s motion, Brown pointed out that his “idea does NOT work and contains no new methods or algorithms” and asserted his idea “does NOT meet the definition of ‘conceived’” and specifically observed that “DSC has FAILED to product [sic] any evidence that Defendant’s idea qualifies as an invention.” (1^st Supp.C.R. at 97-8). Furthermore, after he spent many more hours trying to put the idea into a tangible, useful form in an attempt to comply with court-ordered “discovery”, he acknowledged that his idea was still just a dream and certainly nowhere near the status of an “invention”. (1^st Supp. C.R. at 90). In the words of Alcatel: “Defendant admitted that the Solution did not work . . . that he had run into an issue . . . and that his idea for solving it had failed”. (C.R. II at 513, 1^st Supp. C.R. at 18) Thus, even if the language of his letter could be construed to mean Brown had invented a working computer program, other evidence showed it was no more than an unproved intangible idea. At a minimum, the lower courts should have recognized there existed a question about the extent to which Brown had “disclosed” his ideas. The completeness of his disclosure became a genuine issue of material fact.

^{^[9]} Even quasi-admissions are not treated as conclusive unless they were deliberately made, are clear and unequivocal, and a hypothesis of mistake or mere slip-of-the-tongue is eliminated. See Rios v. Texas Commerce Bancshares, Inc., 930 S.W.2d 809, 817 (Tex.App.– Corpus Christi 1996, rev. denied).

^{^[10]} 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 . . .” See also Anderson Chemical Co. v. Green, 66 S.W.3d 434, 438 (Tex.App.– Amarillo 2001, no pet.).

^{^[11]} The Court of Appeals determined the “issues” of whether the contract violated public policy or was unconscionable or ambiguous were not properly raised by Brown’s responses to the motion for summary judgment and thus could not be considered as grounds for reversal (and thus need not be considered at all). Such issues are merely interrelated facets of whether the contract was valid– something which Alcatel had to show as a matter of law. E.g., Frazin v. Hanley, 130 S.W.3d 373, 376 (Tex.App.– Dallas 2004, no pet.). For example, a contract becomes unconscionable when one party receives insufficient consideration. Hence, even if not addressed in Brown’s responses (a point which he disputes), the “issues” were necessarily raised by Alcatel. A non-movant may always attack the legal sufficiency of grounds expressly presented to the trial court by the movant’s motion and the “precision” of legal arguments may be honed upon appeal so long as an entirely new theory is not involved. See Feldman v. Kohler, 918 S.W.2d 615, 626-7 (Tex.App.– El Paso 1996, rev. denied). What Brown seeks to have reviewed was part and parcel of the plaintiff’s cause of action, particularly since it cited in its motion (p. 15, fn. 61)cases in which these issues are discussed: Cubic Corp. v. Marty and Goldwasser v. Smith Corona Corp.. It cannot be gainsaid that this case involves the interpretation of the contract or the meaning of the words “conceived” and “invention” as used therein. See Hallmark v. Port/Cooper T. Smith Stevedoring Co., 907 S.W.2d 586, 590 (Tex.App.– Corpus Christi 1995, no pet.); see also A. W. Wright & Assoc., P.C. v. Glover, Anderson, Chandler & Uzick, L.L.P., 993 S.W.2d 466, 470 fn. 3 (Tex.App.– Houston [14^th Dist.] 1999, rev. denied). In any event, the concerns about to be expressed must be taken into account in determining whether the contract was supported by consideration.

^{^[12]} In her article Inventors of the World, Unite! A Call for Collective Action by Employee-Inventors, 37 Santa Clara L.Rev. 673, 675 (1997), Ann Bartow observes many such contracts are unfair:

[b]ecause employee-inventors may themselves invest extraordinary amounts of time, education, training, intellect, energy, and waking and sleeping thought to the innovative and complex ideas they originate and reduce to practice, and because such employee-inventors may not be able to secure any employment in their areas of expertise unless they sign pre-invention assignment agreements. * * * it is unjust that an employer reaps all of the rewards of a valuable patent * * * but an employee-inventor who has also made a substantial investment in the invention process * * * may not benefit at all.

^{^[13]} This term occupies some 72 pages in Words and Phrases (West 1958).

^{^[14]} “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, to reach the current result in this case a markedly different definition of this term is at work.

^{^[15]} Ambiguity can become an issue even if the parties were to assert there was no ambiguity. North Central Oil Corp. v. Louisiana Land & Explor. Co., 22 S.W.3d 572, 575-6 (Tex.App.– Houston [1^st Dist.] 2000, rev. denied).

^{^[16]} 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, Alcatel’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.).

^{^[17]} NCNB Texas Nat’l Bank v. Carpenter, 849 S.W.2d 875, 882 (Tex.App.– Fort Worth 1993, no writ).