10th Circuit Issues Mixed Ruling for Researcher in Bid to Add Claims to IP Suit Against BYU

On April 30, the Tenth Circuit issued a non-precedential opinion in a case by the estate of professor Dr. Donald L. Robertson against his former employer, Brigham Young University (BYU) over a medical discovery with big ramifications. Previously, the district court denied the plaintiff’s leave to amend the complaint to add claims for breach of contract and misappropriation of trade secrets as futile.

The opinion explains that three biochemists at BYU discovered the COX-2 enzyme on an unspecified date. The discovery was reportedly shared with one of the nation’s largest pharmaceutical companies, which used the information to develop the blockbuster drug known as “Celebrex.” BYU sued the pharmaceutical company and settled in 2012 for $450 million, and after paying its attorneys’ fees, kept 55% for itself and agreed to distribute the other 45% to the biochemists, including Robertson.

Litigation arose after Robertson and the others disagreed on the apportionment. After Robertson passed away, the trust acting as his successor in interest moved for leave to file amended crossclaims against BYU for breach of contract and misappropriation of trade secrets. The lower court reportedly denied the motion as futile, concluding that the amended claims would not survive a motion to dismiss. 

The appellate panel partly disagreed, finding that the trust’s allegations stated a valid claim for breach of contract. However, the court affirmed the claim of misappropriation of trade secrets because the limitations period had expired.

Specifically, the court held that trust plausibly alleged that “Robertson and BYU had entered into implied contracts governed by the IP Policies in effect from 1989 to 1992 and adopted in 1992.” In contrast to the district court’s ruling, last week’s opinion found that the trust sufficiently set forth factual allegations that implied key promises between the parties.

As to the proposed addition of a misappropriation of trade secrets against BYU, the panel explained that the argument raised on appeal, that the proposed claim would relate back to the filing date of the original crossclaims, was not raised before the trial court. Therefore, the court held, the trust forfeited the argument and the claim was otherwise time-barred.

The plaintiff is represented by Slayden Grubert Beard PLLC, and BYU by Parr Brown Gee & Loveless P.C.