In Re John D. Hanby--Appeal from 270th District Court of Harris County
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Petition for Writ of Mandamus Conditionally Granted and Memorandum Opinion
filed February 11, 2010.
In The
Fourteenth Court of Appeals
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NO. 14-09-00896-CV
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IN RE JOHN D. HANBY, Relator
ORIGINAL PROCEEDING
WRIT OF MANDAMUS
MEMORANDUM
OPINION
In this original proceeding, relator, John D. Hanby, seeks a writ of mandamus
ordering the respondent, the Honorable Brent Gamble, to enter an order dismissing the
underlying lawsuit against Real Party in Interest, Weatherford International, Inc., in
accordance with his notice of nonsuit. We conditionally grant the writ.
According to the petition1, Hanby developed a new spectrometric technology to be used
in oil and gas drilling. He then entered into a consulting agreement with Weatherford. Under
the agreement, Weatherford was required to negotiate a license with Hanby for use of the
technology and methodology he developed, ―the Hanby Friedel-Crafts method.‖ Weatherford
agreed to pay a reasonable royalty for the exclusive license and the parties agreed to negotiate
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Weatherford disputes Hanby’s statement of facts in its response.
the royalty rate ―in good faith.‖ When the terms of the agreement were set to expire,
Weatherford offered a new employment agreement. After Hanby requested amendments to
the new agreement, Weatherford terminated him. According to Hanby, Weatherford has
since refused to abide by the consulting agreement. Hanby alleges that Weatherford is
marketing and selling his invention for commercial use and is attempting to patent his work
without credit. Hanby filed suit against Weatherford asserting claims as follows:
breach of contract — Weatherford contracted that in return for the exclusive license to
use the Hanby Friedel-Crafts method and apparatus, it would negotiate a royalty rate in
good faith but has failed to do so and has refused to pay royalties;
negligent misrepresentation — Weatherford misrepresented it would negotiate and pay
royalties for use of the Hanby Friedel-Crafts method and apparatus;
unjust enrichment — Weatherford failed to negotiate and pay royalties for use of the
Hanby Friedel-Crafts method and apparatus;
fraud — Weatherford falsely, and with actual knowledge, represented it would
negotiate in good faith and pay royalties for use of the Hanby Friedel-Crafts method and
apparatus;
conversion and theft of trade secrets — Weatherford has wrongfully exercised
dominion and control over the Hanby Friedel-Crafts method and apparatus, which is
proprietary and confidential information belonging to Hanby; and
misappropriation — Weatherford misappropriated the Hanby Friedel-Crafts method
and apparatus when it refused to pay Hanby a royalty for its use and has thereby gained
a special advantage in its competition with Hanby in that Weatherford bore little or no
expense in developing the Hanby Friedel-Crafts method and apparatus.
Weatherford filed a counterclaim for declaratory relief and seeks the following declarations:
Weatherford fully performed its obligations;
Weatherford had no obligation to exercise the option for a license;
Weatherford had no obligation to negotiate a license with Hanby;
Weatherford owns all intellectual property created by Hanby;
Weatherford owns all intellectual property to inventions in Hanby’s possession before
entering into the Agreement, including the Hanby Friedel-Crafts method and apparatus;
Weatherford has not taken, used, or misappropriated Hanby’s alleged trade secrets;
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Hanby breached the agreement by failing to cooperate with preparation of a patent
application; and
Weatherford is entitled to recover attorneys’ fees under Tex. Civ. Prac. & Rem. Code §
38.001.
Hanby filed a notice of nonsuit dismissing the entire lawsuit. See Tex. R. Civ. P. 162.
Weatherford filed an objection and motion to strike the notice of nonsuit, claiming it has sought
relief that is independent of the relief sought by Hanby. The trial court granted Weatherford’s
objection and motion to strike. The trial court found that ―Weathford has sought relief that is
independent of the relief sought by Plaintiff Hanby,‖ but did not specify the independent relief.
The granting of a nonsuit is a ministerial act by the court.
See Shadowbrook
Apartments v. Abu-Ahmad, 783 S.W.2d 210, 211 (Tex. 1990). Accordingly, a party is entitled
to mandamus relief if the trial court erroneously refuses to grant a nonsuit and dismiss the case.
See BHP Petroleum Co,. Inc. v. Millard, 800 S.W.2d 838, 840, n.7 (Tex. 1990).
―The plaintiff's right to take a nonsuit is unqualified and absolute as long as the
defendant has not made a claim for affirmative relief.‖ Id. at 841 (original emphasis). A
defensive pleading must allege the defendant has an independent cause of action on which he
could recover to qualify as a claim for affirmative relief. Id. at 841. Restating defenses as a
claim for declaratory judgment does not deprive the plaintiff as his right to the nonsuit. Id.
Denials of the plaintiff’s cause of action do not suffice. Id. The allegations pleaded in the
defendant’s counterclaim must aver facts upon which affirmative relief could be granted. Id.
Weatherford contends that its counterclaims exceed the scope of Hanby’s suit by
seeking declarations that (1) Weatherford had no obligation to exercise the license option or
negotiate a license; (2) Weatherford owned all intellectual property at issue; and (3) Hanby
failed to cooperate with preparation of a patent application. Weatherford does not argue that
any of its other claims for declaratory relief are independent of the relief sought by Hanby.
We conclude that the declaratory relief sought by Weatherford does not exceed the
scope of Hanby’s suit. A declaration that Weatherford had no obligation to exercise the option
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for or negotiate a license with Hanby would establish that Weatherford did not breach the
contract as alleged by Hanby. Accordingly, the counterclaims for license-related declarations
are merely defenses to Hanby’s breach of contract claim. ―Restating a defense in the form of a
request for a declaratory judgment does not defeat a plaintiff’s claim to a nonsuit.‖ Digital
Imaging Assoc., Inc. v. State, 176 S.W.3d 851, 854 (Tex. App. – Houston [1st Dist.] 2005, no
pet.). Therefore, Weatherford’s second and third counterclaims are not independent claims
for affirmative relief.
A declaration that Weatherford owns all intellectual property created by Hanby is a
defense to Hanby’s claim of conversion and theft of trade secrets. As noted above, a defense
to a cause of action is not an independent claim for affirmative relief. See id. Similarly, a
declaration that Hanby breached the contract by failing to cooperate with preparation of a
patent application is a defense to enforcement of the contract rather than an independent claim
for affirmative relief. See id.
Weatherford also argues that its counterclaims seeking declarations regarding
intellectual property ownership and Hanby’s alleged failure to cooperate with preparation of a
patent application are independent because the parties have an ongoing relationship with
continuing obligations.
Specifically Weatherford asserts that its counterclaims ―seek
enforcement of Hanby’s ongoing obligations to provide clear title to Weatherford’s intellectual
property, require Hanby to assist in procurement of patents relating to Weatherford’s
intellectual property, and to recover damages in relation to Hanby’s breach of these provisions
of the Consulting Agreements.‖ Counterclaims that seek a declaration controlling an ongoing
relationship have been held to be independent of the underlying action. See BHP Petroleum
Co., 800 S.W.2d at 841-42. However, the continuing obligations Weatherford refers to here
are not actually raised by their counterclaims. Weatherford’s counterclaims do not seek
enforcement, performance, or damages; rather, Weatherford seeks only declarations of liability
and ownership. Accordingly, they simply mirror the controlling issues at issue in Hanby’s
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claims. See Digital Imaging Assoc., 176 S.W.3d at 854 (―A claim that simply mirrors the
controlling issues of the plaintiff’s suit is not a claim for affirmative relief.‖).
A declaratory judgment action is not available to settle disputes already pending before
a court. See BHP Petroleum Co., 800 S.W.2d at 841-42. Weatherford’s counterclaims do
not aver any facts upon which affirmative relief could be granted. See Digital Imaging Assoc.,
176 S.W.3d at 855.
Because the counterclaims asserted by Weatherford already are
encompassed by Hanby’s original suit, the trial court abused its discretion in refusing to nonsuit
the entire case.
Weatherford further asserts that mandamus should be denied to prevent ―forum
shopping.‖ We reject this contention because a declaratory judgment action is not to be
used to ―deprive the real plaintiff of the traditional right to chose the time and place of
suit.‖ BHP Petroleum Co., 800 S.W.2d at 841. (quoting Abor v. Black, 695 S.W.2d 564,
566 (Tex. 1985)).
For these reasons, we conditionally grant the petition for a writ of mandamus and
direct the trial court to vacate its order of October 9, 2009 granting Weatherford’s objection
and motion to strike Hanby’s notice of nonsuit. We direct the trial court to sign an order
dismissing the underlying lawsuit. The writ will issue only if the trial court fails to act in
accordance with this opinion.
PER CURIAM
Panel consists of Justices Yates, Anderson, and Boyce.
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