File: 021678F - From documents transmitted:
AFFIRM and Opinion Filed June 28,
Court of Appeals
Fifth District of Texas at Dallas
EVAN BROWN, Appellant
ALCATEL USA, INC. F/K/A DSC COMMUNICATIONS
On Appeal from the 199th Judicial
Collin County, Texas
Trial Court Cause No. 199-596-97
Before Justices Wright, Richter and
Opinion By Justice Richter
Brown appeals from a summary judgment in favor of appellee Alcatel. In four
issues he claims the trial court erred: (1) in granting summary judgment because
there were disputed issues of material fact, (2) in granting a “perpetual
injunction,” (3) in abusing its discretion by granting a portion of the res of
the suit as a discovery sanction, and (4) in awarding attorney's fees. In a
fifth issue, Brown claims the judgment is void because the court lacked subject
matter jurisdiction. We affirm. Because all dispositive issues are clearly
settled in the law, we issue this memorandum opinion. Tex. R. App. P. 47.1.
employed in 1987 by DSC Communications Corporation, now known as Alcatel. Upon
his hire, he was required to sign an employment agreement, pledging to provide
the company with all information concerning any discoveries or inventions he
made or conceived while in its employ which related to the nature of the
company's business. In early 1996, Brown conceived the “Solution.” The Solution
was purportedly a methodology to reverse engineer and convert low-level computer
code into high-level code. The ultimate benefit of the Solution was that older
computer code could be converted where it would run on newer computer hardware
platforms. The Solution involved a complex algorithm that would encompass some
400 pages of single spaced type were it reduced to
Brown conceived the Solution, he sent a memorandum to his immediate supervisor
on April 19, 1996. The memorandum stated, in part:
I have developed a method of converting machine executable binary
code into high level source code form using logic and data abstractions. The
purpose of this idea is to take existing executable programs and “reverse
engineer” the intelligence from the programs and “re-code” the intelligence
into a portable high level language.
Brown sent this
memorandum in an effort to secure a release of the Solution from Alcatel, as
required by the employee agreement See Footnote 1 .
In response, Alcatel demanded Brown provide full disclosure of the Solution as
required by the employment agreement. When Brown failed to cooperate, he was
terminated. Alcatel filed suit soon thereafter.
II. SUMMARY JUDGMENT STANDARD OF
of review in summary judgment cases is well-established. See Tex. R. Civ.
P. 166a(c); Black v. Victoria Lloyds Insurance Co., 797 S.W.2d 20, 23
(Tex. 1990). In reviewing a summary judgment, evidence favorable to the
nonmovant will be taken as true. Nixon v. Mr. Property Management Co.,
690 S.W.2d 546, 548-49 (Tex. 1985). Every reasonable inference in favor of the
nonmovant is allowed, and all doubts are resolved in his favor. Nixon,
690 S.W.2d at 548-49. To prevail on summary judgment, a defendant as movant must
either disprove at least one element of each of the plaintiff's theories of
recovery or plead and conclusively establish each essential element of an
affirmative defense, thereby rebutting the plaintiff's cause of action. See
City of Houston v. Clear Creek Basin Authority, 589 S.W.2d 671, 678 (Tex.
1979); Hoover v. Gregory, 835 S.W.2d 668, 671 (Tex. App.-Dallas 1992,
writ denied). Once the defendant establishes its right to summary judgment as a
matter of law, the burden shifts to the plaintiff to present evidence raising a
genuine issue of material fact, thereby precluding summary judgment. City of
Houston, 589 S.W.2d at 678. A matter is conclusively established if ordinary
minds could not differ as to the conclusion to be drawn from the evidence.
See Triton Oil & Gas Corp. v. Marine Contractors & Supply, Inc.,
644 S.W.2d 443, 446 (Tex. 1982).
III. PURPORTED ISSUES OF MATERIAL
In his first
issue, Brown claims material issues of disputed fact exist, which preclude the
granting of summary judgment. The gist of his claim is that the Solution is not
complete and concrete to the point at which it is a viable concept. He asserts
much more research and labor is required to render the Solution practical and
useful. He claims the Solution has not been fully “made or conceived,” which
would trigger the contractual provisions of the employment agreement. As an
additional fact issue, Brown claims the employment agreement contract was not
supported by consideration, violates public policy, is ambiguous, and is
A. Validity of Employment
Brown claims there is no consideration to support the employment contract
because Alcatel could fire him at any time since he was an at-will employee.
Thus, he claims Alcatel's promise of continued employment and payment of wages
was illusory. Relying on the Texas Supreme Court's opinion in Light v. Centel
Cellular Co., 883 S.W.2d 642 (Tex. 1994), he claims “when illusory promises
are all that support a bilateral contract, there is no contract.” Id. at
Light too narrowly. Light recognized the situation where a
unilateral contract could still be formed even where one promise is illusory.
Id. at 645 n. 6. In this situation, the non- illusory promise can serve
as the offer, which the promisor who made the illusory promise can accept by
performance. Id. The fact the employer was not bound to perform because
it could have fired the employee is irrelevant; if it has performed, it has
accepted the employee's offer and created a binding unilateral contract.
Alcatel employed Brown for a period of ten years after he signed the employee
agreement and paid him a salary during that time. The evidence shows that
Brown's continued employment was conditioned on his signing the employee
agreement. The continued employment and payment of salary, which would not have
occurred but for Brown signing the employee agreement, was Alcatel's performance
under the unilateral contract. See In re Halliburton, 80 S.W.3d 566, 569
(Tex. 2002). Thus, a unilateral contract, though it is not mutual at the time it
was made, becomes enforceable if the party seeking to enforce the contract has
performed, conferring even a remote benefit on the other party. Cherokee
Communications, Inc. v. Skinny's, Inc., 893 S.W.2d 313, 316 (Tex.
App.-Eastland 1994, writ denied). Accordingly, there was consideration to
support the unilateral contract in this case.
that the contract violates public policy, is ambiguous, and is unconscionable
likewise fails. Brown did not urge these arguments in his response or amended
response to Alcatel's summary judgment motion and has therefore waived them.
Issues not expressly presented to the trial court by written motion, answer, or
other response shall not be considered on appeal as grounds for reversal. Tex.
R. Civ. P. 166a(c); City of Houston, 589 S.W.2d at 676.
Status of the
Brown repeatedly claims there is a fact issue that the Solution was not
an invention, or even a conception falling under the terms of the employment
agreement. However, he claimed in his April 1996 memo to management, “I have
developed a method of converting machine executable binary code into high level
source code form using logic and data abstractions. . . .” Brown has not
presented any other credible evidence to contradict this
also claims Alcatel was not in the business of designing software, but was in
the telecommunications business. Thus, the employment agreement is not
applicable to the Solution. However, the evidence in the record establishes that
Brown managed the group at Alcatel charged with maintaining and developing
automated conversion tools for converting high-level code to low- level code.
The record further shows that one of Brown's job functions was to manually
convert Alcatel's existing low-level code to high-level code. The evidence shows
Alcatel twice investigated automated conversion tools in 1993 and 1995. In
addition, in 1993, Brown managed the employee charged with investigating the
low-level to high-level automated code conversion process and received a status
report on his research on October 18,
We do not
believe the court below erred in concluding Alcatel, pursuant to the employment
agreement, “owns full legal right, title and interest to the process and/or
method” that is known as the Solution. We overrule Brown's first issue in its
second issue, Brown claims the trial court erred by granting a “perpetual
injunction” against Brown's further development of the Solution. The judgment
provides, “Evan Brown cannot further develop or market the Solution to anyone
other than Alcatel.” Since we have concluded the trial court did not err by
awarding the Solution to Alcatel, Brown's claim has no merit. We overrule
Brown's second issue.
V. DISCOVERY SANCTION
trial court awarded Alcatel a 20% interest in the Solution as a graduated
sanction after Brown repeatedly failed to comply with discovery. In his third
issue, Brown claims the trial court abused its discretion in ordering the
sanction. Due to our conclusion the trial court properly awarded 100% of the
Solution to Alcatel in summary judgment, this claim is rendered moot.
E.g., In re Salgado, 53 S.W.3d 752, 757 (Tex. App.-El
Paso 2001, no pet.) (If a judgment cannot have a practical effect on an existing
controversy, the issue or case is moot.) We overrule Brown's third
VI. ATTORNEY'S FEES
fourth issue, Brown claims the trial court erred in awarding attorney's fees to
Alcatel or, in the alternative, the fees awarded were not reasonable. Brown did
not raise this issue in the trial court. Issues not expressly presented to the
trial court by written motion, answer, or other response shall not be considered
on appeal as grounds for reversal of a summary judgment. Tex. R. Civ. P.
166a(c); City of Houston, 589 S.W.2d at 676. Accordingly, we overrule
Brown's fourth issue.
VII. SUBJECT MATTER
fifth and final issue, Brown claims the final judgment is void because it does
not show it was rendered in the proper district court. During the pendency of
the case, the cause was assigned to the sitting judge of the 219th
Judicial District Court to be heard in the 199th Judicial District
Court. There is no dispute the sitting judge was authorized to hear the case,
but Brown claims error because the judgment reflects the judge signed the
document as judge of the 219th District Court, as opposed to judge of
the 199th District
bases his argument on Alexander v. Russell, 699 S.W.2d 209 (Tex. 1985).
However, Alexander was a family law case governed by former section 11.05
of the Texas Family Code. That provision, re-codified at section 155.001(c),
governing continuing court jurisdiction in family law cases, has no
applicability to the instant dispute. Tex. Fam. Code Ann. § 155.001(c) (Vernon
judges may exchange districts or hold court for each other when they consider it
expedient. Tex. Const. art. V, § 11; Tex. R. Civ. P. 330(e); European
Crossroads' Shopping Ctr. v. Criswell, 910 S.W.2d 45, 51 (Tex. App.-Dallas
1995, writ denied). The trial court has discretion to decide when to transfer a
case. Tex. Const. art. V, § 11; Tex. R. Civ. P. 330(e); European
Crossroads, 910 S.W.2d at 51. The trial court may exchange or transfer a
case on its own initiative. European Crossroads, 910 S.W.2d at 51.
Exchange or transfer does not require a formal order. Id. The minutes of
the court do not need to show the reason for the exchange. Id. A litigant
does not have a protected proprietary interest in having his case heard by a
particular judge or a particular court. Id. We use an abuse of discretion
standard to review the trial court's decision to transfer a case, exchange
benches, or hold court for each other.
Gaspard v. Gaspard, 582 S.W.2d 629, 630-31 (Tex. Civ. App.-Beaumont 1979,
one issue was that the judge of the 58th District Court
wrongfully exercised jurisdiction because he tried the case as the
58th District Court and not as the “presiding judge of the
317th Judicial District Court.” In Gaspard, after the case was
brought before the Judge of the 58th District Court, the judge signed
several orders as “Presiding Judge” of the 317th Judicial District
Court and entered the final judgment as “Presiding Judge.” Id. at 631.
Finding the jurisdictional argument had no merit, the court concluded it was
immaterial as to whether the judge tried the case as the Judge of the
58th District Court or as “Presiding Judge” of the 317th
Judicial District Court. Id. Citing article 5, section 11 of the Texas
Constitution, the Gaspard court concluded the trial judge could act in
either capacity. Tex. Const. art. V, § 11; Gaspard, 582
Because a transfer or exchange does not require a formal order, the order
allegedly transferring this case is not in the record before us, the parties
agree the proper judge heard the case, and the fact that Brown appeared and
litigated the case for over five years - himself filing documents in both the
199th Judicial District Court, as well as the 219th
Judicial District Court - we conclude that there was no reversible error on the
basis of improper subject matter jurisdiction. We overrule Brown's fifth and
overruled all of appellant Brown's issues, we affirm the judgment of the trial
The agreement specifically required
Brown to notify the company in writing before making disclosure of any invention
or idea that could be construed as outside the scope of the agreement.