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Beus Gilbert PLLC v. Brigham Young University

United States District Court, D. Utah, Central Division

February 11, 2019

BEUS GILBERT PLLC, Plaintiff/Stakeholder,
v.
BRIGHAM YOUNG UNIVERSITY, WEILIN XIE, DANIEL L. SIMMONS, Defendants/Claimants. BEUS GILBERT PLLC, Plaintiff/Stakeholder,
v.
DONALD ROBERTSON, BRIGHAM YOUNG UNIVERSITY, WEILIN XIE, DANIEL L. SIMMONS, Defendants/Claimants.

          ORDER DENYING THE DONALD L. ROBERTSON TRUST'S MOTION FOR LEAVE TO FILE AMENDED CROSS-CLAIMS AND DENYING BYU'S MOTION FOR STAY

          Robert J. Shelby Chief Judge.

         Before the court are two Motions. First, there is Defendant/Interpleader Claimant The Donald L. Robertson Trust's Motion for Leave to File Amended Cross-Claims.[1] The Trust moves to amend its Cross Claim to assert against Brigham Young University (BYU) claims for breach of contract and misappropriation of trade secrets under Utah law. BYU opposes the Trust's Motion. Second, BYU filed an alternative Motion to Stay the Case Pending Completion of Academic Proceedings involving the Trust's claims, should the court grant the Trust leave to amend.[2] For the reasons discussed below, the court DENIES the Trust's Motion, [3] and thus DENIES as moot BYU's Motion to Stay.[4]

         BACKGROUND

         This action began as an interpleader seeking the distribution of a fraction of $450 million BYU received in 2012 after settling a case it had litigated for several years against Pfizer.[5] That underlying case arose in the wake of the development of the COX-2 enzyme at BYU between 1989 and 1992. Pfizer used the COX-2 research to develop the blockbuster drug, Celebrex, spawning litigation in this court beginning in 2006 between BYU, Pfizer, and others over the entitlement to Celebrex profits.[6]

         In this interpleader action that followed the 2012 BYU-Pfizer settlement, the nominal Plaintiff was a law firm BYU hired, Beus Gilbert. The firm sought to allocate a portion of BYU's settlement funds amongst COX-2's so-called ‘developers' who claimed entitlement to them. These funds included one million dollars interpled with the court. The initial interpleader Defendants were BYU, Dr. Daniel Simmons, and Dr. Weilin Xie. Simmons was a professor at BYU and Xie a BYU graduate student when COX-2 was developed.

         After early motion practice, BYU determined it was required to complete certain internal academic procedures related to the distribution of the settlement funds. The case was stayed for a time while parties engaged in those procedures and mediated their disputes. Attendant to that process, the parties also sought, and received, numerous extensions of time for briefing deadlines.

         As this case progressed, Beus Gilbert instigated a separate interpleader case against Xie, Simmons, and Dr. Donald Robertson. Robertson had been a biochemistry professor at BYU beginning in 1980 and through the time of COX-2's development. He left the university in 1995.

         That later-filed case was consolidated into this action in May 2014.[7] Upon consolidation, Robertson answered Beus Gilbert's Complaint and asserted a Cross Claim for Declaratory Relief against Simmons, Xie, and BYU.[8] Robertson unfortunately then passed away in August 2014. In February 2015, his estate's Trust sought to be substituted into the case[9] and Xie and Simmons filed Motions for Summary Judgment, seeking dismissal of Robertson's Cross Claim for Declaratory Relief.[10] Simmons and Xie had by that time reached a settlement, and the motions pending between them were vacated at their request.

         Briefing on the remaining motions to substitute and for summary judgment was complete in October 2015. The court heard argument on the motions on November 16, 2015. At that hearing, the court granted the Trust's Motion for Substitution into the case for Robertson. But the court and other counsel questioned whether Robertson's Cross Claim set forth a cognizable claim, particularly one sounding in contract, as breach of contract appeared to be the primary theory the Trust's counsel advanced at the hearing.[11] In view of that discussion, the Trust's counsel asked for “one opportunity to amend” the Trust's Cross Claim to more clearly assert a breach of contract claim against BYU.[12] The court ruled that the Trust would be allowed to file a motion for leave to amend, the pending Cross Claim would be dismissed, and the multiple motions for summary judgment drawn that Cross Claim would be denied without prejudice.[13]

         The Trust subsequently filed a Motion for Leave to File Amended Cross Claims, [14]seeking to assert causes of action against only BYU for breach of contract and misappropriation of trade secrets. First, in its proposed breach of contract claim, the Trust makes both a primary claim and an “alternative” claim. In its primary claim, the Trust contends that Robertson, Simmons, and Xie had “employment agreements” with BYU which “included” provisions from BYU's “Intellectual Property Policy as it existed at that time.”[15] The Trust repeatedly refers to a BYU IP Policy “effective from 1989 through 1992 during the development of COX-2”[16]- though this “effective” IP Policy is neither quoted in nor attached to the proposed Amended Cross Claim. The Trust alleges that under this IP Policy, BYU had a duty to distribute income to those “from whom BYU has claimed ownership of the COX-2 technology.”[17] The Trust separately alleges the “effective” IP Policy “is a valid contract between BYU and Dr. Robertson, ”[18] and that BYU breached it in various ways.[19] Finally, the Trust alleges that Robertson “[a]t all times during his employment at BYU . . . faithfully performed all that was required of him under his employment agreement with BYU, including the BYU IP Policy that was effective from 1989 through 1992 during the development of COX-2.”[20]

         In an “alternative” breach of contract claim, the Trust alleges a BYU IP Policy that became effective in 2001 (the 2001 IP Policy), six years after Robertson left BYU, but which BYU applied in distributing funds to Simmons and Xie during the pendency of this case-“is a contract with Robertson, ” and that BYU breached it in various ways.[21] The Trust attaches to its proposed Amended Cross Claim a copy of the 2001 IP Policy, [22] together with four other documents: 1) a BYU IP Policy from the year 1992;[23] 2) a BYU IP Policy from 2000;[24] 3) a letter dated October 24, 2013, [25] from Robertson to Dr. David Bearss at BYU; and 4) a letter dated March 4, 2014, from Robertson's counsel to Dr. Bearss.[26]

         Finally, for the first time in this action, the Trust seeks to assert against BYU a claim for misappropriation of trade secrets under Utah's Uniform Trade Secret Act.[27] The Trust alleges Robertson's contributions to COX-2's development were trade secrets, that they were communicated to persons with duties of confidentiality under BYU's IP Policies -BYU, Simmons, Xie, and others-but that those secrets were disclosed to Monsanto and Pfizer and used to develop Celebrex, eventually leading to the $450 million settlement in 2012.[28] The Trust claims it has been harmed by these actions “because BYU has not compensated Dr. Robertson or the Robertson Trust for its use of the trade secrets.”[29]

         BYU opposes the Trust's Motion for Leave to Amend on the grounds that the proposed amendments are futile. BYU first argues that the Trust's breach of contract claim fails because the Trust's claim that Robertson had an employment agreement with BYU which incorporated any IP Policy-including one allegedly in effect from 1989-1992-is implausible; and the Trust has not alleged facts showing that Robertson performed and would thus have enforceable rights under the terms of the 1992, 2000, or 2001 IP Policies attached to the proposed Amended Cross Claim. BYU argues with regard to the proposed misappropriation of trade secrets claim that under Utah law, it either did not survive Robertson's passing or is time-barred under the applicable three-year statute of limitations. BYU asks the court to deny the Trust's Motion, and to dismiss its action against BYU with prejudice.

         In the alternative, should the court grant the Trust's Motion for Leave to Amend, BYU moves for a six-month stay of this case.[30] BYU seeks the stay to allow for internal academic alternative dispute resolution procedures mandated in both the 1992 and 2001 IP Policies.

         The Trust opposes BYU's Motion to Stay.[31] It argues BYU has failed to carry its burden to show that the 1989-1992 BYU IP Policy that the Trust alleges to be the effective contract between Robertson and BYU contained a term mandating alternative dispute resolution. The Trust further argues that because Robertson contributed to the development of COX-2 at BYU from 1989-1992, but left BYU in 1995, he “cannot be said to have assented to the ‘mandatory alternative dispute resolution process' of the 2001 BYU IP Policy”[32]-a position BYU contends is at variance with Robertson's prior Answer to BYU's Cross Claim in this case, wherein Robertson admitted that in the event developers don't agree to a distribution scheme, “the [2001] Policy sets forth dispute resolution procedures.”[33] The Trust offers no argument on any effect of the 1992 IP Policy term mandating alternative dispute resolution.[34]

         The court held a hearing on the Trust's Motion for Leave to File Amended Cross Claims and BYU's Motion for Stay on February 18, 2016. The Trust then filed a Notice of Supplemental Authority, further briefing issues discussed at the hearing.[35] BYU responded to the Trust's Notice of Supplemental Authority by filing a Motion to Strike it, [36] and the Trust opposed that Motion.[37] The Trust then filed other motions seeking certain discovery and for a jury trial.[38] At a hearing on June 1, 2018, the court denied BYU's Motion to Strike, and permitted BYU to file a response to the Trust's Supplemental Authority.[39] It also denied the Trust's motion seeking discovery, but granted the Trust's Motion for Jury Trial.[40] BYU filed its response to the Trust's Notice of Supplemental Authority on June 15, 2018.[41]

         DISCUSSION

         I. The Trust's Motion for Leave to Filed Amended Cross Claims

         The determination of whether to permit amendment is governed by Rule 15, Federal Rules of Civil Procedure. Under Rule 15, leave to amend should freely be given “when justice so requires.” But leave may be denied where amendment would be futile-where the “complaint, as amended, would be subject to dismissal.”[42] Thus, the court evaluates the Motion for Leave to Amend, and BYU's futility arguments, under the general standards it would utilize if evaluating a motion to dismiss for failure to state a claim brought pursuant to Rule 12(b)(6).[43]Accordingly, the court confines its analysis to an evaluation of the allegations in the proposed Amended Cross Claim and the documents the Trust attaches to it as exhibits.[44]

         To avoid being subject to dismissal, the Trust's proposed Amended Cross Claim must comport with Rule 8(a)(2), Federal Rules of Civil Procedure, providing “a short and plain statement of the claim showing that [the Trust] is entitled to relief.” The Rule 8 pleading standard does not “require detailed factual allegations, but it demands more than an unadorned . . . accusation.”[45] A claim offering “‘labels and conclusions' or a ‘formulaic recitation of the elements of a cause of action will not do.”[46] Also insufficient are claims “tender[ing] ‘naked assertion[s]' devoid of ‘further factual enhancement.'”[47] Rather, to avoid a finding of futility, the Trust must allege “sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face'” allowing “the court [to] draw the reasonable inference that [BYU] is liable for the misconduct alleged.”[48] And while the court generally must accept factual allegations in a proposed claim as true, it is “not bound to accept as true a legal conclusion couched as a factual allegation.”[49] BYU, as the party opposing amendment, bears the burden to show the proposed Cross Claim does not state such a plausible claim for relief, and that the Trust's amendment is therefore futile.[50]

         BYU argues the Trust's proposed Amended Cross Claim is futile because: 1) the Trust has not alleged sufficient facts to state a plausible claim for breach of contract between Robertson and BYU; and 2) the trade secret claim did not survive Robertson's passing-but even if it did, an applicable three-year statute of limitations has expired. As discussed below, the court concludes: 1) the breach of contract claim lacks necessary factual support to rise to the level of plausibility and thus does not withstand BYU's futility arguments; and 2) though the trade secret claim survived Robertson's passing, it is time-barred.

         A. Breach of Contract Claim

         Under applicable Utah law, the elements of a prima facie breach of contract claim are: “‘(1) a contract, (2) performance by the party seeking recovery, (3) breach of the contract by the other party, and (4) damages.'”[51] To state a claim showing an entitlement to relief on this cause of action, the Trust must allege facts sufficient to plausibly establish these elements. And though the nature and quantum of facts will necessarily vary from case to case, the Utah Supreme Court has persuasively explained that “at a minimum, a breach of contract claim must include allegations of when the contract was entered into by the parties, the essential terms of the contract at issue, and the nature of the defendant's breach.”[52]

         The parties vigorously dispute whether the Trust plausibly alleges the existence of a contract and Robertson's performance. More specifically, BYU argues the proposed breach of contract claim is deficient because although it rests on allegations that Robertson had an underlying employment agreement with BYU and that agreement “included” an IP Policy, it lacks factual allegations to support the claim. As explained below, the court agrees the allegations in the proposed Amended Cross Claim are insufficient to plausibly show the existence and essential terms of the contract Robertson relies upon, and his performance under it.

         1. There is Insufficient Factual Support to Reasonably Infer the Existence and Essential Terms of a Contract Between BYU and Robertson

         Though it is not entirely clear, it appears the Trust in its proposed Amended Cross Claim avers that Robertson had a contract with BYU either because: 1) he had unspecified “employment agreements” with BYU during his work there that “included” any existing BYU IP Policies-including one or more unidentified IP policies presumably in effect between 1989-1992, while COX-2 was developed; or 2) because one or more of the BYU IP Policies were somehow distinct contracts to which Robertson was a party. Under either theory, the proposed Amended Cross Claim fails to set forth sufficient factual support to plausibly establish the existence and essential terms of a contract between BYU and Robertson. The Trust's allegations on this point are:

• “Dr. Robertson began teaching as a professor of biochemistry at BYU in 1980.”[53]
• “At all times during their employment, in particular during the development of COX-2, BYU's employment agreements with Dr. Robertson, Dr. Simmons, and Dr. Xie included the provisions of BYU[‘s] Intellectual Property Policy as it existed at that time.”[54]
• “Different versions of the BYU IP Policy include, but are not limited to: (1) The BYU Intellectual Property and Creative Works Policy - 1992 (“1992 BYU IP Policy, ” true and correct copy attached as Ex. 1); and (2) Brigham Young University Intellectual Property Policy - 2000 (“2000 BYU IP Policy, ” true and correct copy attached as Ex. 2); and (3) Brigham Young University Intellectual Property Policy - 2001 (“2001 BYU IP Policy, ” true and correct copy attached as Ex. 3). The 2000 BYU IP Policy indicates, ‘PRIOR VERSION: February 27, 1998.'”[55]
• “Under the IP Policy that was effective from 1989 through 1992 during the development of COX-2, BYU claimed ownership of the COX-2 technology as the property of BYU.”[56]
• “Under the IP Policy that was effective from 1989 through 1992 during the development of COX-2, BYU has a duty to distribute income to the individuals from whom BYU has claimed ownership of the COX-2 technology.”[57]
• “At all times during his employment at BYU, Dr. Robertson faithfully performed all that was required of him under his employment agreement with BYU, including the BYU IP Policy that was effective from 1989 through 1992 during the development of COX-2.”[58]
• “Dr. Robertson left BYU in 1995.”[59]
• “The BYU IP Policy that was effective from 1989 through 1992 during the development of COX-2 is a valid contract between BYU and Robertson.”[60]
• “In the alternative, BYU breached the 2001 BYU IP Policy, which in the alternative is a contract with Dr Robertson, by failing to identify Dr. Robertson as an “Academic Developer” of COX-2 under that version of the policy.”[61]

         The thrust of these allegations is that Robertson entered into one or more unspecified employment agreement(s) at some unknown point(s) during his time working at BYU from 1980 to 1995; the agreement(s) somehow “included” unidentified provisions from one or more unspecified IP Policies; the IP Policies were somehow “effective” as “contracts”; that BYU had legal duties arising from unspecified terms in the Policies; and that Robertson faithfully performed unspecified terms of whatever agreements or policies formed the basis for a contractual relationship with BYU, including an IP Policy in effect from 1989-1992. These allegations are conclusory and unsupported with facts concerning the formation and essential terms of any contract, whether through an underlying employment agreement or various IP Policies. While no one missing fact may be the lynchpin to this claim, the paucity of any facts concerning the various alleged agreements leads the court to conclude the contract claim is implausible.

         First, insofar as the Trust's contract claim rests upon some underlying employment agreement, no such agreement is identified with even the most elemental facts. The Trust provides no factual allegations concerning the fundamental and essential characteristics of the claimed contract, including: when Robertson and BYU entered into such an agreement; how Robertson and BYU formed the agreement; whether the agreement was written or oral (as the Trust suggests in its briefing might be the case);[62] how it became "effective" as the Trust alleges; what the essential terms of the agreement were; whether and how terms of one or more IP Polices were "included" in the agreement, [63] and if so, what those terms were. Given the nature of the Trust's fluid and amorphous contract theory, the answers to some of these questions necessarily implicate other questions that on the facts alleged require answers to provide even the most basic Rule 8 notice to BYU. Among other things, was there only one employment agreement between Robert and BYU during Robertson's fifteen-year tenure at the school? If more than one, which one is the Trust relying on for its breach claim?

         Second, there is a similarly fatal absence of factual support concerning the two IP Policies the Trust alternatively suggests might contractually bind Robertson and BYU-the 1989-1992 IP Policy or the 2001 IP Policies. The Trust suggests one or the other Policy is binding either because they are “included” in the underlying employment agreement(s) or somehow serve as stand-alone contracts with Robertson.

         Yet, as with the alleged underlying employment agreement(s), the Trust fails to allege the fundamental and essential facts concerning any IP Policy contract, including for example: when Robertson and BYU entered into a contractual relationship under any IP Policy; how any one or more IP Policies came to have the force and effect of a contract between BYU and Robertson; what the essential terms of the contract were; assuming there were also one or more employment agreements between BYU and Robertson (as alleged), whether the IP Policies or specific terms of the IP Policies were incorporated into the employment agreement(s); if so, what Policies or terms were incorporated, and how did subsequent revisions to the underlying employment agreement(s) and/or IP Policies affect the contractual duties between Robertson and BYU. Neither are there any factual allegations providing support for the Trust's alternative theory that BYU's 2001 IP Policy, which became effective six years after Robertson retired from BYU, somehow provides a basis for a breach of contract claim.

         In its briefing, the Trust contends in a conclusory manner that “it plead [sic] a plausible contract (BYU IP Policy) in effect from 1989- 1992.”[64] But the Trust fails to supply any of the above-mentioned missing factual allegations in the proposed Amended Cross Claim concerning the minimum required elements of a breach of contract claim under Utah law.[65]

         Rather, the Trust presents a novel argument: that the formation of Robertson's contract is established by examining BYU's “dealings with Professors Simmons and Xie, ” which the Trust contends “prove a contract (BYU IP Policy) existed between BYU and its professors in 1989-1992.” The Trust further posits the essential terms of this IP Policy can be discerned by reviewing the terms of the other IP Policies actually attached to the Cross Claim-those from 1992, 2000, and 2001. The Trust provides in its briefing citation to no authority supporting its position.[66] The court nonetheless briefly addresses these arguments below.

         First, the Trust theorizes that because COX-2 was developed at BYU between 1989-1992, and because in 2012 BYU paid Simmons and offered to pay Xie a portion of the income it had derived from COX-2, it must necessarily be that BYU “[c]learly . . . had a contract [with Simmons and Xie] under the BYU IP Policy . . . .”[67] And in another leap, the Trust argues that “From 1989-1992, a BYU IP Policy must have been in effect as to Professors Simmons and Xie or BYU would have had no basis upon which to assume ownership of COX-2 developments contributed by Professors Simmons and Xie.” Because Robertson had also been a BYU professor who contributed to COX-2's development, the Trust asserts “The BYU IP Policy in effect from 1989-1992 for Professors Simmons and Xie is the same policy in effect for Dr. Robertson.”[68]

         This argument is unsupported by legal authority and requires multiple, impermissible factual leaps. First, the Trust has cited no authority suggesting that the existence of an employment contract, or intellectual property policy contract in an employment setting, can plausibly be inferred under these circumstances. And the court simply cannot, on the allegations in the proposed Amended Cross Claim, infer that a contract between BYU and Xie (the alleged 1989-1992 IP Policy) existed, that it is the reason why BYU in 2012 sought to settle claims to pay Simmons and Xie for assisting in developing COX-2, and then further infer that Robertson-who left BYU twenty-seven years before BYU paid Simmons and Xie-necessarily enjoyed the same contract and is owed the same obligations.

         Notably, the Trust's inferential reasoning is undermined by the allegation in its own proposed Amended Cross Claim that BYU in fact applied the 2001 IP Policy in its 2012 dealings with Simmons and Xie, [69] not an unspecified Policy from 1989-1992. Assuming the truth of that allegation, it is not plausible that BYU's dealings with Simmons and Xie decades later evidence a contract between Robertson and BYU incorporating or based on a different, unspecified IP Policy or Policies in effect between 1989 and 1992.[70] In short, the Trust has not plausibly alleged Robertson had an enforceable contract with BYU, let alone one somehow evidenced by BYU's dealings with Simmons and Xie.

         More fundamentally, the Trust has not plausibly alleged the essential terms of any 1989-1992 IP Policy it purports to rely upon in its breach of contract claim.[71] The Trust now argues the essential terms of this IP Policy can be inferred by examining “subsequent versions of the BYU IP Policy.”[72] The Trust claims these IP Policies in effect after 1992 “evidence . . . the terms of the contract”[73] and make plausible the Trust's allegation that the earlier 1989-1992 IP Policy required: 1) “ownership of the COX-2 development to transfer from the professors to BYU;” and 2) “BYU to pay the professors a portion of income derived from the COX-2 development.”[74]

         This argument fails. First, as with the argument concerning BYU's dealings with Simmons and Xie, the Trust cites no legal authority for the proposition that the essential terms of an intellectual property policy can be inferred by examining written versions of policies later effectuated. The Trust also fails to identify which essential terms from these subsequent policies the court should infer as included (or excluded) in the alleged 1989-1992 IP Policy. The speculation the Trust now urges cannot substitute for its obligation to plead facts.

         And the terms of an unspecified, possibly oral agreement[75] simply are not made more plausible by looking at later, written versions. This point requires little elaboration. Agreements are altered, terms are included or omitted, because they are found to have been needed but lacking, or included but superfluous in prior versions. There are, for example, notable differences between the 1992 IP Policy and subsequent BYU IP Policies. But even if there were only insignificant differences between the various IP Policies (as, for example, between the 2000 and 2001 IP Policies attached to the proposed Amended Cross Claim), this provides no factual information concerning whether the unspecified IP Policy or Policies “effective” between 1989- 1992 on the one hand, and the 1992 IP Policy on the other, were identical, similar in some ways, or wholly different-and as to what terms.[76]

         Based upon the foregoing, the court concludes that the Trust has not plausibly alleged the existence and essential terms of a contract between Robertson and BYU. The Trust's conclusory allegations concerning an “effective” IP Policy, and unspecified terms somehow “included” in other unspecified “employment agreements” are insufficient. And the court declines the Trust's invitation to infer the existence of a binding contract and its terms based on BYU's dealings with Simmons and Xie and later-promulgated IP Policies. The Trust has failed to plausibly allege the first element of its breach of contract claim-that Robertson had a contract with BYU.

         2. There is Insufficient Factual Support to Reasonably Infer Robertson Performed as Required under any Contract with BYU

         Likewise, the Trust has failed to allege plausibly the second element of its breach of contract claim, Robertson's performance. Paragraph 15 of the proposed Amended Cross Claim supplies the Trust's sole allegation clearly drawn to the nature or sufficiency of Robertson's performance:

At all times during his employment at BYU, Dr. Robertson faithfully performed all that was required of him under his employment agreement with BYU, including the BYU IP Policy that was effective from 1989 through 1992 during the development of COX-2.[77]

         This lone, conclusory allegation amounts to no more than a “formulaic recitation of [an] element[]” of a breach of contract claim.[78] In the context of the Trust's proposed Amended Cross Claim, it is insufficient to plausibly establish Robertson's performance. Removing it from consideration, there are no factual allegations in the proposed Amended Cross Claim identifying the terms in any agreement describing what was required of Robertson, or the actions he took to comport with those terms. There may be instances in which no more is required to adequately plead contract performance, but here, viewing the proposed Amended Cross Claim in its entirety - including the lack of facts concerning what contract is claimed or any of its terms - the Trust's conclusory allegation that Robertson did “all he was required to do” falls short of plausibly pleading contract performance.

         And independently mining the proposed Amended Cross Claim for allegations concerning any actions by Robertson both during and after his time at BYU does not help the Trust plausibly establish Robertson's performance under any contract. Additional allegations establish only that while Robertson was at BYU, he worked as a biochemistry professor beginning in 1980, chaired BYU's Biochemistry Section in 1989, had a graduate student in his laboratory (Xie) who in 1989 “began working on the COX-2 collaborative research project with Dr. Simmons, ” “contributed to the COX-2 development, ”[79] “communicated” with BYU concerning COX-2, [80] and left BYU in 1995.[81] The allegations concerning his conduct after he left BYU are that Robertson was called to testify before a BYU committee tasked with dividing BYU's settlement funds between Simmons and Xie.[82] Then, in October 2013 and again in March 2014, he advised BYU that he believed he was a developer of COX-2 technology.[83]

         Though the Trust now argues in its briefing that these allegations show “Dr. Robertson performed under the contract by contributing to the development of COX-2 and allowing BYU to assume ownership of his developments, ”[84] none of Robertson's actions are alleged as conduct undertaken to fulfill his performance obligations under any contract.[85]The Trust has failed to plausibly allege the performance element of the breach of contract cause of action.

         B. Misappropriation of Trade Secrets Claim

         BYU contends the Trust's proposed claim for misappropriation of trade secrets fails on two grounds. First, BYU argues that under Utah's Survival Statute, Utah Code Annotated § 78B-3-107, the claim did not survive Robertson's death in August 2014. Second, BYU urges that even if the claim survived, it is time-barred under Utah's Uniform Trade Secrets Act, Utah Code Annotated § 13-24-1. The court concludes the trade secret claim survived Robertson's passing, but finds the claim is time-barred.

         1. The Misappropriation of Trade Secrets Claim Survived Robertson's Death

         BYU first argues the claim for misappropriation of trade secrets did not survive Robertson's passing because a “trade secret claim does not fit within Utah's survival statute, ” which BYU contends permits survival only of tort claims for personal injury to the person.[86]Because “[n]o personal injury claim is asserted, ” BYU argues the trade secret claim necessarily extinguished upon Robertson's death. But BYU fails to address whether a trade secret claim survives death under the common law-obviating the need for reliance on the survival statute. A review of Utah law on survival of claims leads the court to conclude Robertson's trade secret claim survived his death.

         At common law, some tort claims survived the death of the claimant or tortfeasor, while others did not. “Personal” tort actions for injuries to the person-“‘such as assault, battery, false imprisonment, [and] slander'”-abated on death.[87] But “tort claims for property damage or conversion survive[d].”[88] “The rationale for this distinction is ‘that the reason for redressing purely personal wrongs ceases to exist either when the person injured cannot be benefited by a recovery or the person inflicting the injury cannot be punished, whereas, since the property or estate of the injured person passes to his personal representatives, a cause of action for injury done to these can achieve its purpose as well after the death of the owner as before.'”[89]

         Utah's Survival Statute, Utah Code Annotated § 78B-3-107, abrogates the common law rule to permit the survival of personal injury actions that would otherwise have abated under the common law even if the claimant or tortfeasor dies:

A cause of action arising out of personal injury to a person, or death caused by the wrongful act or negligence of a wrongdoer, does not abate upon the death of the wrongdoer or the injured person. The injured person, or the personal representatives or heirs of the person who died, has a cause of action against the wrongdoer or the personal representatives of the wrongdoer for special and general damages, subject to Subsection (1)(b).[90]

         BYU incorrectly argues that a claim outside Utah's Survival Statute-i.e., a claim other than for injury “to a person”-must be dismissed upon the passing of the claimant or tortfeasor. This is not so. A claim outside the Survival Statute is simply not subject to its terms, including its abrogation of the common law abatement of personal injury actions and its limitation in certain circumstances of the potential damages available when a personal injury claimant dies of causes unrelated to the personal injury.[91] The relevant question for such a claim becomes merely whether the claim would survive death under the common law-rendering superfluous any survival statute analysis.

         BYU's argument presumes a trade secret claim is not a claim for personal injury. This appears to be correct, as the Trust argues in its Reply Memorandum in Support of Motion for Leave to File Amended Cross Claims.[92] Where this is so, Utah's Survival Statute has no application to the Trust's trade secret claim. This is because, as noted above, claims for property damage or conversion survive under the common law, and require no survival statute to remedy any injustice resulting from the claimant's or tortfeasor's death. And BYU offers no authority to suggest that under the common law, a trade secret claim would not survive death for the same reason a claim for property damage or conversion would.

         The sole case BYU cites on the survival issue, Allred v. Soloray, Inc., [93] fails to advance BYU's position. In Soloray, the court grappled with whether claims brought under the Americans with Disabilities Act survive the death of the claimant. It concluded they do not, noting the ADA contains no provision addressing survival of claims.[94] The court next considered whether the claims would nevertheless survive under the common law, concluding they would not, as they are penal in nature, and claims for penalties “abate[] upon the death of the plaintiff.”[95] Where the claim would have abated at common law, the court next evaluated whether Utah's Survival Statute would save the ADA claims. It interpreted the statute to permit survival only of personal injury claims for injuries to the person-i.e., physical injuries-“as opposed to [the plaintiff's] claims for injury to his rights, reputation or property.”[96] For those reasons, the court dismissed the ADA claims.

         In short, the Soloray court concluded the claims at issue there would have abated under common law, thus requiring an applicable survival statute to avoid dismissal. BYU offers no common law analysis of the trade secret claim at issue here; and in any event, the trade secret claim appears akin to one for property damage or conversion, rather than one for personal injury.

         BYU has not established the Trust's proposed trade secret claim abated under the common law. The Trust has persuasively argued it would not. Where this is so, the Survival Statute provides no grounds for dismissal of the claim.

         2. The Misappropriation of Trade Secrets Claim is Time-Barred

         In its proposed claim for misappropriation of trade secrets, the Trust alleges Robertson's contributions to COX-2's development were trade secrets, that these secrets were communicated to persons owing confidentiality duties under BYU's IP Policies -BYU, Simmons, Xie, and others-but that those secrets were nevertheless disclosed to Monsanto and Pfizer in their development of Celebrex, leading to the $450 million settlement in 2012.[97] The Trust claims BYU has not paid Robertson or the Trust for this use of the trade secrets.[98]

         BYU argues the claim-proposed in December 2015-is time-barred under the three-year statute of limitations set forth in Utah's Uniform Trade Secret Act, Utah Code Annotated § 13-24-1, et seq. “While the statute of limitations is an affirmative defense, ” application of a limitation period “may be appropriately resolved on a [Rule] 12(b)(6) motion” when “dates given in the complaint make clear that the right sued upon has been extinguished . . . .”[99]

         Utah's Uniform Trade Secret Act provides three years within which to bring a ...


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