Beus Gilbert PLLC v. Brigham Young University et al
MEMORANDUM DECISION AND ORDER GRANTING IN PART AND DENYING IN PART 312 DONALD L. ROBERTSON TRUSTS MOTION TO DISMISS BYUS CROSSCLAIM FOR DECLARATORY RELIEF. Signed by Judge Ted Stewart on 10/5/2021. (reb)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH
MEMORANDUM DECISION AND
ORDER GRANTING IN PART AND
DENYING IN PART DONALD L.
ROBERTSON TRUST’S MOTION TO
DISMISS BYU’S CROSSCLAIM FOR
BEUS GILBERT PLLC,
BRIGHAM YOUNG UNIVERSITY,
WEILIN XIE, DANIEL L. SIMMONS,
AND DONALD L. ROBERTSON TRUST,
Case No. 2:12-CV-970-TS-CMR
District Judge Ted Stewart
This matter is before the Court on the Donald L. Robertson Trust’s Motion to Dismiss
Brigham Young University’s (“BYU”) Crossclaim for Declaratory Relief. For the reasons
discussed below, the Court will grant the Motion in part and deny it in part.
In 1992, BYU biochemists discovered the COX-2 enzyme. After BYU communicated its
discovery to Pfizer, Pfizer developed Celebrex, a nonsteroidal anti-inflammatory drug. In 2006,
BYU sued Pfizer for misappropriation of trade secrets, and the parties settled in 2012. 1 BYU’s
counsel, Beus Gilbert PLLC, received $450 million from Pfizer as part of the settlement (the
“Settlement Funds”). Of the $450 million, Beus Gilbert allocated 55% of the funds to BYU and
45% to be distributed to the biochemists responsible for the discovery. BYU’s 2001 Intellectual
Property Policy (the “2001 Policy”) and corresponding university administrative procedures
determined that Dr. Weilin Xie and Dr. Daniel L. Simmons were the developers of the COX-2
enzyme. Subsequently, Dr. Donald L. Robertson claimed he was also entitled to a portion of the
Brigham Young Univ. v. Pfizer, No. 2:06-cv-00890-TS.
Settlement Funds. Because of multiple disputes regarding the allocation of Settlement Funds,
Beus Gilbert filed an interpleader action against BYU, Xie, and Simmons in 2012, 2 and against
Robertson in 2014. 3 Robertson then asserted crossclaims against BYU. 4 Robertson has since
passed away and his successor in interest, the Donald L. Robertson Trust (the “Trust”) was
substituted as a party to the case.
The current dispute first arose from the Trust’s motion for leave to file amended
crossclaims. 5 In that motion the Trust asserted three amended crossclaims: first, that BYU
breached its employment contract with Robertson under the Intellectual Property Policy effective
from 1989 to 1992 (the “1992 Policy”); second, that BYU breached its contract with Robertson
under the 2001 Policy, which was used to distribute Settlement Funds to Simmons and Xie; and
third, misappropriation of trade secrets.
BYU argued that the Trust’s amended crossclaims were futile and warranted dismissal.
This Court, per the Honorable Robert J. Shelby, agreed and denied the Trust’s motion for leave
to file amended crossclaims. The Trust appealed Judge Shelby’s order to the Tenth Circuit Court
The Tenth Circuit affirmed Judge Shelby’s order in part and reversed it in part. 6 The
Tenth Circuit held that the Trust plausibly asserted a crossclaim against BYU for breach of
Docket No. 1.
Docket No. 105.
Docket No. 116.
Docket No. 218.
Beus Gilbert PLLC v. Donald L. Robertson Trust, No. 20-4061, 2021 WL 1712573
(10th Cir. Apr. 30, 2021).
contract under the 1992 Policy and remanded for further proceedings. However, the Tenth
Circuit stated that the Court properly denied the Trust’s crossclaim for breach of contract under
the 2001 Policy and its claim for misappropriation of trade secrets. Specifically, the Tenth
Circuit held that the Trust did not have a valid breach of contract claim under the 2001 Policy
because Robertson was no longer employed by BYU at the time it adopted the 2001 Policy.
On remand the Trust filed its amended crossclaim against BYU for breach of contract
under the 1992 Policy. BYU answered asserting affirmative defenses and crossclaims for
declaratory relief. The Trust now moves to dismiss BYU’s crossclaims. The Trust argues: (1)
BYU’s crossclaims improperly mirror its affirmative defenses; (2) BYU’s arbitration crossclaim
based on the 2001 Policy is implausible because the Court previously dismissed the breach of
contract claim under the 2001 Policy; and (3) BYU’s crossclaim seeking a declaration of which
version of the Intellectual Property Policy applies to this case is asking the Court for an improper
advisory opinion. 7
STANDARD OF REVIEW
A motion to dismiss pursuant to Fed. R. Civ. P. 12(b)(6) alleges that the pleadings fail “to
state a claim upon which relief can be granted.” 8 Courts must consider all well-pled allegations
in the complaint as true and must construe all factual allegations in the light most favorable to
the plaintiff. 9 To survive a motion to dismiss, a plaintiff must nudge his or her claim “across the
line from conceivable to plausible.” 10 Plausibility requires “more than an unadorned, the-
Docket No. 312.
Fed. R. Civ. P. 12(b)(6).
Albright v. Oliver, 510 U.S. 266, 268 (1994).
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 569 (2007).
defendant-unlawfully-harmed-me accusation.” 11 “A pleading that offers ‘labels and conclusions’
or ‘a formulaic recitation of the elements of a cause of action will not do.’ Nor does a complaint
suffice if it tenders ‘naked assertion[s]’ devoid of ‘further factual enhancement.’” 12
In considering a motion to dismiss, a district court not only considers the complaint “but
also the attached exhibits,” 13 the “documents incorporated into the complaint by reference, and
matters of which a court may take judicial notice.” 14 Courts “may consider documents referred to
in the complaint if the documents are central to the plaintiff’s claim and the parties do not
dispute the documents’ authenticity.” 15
Federal courts have broad discretion in granting or denying declaratory relief. 16 The
Declaratory Judgment Act provides that “[i]n a case of actual controversy within its jurisdiction .
. . any court of the United States, upon the filing of an appropriate pleading, may declare the
rights and other legal relations of any interested party seeking such declaration, whether or not
further relief is or could be sought.” 17 The Declaratory Judgement Act is “an authorization, not a
command.” 18 It gives “the federal courts competence to make a declaration of rights,” but does
“not impose a duty to do so.” 19
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
Id. (quoting Twombly, 550 U.S. at 555, 557) (alteration in original).
Commonwealth Prop. Advocates, LLC v. Mortg. Elec. Registration Sys., Inc., 680 F.3d
1194, 1201 (10th Cir. 2011).
Tellabs, Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308, 322 (2007).
Jacobsen v. Deseret Book Co., 287 F.3d 936, 941 (10th Cir. 2002).
Wilton v. Seven Falls Co., 515 U.S. 277, 289-90 (1995).
28 U.S.C. § 2201(a).
Pub. Affairs Assocs., Inc. v. Rickover, 369 U.S. 111, 112 (1962).
The Tenth Circuit has identified five factors (the “Mhoon factors”) courts should consider
when deciding whether to hear a declaratory judgment action:
 whether a declaratory action would settle the controversy;  whether it would
serve a useful purpose in clarifying the legal relations at issue;  whether the
declaratory remedy is being used merely for the purpose of “procedural fencing” or
“to provide an arena for a race to res judicata”;  whether use of a declaratory
action would increase friction between our federal and state courts and improperly
encroach upon state jurisdiction; and  whether there is an alternative remedy
which is better or more effective. 20
The Trust moves to dismiss BYU’s following crossclaims for declaratory relief: (1) that
the Trust is estopped from asserting any crossclaims against BYU; (2) that the Trust is barred by
one or more of the doctrines of laches, waiver, and failure to perform contractual obligations; (3)
that BYU is entitled to use arbitration procedures set forth in the 2001 Policy to determine
allocation of the Settlement Funds; and (4) a declaration of which Intellectual Property Policy, if
any, is enforceable in this dispute.
After weighing the Mhoon factors, the Court concludes that it will not exercise its
discretion over the first, second, and third crossclaims and will grant the motion to dismiss them.
However, the Court will exercise its discretion to consider the fourth crossclaim to declare which
Intellectual Property Policy, if any, is enforceable in this dispute. Accordingly, it will deny the
motion to dismiss the fourth crossclaim.
A. FIRST AND SECOND CROSSCLAIMS
In its first and second crossclaims, BYU seeks (1) a declaration that the Trust has no
enforceable claim under the doctrine of equitable estoppel, and (2) a declaration that any of the
State Farm Fire & Cas. Co. v. Mhoon, 31 F.3d 979, 983 (10th Cir. 1994) (citation
Trust’s claims are barred by one or more of the doctrines of laches, waiver, and failure to
perform contractual obligations.
The Trust argues these crossclaims improperly mirror BYU’s affirmative defenses for
denial of allegations, estoppel, laches, waiver, statute of limitations, lack of enforceable contract
due to indefiniteness, failure to perform contract obligations, and the right to raise additional
defenses and amend this answer.
BYU responds by arguing that its crossclaims for declaratory relief would clarify
“whether bars to the Trust’s alleged rights under the [Intellectual Property] Policy (estoppel,
laches, waiver, and failure to perform) would justify BYU in terminating ongoing internal policy
procedures because any future outcome would be irrelevant.” 21
This Court agrees with the Trust. BYU’s first and second crossclaims are redundant since
they mirror the affirmative defenses. The issue of whether the Trust’s breach of contract claim
would be precluded by estoppel, laches, waiver, or failure to perform contractual obligations will
be addressed in the course of litigation through BYU’s affirmative defenses and would render the
crossclaims moot. Other courts have dismissed a defendants’ declaratory judgment counterclaim
where it merely reiterated their other defenses: “Put simply, there is no need for this
counterclaim. If the Defendants prevail on any one of their remaining defenses, judgment will be
in favor of Defendants.” 22 The Court finds this reasoning persuasive.
Although granting BYU’s declaratory judgment for estoppel, laches, waiver, and failure
to perform contractual obligations may settle the Trust’s breach of contract claim and may even
Docket No. 313, at 16.
United States v. Land O’Lakes, Inc., No. CIV-16-170-R, 2017 WL 706346, at *11
(W.D. Okla. Feb. 22, 2017); see also Sprint Nextel Corp. v. Middle Man, Inc., No. 12-2159-JTM,
2013 WL 1197137, at *2 (D. Kan. Mar. 25, 2013).
“serve a useful purpose in clarifying the legal relations at issue,” BYU’s affirmative defenses
provide an “alternative remedy that is better [and] more effective” than declaratory judgment. 23
The resolution of the case itself will make BYU’s declaratory action unnecessary. For this
reason, the Court will not exercise its authority to issue declaratory judgment on BYU’s first and
second crossclaims. However, the issues of estoppel, laches, waiver, and failure to perform
contractual obligations will remain as BYU’s affirmative defenses.
B. THIRD CROSSCLAIM
BYU also asserts a crossclaim seeking a declaration that BYU is entitled to use
arbitration procedures set forth in the 2001 Policy to determine allocation of the Settlement
The Trust argues that because the Court and the Tenth Circuit previously concluded that
there was no plausible contract between BYU and Robertson under the 2001 Policy, the 2001
Policy has been dismissed from this case. The Trust further argues that the Tenth Circuit already
considered the facts asserted by BYU and found them insufficient to support applicability of the
2001 Policy in this case.
In response, BYU argues that neither Judge Shelby nor the Tenth Circuit reviewed or
ruled on BYU’s declaratory judgment in any fashion; Judge Shelby and the Tenth Circuit only
held that the Trust had not alleged a breach of contract claim under the 2001 Policy.
Additionally, BYU argues that because it was not provided an opportunity to submit evidence or
make factual assertions, the Trust’s claim that the Tenth Circuit entirely “dismissed” the 2001
Policy from the case is inaccurate.
Mhoon, 31 F.3d at 983.
Here, the law-of-the-case doctrine supports a finding in favor of the Trust. The law-ofthe-case doctrine bars re-litigation of issues already settled by an appellate court. 24 “It is well
settled that all matters decided on appeal become the law of the case to be followed in all
subsequent proceedings in both the trial and appellate court.” 25 The doctrine “applies where the
evidence is substantially the same on both trials. It does not have application if the evidence on
the subsequent trial presents a materially different situation” 26 In the interest of judicial
efficiency, the doctrine “is designed to bring about a quick resolution of disputes by preventing
continued re-argument of issues already decided.” 27
The law-of-the-case doctrine applies to issues resolved implicitly and explicitly. 28
Generally, there are three circumstances where a court might conclude that an issue was
implicitly resolved in an earlier appeal: (1) resolution of the issue was a necessary step in
resolving the earlier appeal; (2) resolution of the issue would abrogate the prior decision and so
must have been considered in the prior appeal; and (3) the issue is so closely related to the earlier
appeal its resolution involves no additional consideration and so might have been resolved but
The first factor is inapplicable here. The Tenth Circuit dismissal of the Trust’s breach of
contract claim under the 2001 Policy did not rely on the enforcement of the 2001 Policy dispute
Gen. Motors Acceptance Corp. v. Mid-West Chevrolet Co., 74 F.2d 386, 388 (10th Cir.
Id. (citations omitted).
Id. (citations omitted).
Gage v. Gen. Motors Corp., 796 F.2d 345, 349 (10th Cir. 1986) (citations omitted).
McIlravy v. Kerr-McGee Coal Corp., 204 F.3d 1031, 1036 (10th Cir. 2000) (citations
Guidry v. Sheet Metal Workers Intern. Ass’n, Local No. 9, 10 F.3d 700, 707 (10th Cir.
resolution procedures to allocate the Settlement Funds. Thus, the issue in this case was not a
necessary element of the decision made by the Tenth Circuit.
The second and third factors bear more weight because “arbitration is a matter of contract
and a party cannot be required to submit to arbitration any dispute which he [or she] has not
agreed so to submit.” 30 To require a party to submit to arbitration there must an agreement to
arbitrate. 31 If the Court declares that Robertson and BYU must proceed with the dispute
resolution procedures detailed in the 2001 Policy, the Court would have to find that BYU and
Robertson had an enforceable contract under the 2001 Policy. This would abrogate the Tenth
Circuit’s prior decision. Additionally, because arbitration is a matter of contract, the issue of
whether the 2001 Policy’s dispute resolution procedures apply is closely related to whether BYU
and Robertson had a contract. If there was no enforceable contract between Robertson and BYU
under the 2001 Policy, then it follows that there was no agreement to arbitrate under the 2001
Under the law-of-the-case doctrine, the Tenth Circuit implicitly settled this controversy
when it dismissed the Trust’s claim for breach of contract under the 2001 Policy. The Tenth
Circuit’s holding necessarily means, by extension, that the dispute resolution procedures
described in the 2001 Policy do not govern this specific dispute with Robertson.
Although BYU argues that it asserts new factual allegations, the allegations and evidence
before this Court are substantially the same as before the Tenth Circuit. For example, BYU
alleges that it reasonably relied on Robertson’s consent to follow the 2001 Policy, thus rendering
AT&T Tech., Inc. v. Comm. Workers, 475 U.S. 643, 648 (1986) (citations omitted).
See First Options of Chicago, Inc. v. Kaplan, 514 U.S. 938, 943 (1995).
the arbitration procedures set forth in 2001 Policy binding. 32 This allegation was presented to the
Tenth Circuit, and to the contrary, the Court stated that “Dr. Robertson denied the binding nature
of the 2001 IP Policy and its procedures.” 33
The Tenth Circuit also addressed the Trust’s argument that “the 2001 IP Policy applies
because it was in effect when BYU received the settlement funds.” 34 However, the Tenth Circuit
rejected this, noting that “the Trust does not explain the relevance of this timing or say how Dr.
Robertson could have performed under a contract formed after he had left BYU.” 35
This Court is not persuaded that BYU presented materially or substantially new
allegations or evidence that would warrant a different conclusion. Although BYU argues that the
Tenth Circuit and Judge Shelby did not review or rule on its specific declaratory judgment claim,
the Tenth Circuit did rule on whether Robertson had plausibly alleged that he and BYU were
under a contract governed by the 2001 Policy. This holding still stands. If there was no contract
between Robertson and BYU under the 2001 Policy, then it follows that the 2001 Policy’s
dispute resolution procedures do not apply.
The Court will not use its discretionary powers to issue a declaration for BYU’s 2001
Policy arbitration procedures.
C. FOURTH CROSSCLAIM
In the alternative, BYU requests the Court to declare which Intellectual Property Policy,
if any, applies to this dispute. The Trust argues that seeking a declaration of which policy applies
is asking the court to enter an advisory opinion.
Docket No. 311, at 20.
Beus Gilbert PLLC, 2021 WL 1712573, at *4.
Id. at *4 n.4.
“It is well established that what makes a declaratory judgment action a proper judicial
resolution of a case or controversy rather than an advisory opinion is the settling of some dispute
which affects the behavior of the defendant toward the plaintiff.” 36 The Tenth Circuit has
consistently held “that the test for determining an actual controversy via declaratory judgment
proceedings is whether there is a controversy between the parties having adverse legal interests
of sufficient immediacy and reality to warrant issuance of declaratory judgment.” 37
Here, there clearly remains a live case and controversy regarding the allocation of the
Settlement Funds. The parties continue to dispute which policy, if any, is applicable. Because the
1992 and 2001 Policies contain distinct dispute resolution procedures, a declaration of which
version of the policy, if any, controls in this case will allow the parties to determine the proper
procedures to follow to allocate the Settlement Funds. This declaratory action will help settle the
dispute and clarify the legal relations at issue. 38 Thus, BYU has sufficiently pleaded its request
for declaratory action. The Court will not dismiss BYU’s crossclaim seeking a declaration of
which policy applies to this dispute.
It is therefore
ORDERED that Donald L. Robertson Trust’s Motion to Dismiss BYU’s Crossclaims for
Declaratory Relief (Docket No. 312) is GRANTED IN PART and DENIED IN PART as
Cox v. Phelps Dodge Corp., 43 F.3d 1345, 1348 (10th Cir. 1994) (citations and internal
quotation marks omitted).
Norvell v. Sangre de Cristo Dev. Co., Inc., 519 F.2d 370, 378 (10th Cir. 1975)
See Mhoon, 31 F.3d at 983.
DATED this 5th day of October, 2021.
BY THE COURT:
United States District Judge
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?