Petroleum Analyzer Company LP v. Olstowski, No. 01-09-00076-CV (Tex. App. 3/4/2010)
| Decision Date | 04 March 2010 |
| Docket Number | No. 01-09-00076-CV.,01-09-00076-CV. |
| Parties | PETROLEUM ANALYZER COMPANY LP, Appellant, v. FRANEK OLSTOWSKI, INDIVIDUALLY, AND DBA ATOMIC ANALYTICAL CONSULTING SERVICES AND ATOM INSTRUMENT CORPORATION, Appellees. |
| Court | Texas Court of Appeals |
On Appeal from the 269th District Court, Harris County, Texas, Trial Court Cause No. 2006-53995.
Panel consists of Chief Justice RADACK, and Justices ALCALA, and HIGLEY.
Appellant, Petroleum Analyzer Company LP (PAC), appeals the order of the trial court confirming an arbitration award and final judgment in favor of appellee, Franek Olstowski, and a summary judgment in favor of appellee, Atom Instrument Corporation (Atom).
Through its first, third, and fourth issues,1 PAC contends the trial court erred when it granted Atom's no-evidence motion for summary judgment because (1) the trial court granted Atom's motion for summary judgment before Atom had filed an answer to PAC's original petition, (2) Atom's motion for summary judgment is "predicated solely on the doctrine of res judicata" and the trial court erred by granting a summary judgment based on an affirmative defense that was never pleaded, and (3) the lawsuit between PAC and Atom had been stayed by the trial court.
In its second issue, PAC contends the trial court erred when it granted attorney's fees to Atom in conjunction with granting Atom's summary judgment. In its fifth issue, PAC argues that the trial court erred in granting Olstowski's motion to compel arbitration, and in its sixth issue PAC contends the trial court erred in confirming and not vacating the arbitration award.
We affirm.
This appeal arises from an ownership dispute as to certain patents and other intellectual property related to excimer lamp technology, and a dispute as to Olstowski's right to control the excimer lamp technology he designed while employed as a consultant for PAC and other companies. PAC contends Olstowski breached a consultant and non-disclosure agreement by applying for patents for this technology and by sharing and attempting to sell the technology to PAC's competitors and customers.
In June 2001, Antek Instruments, L.P. (now owned by PAC) retained Olstowski as a consultant to provide "services for research, development and testing of products and/or technologies that may be incorporated into products or services provided by [Antek]." This arrangement was memorialized by a "Consultant Agreement" signed by Olstowski and Jay Szinyei, then Antek's Manager of Engineering. The Consultant Agreement expressly required that it may not be modified except by a writing signed by both parties.
Antek knew that, while Olstowski worked on projects for Antek, he was also a consultant for other companies that produced petroleum products. The Consultant Agreement, therefore, defined a non-exclusive relationship for Olstowski to provide personal services to Antek. Pursuant to the Consultant Agreement, "[a]ll [c]onfidential [i]nformation, technology, prototypes, and products developed by [Olstowski] while providing service for Antek [would] be the exclusive property of Antek."
According to Szinyei, the principal drafter of the Consultant Agreement, the agreement covered individual projects assigned to Olstowski by Antek. This limitation of the scope of the services enabled Antek to control the amount of time expended by Olstowski on projects and thereby control Antek's expenses. Thus, the Consultant Agreement required that Olstowski be assigned each consultant project. After being assigned a consultant project, any information, technology, prototypes, or products developed by Olstowski while providing such service then became the exclusive property of Antek.
In March 2002, Olstowski informed Szinyei about his idea to develop an excimer light source specifically intended to measure sulfur using ultraviolet (UV) fluorescence. Thereafter, Olstowski told Tom McMullen, Antek's president, and Szinyei about his idea. Antek did not want to assume the risk of investing its resources into the excimer technology, and decided that Olstowski could pursue the project on his own time. Antek informed Olstowski of this decision. Olstowski was also told that if he was successful in his research, Antek would be interested in talking with Olstowski about using the excimer technology in its equipment and requested "first dibs" on considering whether to license the technology.
The Consultant Agreement was never modified in writing and Olstowski was never assigned to work on excimer technology as an Antek or PAC project. Antek had specifically discussed modifying the consultant agreement through a "carve out" agreement that stated the excimer project was not being done pursuant to the Consultant Agreement; however, a "carve out" agreement never materialized.
By December 2002, Olstowski had developed the excimer technology. Although Olstowski developed the excimer technology on his own time and with his own money in his own laboratory, Olstowski performed tests and generated data on the excimer technology using PAC employees and equipment.
On December 27, 2002, in his own name and with his own lawyer, Olstowski filed a patent application titled "Excimer UV Fluorescence Detection." Olstowski then informed Antek that he had filed a patent application, and that Antek, as required by the 2001 Consultant Agreement, would need to sign a non-disclosure agreement with him before he would disclose his excimer technology to them. Antek did not object to Olstowski's filing of the patent application.
On January 28, 2003, Antek and Olstowski entered into a Mutual Non-Disclosure Agreement (MNDA) for Olstowski to conduct a feasibility study to investigate the possibility of incorporating the Olstowski Excimer Technology into the Antek Technology, or to use the Olstowski Excimer Technology to develop new products for Antek. The MNDA states:
WHEREAS, OLSTOWSKI has developed technology using excimer lamps and can detect substances using excimer fluorescence (hereafter "Olstowski Technology"); and
WHEREAS, ANTEK had developed products for detecting substances (hereafter "Antek Technology"), but has not developed and does not possess technology to detect substances using excimer fluorescence as embodied in the Olstowski Technology; and
WHEREAS, ANTEK is desirous to conduct a feasibility study in association with OLSTOWSKI to investigate the possibility of incorporating the Olstowski Technology into the Antek Technology, or to use the Olstowski Technology to develop new products (hereafter "Project").
. . . .
If either Party brings an action to enforce the terms hereof, the prevailing Party in such action shall be entitled to reasonable attorney's fees. . . . Any controversy or claim arising out of or relating to this Agreement will be submitted to final and binding arbitration with the American Arbitration Association in accordance with the Commercial Arbitration Rules. Judgment upon an award rendered by the arbitrator may be entered in and by any court having jurisdiction.
In the latter half of 2003, Antek and Olstowski negotiated a license agreement for Antek to license the excimer and related technology from Olstowski. Proposed licensing agreements were exchanged for over three years while Olstowski continued to work with PAC under the Consultant Agreement, MNDA, and later an additional Non-Disclosure/Non-Use Agreement (NDNUA). In 2004, Antek became a subsidiary of PAC.
In March 2005, PAC and Olstowski entered into the NDNUA, signed by PAC's president, McMullen. Under the NDNUA, Olstowski agreed to continue to disclose his excimer technology to PAC, and PAC, in turn, promised to keep the Olstowski Technology secret and promised not to use the Olstowski Technology. The NDNUA stated in part:
In order that we may be more free and open with you, it is necessary to have your promise that you and your employer, if any, will not use or divulge any confidential business information or proprietary designs, processes, algorithms, machines, drawings, technical information or trade secrets which may be provided you by Franek Olstowski for the particular field hereafter defined. [D]efining the field applicable to this Agreement . . . excimer lamps or the detection of substances using excimer fluorescence and the like.
. . . .
This Agreement controls over any prior written agreements.
. . . .
Any controversy or claim arising out of or relating to this Agreement will be submitted to final and binding arbitration with each party selecting an arbitrator, and the two party-appointed arbitrators selecting a neutral arbitrator. The arbitration shall be conducted under the Federal Arbitration Act because the parties agree that interstate commerce is affected, further the parties acquiesce to the jurisdiction of the U.S. District Courts and a judgment upon an award rendered by the arbitrators may be entered in and by the U.S. District court.
Olstowski provided confidential information to PAC pursuant to the NDNUA.
Eventually, the relationship between PAC and Olstowski soured and discussions about a licensing agreement between the two parties broke down. In August 2006, Antek, PAC, and their attorneys informed Olstowski that Antek or PAC claimed ownership in the excimer technology. PAC and Olstowski then asserted conflicting claims as to the ownership of the excimer technology.
In August 2006, PAC filed suit against Olstowski and Atom, Olstowski's consulting company, alleging claims for declaratory relief, tortious interference with continuing business relations, conversion of intellectual property, breach of oral contract, attorney's fees, restitution/unjust enrichment, fraudulent inducement, and negligent misrepresentation. PAC also requested a...
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