Cytogenix, Inc. v. William B. Waldroff and Applied Veterinary Genomics, Inc.

CourtCourt of Appeals of Texas
DecidedDecember 14, 2006
Docket01-05-00492-CV
StatusPublished

This text of Cytogenix, Inc. v. William B. Waldroff and Applied Veterinary Genomics, Inc. (Cytogenix, Inc. v. William B. Waldroff and Applied Veterinary Genomics, Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals of Texas primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Cytogenix, Inc. v. William B. Waldroff and Applied Veterinary Genomics, Inc., (Tex. Ct. App. 2006).

Opinion

Opinion to: SJR TGT SN TJ EVK ERA GCH LCH JB

Opinion issued December 14, 2006




In The

Court of Appeals

                         For The

                       First District of Texas


NO. 01-05-00492-CV


CYTOGENIX, INC., Appellant

V.

WILLIAM B. WALDROFF AND

APPLIED VETERINARY GENOMICS, INC., Appellees


On Appeal from the 11th District Court

Harris County, Texas

Trial Court Cause No. 2004-06834



O P I N I O N

In this technology licensing case, CytoGenix, Inc., appeals the trial court’s judgment and permanent injunction rendered in favor of appellees, William Waldroff and Applied Veterinary Genomics, Inc. (“AVGI”).  CytoGenix sued Waldroff and AVGI, seeking a declaration that two license agreements between CytoGenix and Waldroff are unenforceable.  AVGI and Waldroff counterclaimed for declaratory relief and breach of contract.  The jury found that CytoGenix breached the two agreements but awarded no damages.  The trial court then entered judgment, issuing a permanent injunction requiring specific performance of the two licensing agreements, and awarding attorney’s fees to Waldroff and AVGI.

We conclude that the trial court erred in entering a permanent injunction that requires specific performance of the licensing agreements because the agreements do not provide for specific performance or otherwise support specific performance by permanent injunction as a remedy.  We further conclude that the trial court erred in awarding attorney’s fees to Waldroff and AVGI because their claims for relief arise solely from breach of the licensing agreements, and the jury found no damages for breach of these agreements.  Finally, we conclude that CytoGenix is not entitled to its attorney’s fees upon reversal of the judgment against it.  We therefore reverse the judgment of the trial court and render judgment that the parties take nothing on their claims against each other.

FACTS AND PROCEDURAL HISTORY

The Parties and Their Dealings

CytoGenix, formerly known as Cryogenic Solutions, Inc., is a Houston-based public company engaged in genetic research and development.  At the time of the jury trial in February 2005, CytoGenix had yet to show a profit, develop a product for a clinical trial, or generate any significant revenue.  However, it owns a number of patents in the area of genetic technology. 

In 1996, CytoGenix became interested in developing gene silencing technology.  In particular, CytoGenix sought to develop single stranded DNA (“ssDNA”) that could control telomeres—the physical ends of linear chromosomes that play an important role in cell division—by controlling the enzyme telomerase.[1]  One of the goals of ssDNA research is to develop a pharmaceutical compound that will stop production of harmful proteins.  A necessary starting point for the research is the specific gene sequence for the cells under study, whether they are from animals, plants, bacteria, or viruses.

In 1998, Charles Conrad, a researcher who has developed an ssDNA expression vector, conveyed the right to use his technology to CytoGenix, together with a patent assignment.  Before that point, from late 1996 through 1998, Conrad provided consulting services to CytoGenix in its research endeavors.  While Conrad was consulting for CytoGenix, Mike Skillern, then CytoGenix’s president, approached Waldroff with a request for funding for Conrad’s research.  Skillern and Waldroff discussed the possibility that Conrad’s research could be useful for shrimp farms—either to prevent disease or to grow larger shrimp.  Waldroff paid CytoGenix $15,000 in exchange for an exclusive agreement to use its ssDNA technology in connection with crustaceans.  Later, Skillern prepared a similar agreement for horses and delivered it to Waldroff.  Waldroff contends that he invested another $20,000 into CytoGenix in exchange for the equine license.

After the parties executed the crustacean license, Waldroff ventured briefly into creating a shrimp farm on his land.  He bulldozed an area to build tanks.  He filled the tanks with seawater and placed live shrimp in them.  Unfortunately, the seawater heated to a temperature that was too hot for the shrimp and they died in three days.  Waldroff froze the shrimp and ate them, and later filled the tanks with dirt.  Waldroff testified that he would not have begun a shrimp farm had CytoGenix not granted a license to him. 

Eventually, Waldroff assigned his rights in the two licenses to AVGI.  AVGI was founded by Dell Gibson, who is also one of the founders of CytoGenix. Together with two other former CytoGenix board members, Gibson created AVGI to focus on potential veterinary applications arising from ssDNA technology.  At the time this case was tried, AVGI, CytoGenix, and some of their directors were embroiled in other litigation.  Malcolm Skolnick, the current chairman and president of CytoGenix, was at odds with Charles Boyd and Charles Bardwell, former CytoGenix directors who became directors of AVGI.  As Waldroff described it, despite his efforts to reconcile those involved, “the animosity flowed” between CytoGenix and AVGI. 

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