Gauthier v. Gauthier

2025 Ohio 501

• Court: Ohio Court of Appeals
• Decided: February 18, 2025
• Docket: CA2024-05-026
• Status: Published

Opinion

[Cite as Gauthier v. Gauthier, 2025-Ohio-501.]

IN THE COURT OF APPEALS

TWELFTH APPELLATE DISTRICT OF OHIO

WARREN COUNTY

SU KANG GAUTHIER, : CASE NO. CA2024-05-026 Appellee and Cross-Appellant, : OPINION : 2/18/2025 - vs - :

FORREST P. GAUTHIER, :

Appellant and Cross-Appellee. :

APPEAL FROM WARREN COUNTY COURT OF COMMON PLEAS DOMESTIC RELATIONS DIVISION Case No. 07 DR 31415

Robert A. Klinger Co, LPA, and Robert A. Klingler, for appellee.

Thomas E. Grossmann, for appellant.

M. POWELL, J.

{¶ 1} Appellant, Forrest Gauthier, appeals a decision of the Warren County Court

of Common Pleas, Domestic Relations Division, finding that his former wife and appellee,

Su Kang Gauthier, owes him $225,476.94, declining to award him a lump sum judgment

for the amount, and denying his motion for attorney fees. Su cross-appeals the trial Warren CA2024-05-026

court's denial of her contempt motion against Forrest.1

{¶ 2} The parties were divorced on March 3, 2009. At the time of the divorce,

Forrest was the "sole member" of Tesseron, Ltd., a corporate entity. Tesseron owned

multiple patents, had pending patent applications, and was in the process of developing

patents and completing patent applications for submission. The foregoing constituted the

Marital Patent Portfolio ("MPP"). Prior to their divorce being finalized, the parties entered

into a Full Text Separation Agreement ("FTSA"). The FTSA divided the parties' personal

and marital property and provided that Forrest retained ownership of Tesseron and

its assets, including the MPP.

{¶ 3} Section 7.5 of the FTSA established a fund of money (the "7.5. Funds ") to

be used to pay certain joint obligations of the parties. Specifically, Section 7.5(a) through

(d) provided that these funds be used to pay the parties' federal, state, and local income

tax obligations for the tax years 2006 through 2008, joint litigation expenses, and any

"outstanding Patent Costs." Section 7.5(e) further provided that any monies remaining

after the payment of the foregoing costs

will then be applied to any federal, state or local taxes attributable to the Funds which have not been paid under 7.5(a) such that any taxes attributable to the Funds are shared equally by the parties and then to Patent Costs. If the Funds are insufficient to make the payments required under this Paragraph 7.5(e), both parties will contribute equally to those payments.

{¶ 4} Section 7.5(c) of the FTSA defines Patent Costs as "any attorney fees,

expenses and/or costs related to the prosecution and/or maintenance of the Marital

1. On December 23, 2024, Su filed an affidavit with this court, averring that she has dismissed her counsel and acceding to all of Forrest's claims on appeal. Su's counsel responded with his own affidavit in which he rebuts Su's claims concerning his representation of her and questions the legitimacy of Su's affidavit as a product of her free will. Subsequently, Forrest, by and through counsel, has moved to strike Su's counsel's affidavit. The affidavits are not part of our appellate record, and we do not regard Su's affidavit as a motion to dismiss her cross-appeal. Therefore, we will not consider the affidavits for any purpose, rendering Forrest's motion to strike moot. -2- Warren CA2024-05-026

Patent Portfolio (including, but not limited to, patent maintenance fees paid to the U.S.

Patent Office)."2

{¶ 5} Tesseron licensed its patents and brought patent infringement actions and

other actions to enforce its patents and patent licensing. The licensing and enforcement

actions generated significant income. Pursuant to Section 7.11 of the FTSA, Su was

given the right to participate in such actions. Su's participation required that she

contribute to financing the actions and share in the proceeds from any successful actions.

Should Su not participate in the actions, she was entitled to 20 percent of the net proceeds

received by judgment, settlement, or license fees. Section 7.11(c) defines Net Proceeds

as "the Target Case Funds less attorney fees, and all costs and expenses related to or

attributable to the Target Case and Patent Costs."3

{¶ 6} Section 7.12 of the FTSA provided that "[i]n the event Forrest transfers all

or a portion of his ownership in the [MPP] to another person or entity, Forrest shall pay

Su, as a separate class of spousal support, a sum equal to 20% of the value of the

consideration Forrest receives for the transfer of the [MPP]." Section 7.12 further

provided that the trial court retained "continuing jurisdiction to determine the value of the

consideration Forrest receives for such transfer."

{¶ 7} Section 8.1 of the FTSA provided that any proceeds received by Su

pursuant to Sections 7.11 or 7.12 of the FTSA are considered spousal support. Section

2. Patent prosecution is a term of art. Lemkin v. Hahn, Loeser & Parks L.L.P., 2010-Ohio-2074, ¶ 15 (10th Dist.). It does not involve litigation. Rather, in patent prosecutions, "inventors submit applications to the [United States Patent and Trademark Office], an administrative agency, in which they can argue that their claimed inventions are novel and not obvious to a person with ordinary skill in the art. The PTO conducts a proceeding in which it either accepts or rejects the application; and, if the PTO rejects the application, the inventor has the right to appeal." United States v. Allergan, Inc., 46 F.4th 991, 996 (9th Cir. 2022).

3. Pursuant to Section 7.11 of the FTSA, a "Target" is a person or entity currently identified, or that may be identified in the future, against whom Tesseron may take action to enforce or license its MPP rights. Pursuant to Section 7.11(b) of the FTSA, a "Target Case" is Tesseron's pursuit of "patent infringement or licensing claims or litigation against a particular Target for enforcement of the [MPP] rights." -3- Warren CA2024-05-026

8.4 provided that other than as set forth in Sections 7.11 and 7.12, "the amount and terms

of the spousal support to be paid by Forrest to Su shall never be increased, altered,

modified or changed in any manner by any Court for any reason, and jurisdiction shall not

be reserved to any Court to make any such change[.]"

{¶ 8} In January 2010, the parties entered into an addendum agreement

("Addendum") to resolve disputes that had arisen regarding their rights and obligations

under several sections of the FTSA, including Sections 7.5 and 7.11. Pursuant to the

Addendum, Forrest paid Su the sum of $746,711.16, in consideration of which Su

relinquished certain rights under the FTSA. Specifically, Paragraph 6 of the Addendum

"expressly eliminate[d] any and all of Su's rights, claims, consideration and benefits set

forth in and arising out of Section 7.11 of the FTSA and replace[d] them solely and only

with the rights, claims, consideration and benefits set forth in" Paragraph 6 as follows:

Forrest shall pay to Su, as a separate class of spousal support, a sum equal to 20% of the Net Proceeds (as defined in Section 7.11(c) of the FTSA) received by Tesseron from a judgment, license or settlement received from any third party entity after the [Addendum's] Effective Date[.] . . . Su expressly waives any right to participate in any way whatsoever (e.g., no involvement in decision making on any level, no status updates, no participation in events, no financial recovery except as specifically set forth in this provision, no communications with parties, no communications with counsel, no review of documents, et cetera) in any future claims, licensing activities or litigation arising under any part of the [MPP] . . . against any third parties except for the receipt of monies specifically called for in this section.

{¶ 9} In other words, Paragraph 6 eliminates Su's rights to participate in patent

enforcement, infringement, and licensing proceedings under Section 7.11 of the FTSA.

In lieu of these rights, Su is entitled to 20 percent of the net proceeds received by

Tesseron from a judgment, license, or settlement with or from a third-party entity on or

after January 7, 2010, the Addendum's effective date. The Addendum did not replace or

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modify Section 7.12 of the FTSA.

{¶ 10} Tesseron subsequently assigned all right, title, and interest in the MPP to

Forrest, making him the record owner of the MPP. On June 28, 2013, in consideration of

$1,000,000, Forrest entered into an exclusive license agreement with Acacia Research

Group LLC ("ARG"), granting ARG "all substantial rights in and to the [MPP]." Following

disappointing results in patent litigation, Forrest terminated the exclusive license

agreement in 2019.

{¶ 11} The 7.5 Funds became depleted in 2013. On October 24, 2022, Forrest

sent a letter to Su, advising her that "as a continuation of" the 12 prior notices he had sent

her between February 4, 2015, and March 23, 2022, "this is the final status and reporting

notice of the MPP patent licensing program. I have decided to cease all efforts to license

or monetize any of the patents of the MPP. The reports included with this notice are the

final reports of the MPP Target Cases entered into since the 2010 Addendum." The letter

further stated that "the terms of the FTSA ¶7.5 and Addendum are clear, if the Funds are

insufficient to make the payments required under [¶7.5], both parties will contribute

equally to those payments," that "FTSA ¶7.5. requires your 50% contribution of payments

as they occur," that the 7.5 Funds "went into arrears in March, 2013 and . . . [y]ou were

repeatedly notified of the deficit and your obligation to pay your 50% share," and that Su's

outstanding liability of $225,476.94–her 50 percent share of Patent Costs incurred since

the depletion of the 7.5 Fund–was due immediately.

{¶ 12} On August 15, 2023, Forrest filed a contempt motion against Su, including

an allegation that she had failed to pay him her outstanding share of Patent Costs as

required under Section 7.5 of the FTSA. Forrest also moved for "all attorney fees . . .

incurred in this matter since December 1, 2010." Forrest successfully moved to transfer

the contempt proceedings back to the Domestic Relations Division of the Warren County

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Court of Common Pleas. The then sitting judge recused himself, and the Ohio Supreme

Court appointed a visiting judge to preside over the case.

{¶ 13} On January 9, 2024, Su filed a contempt motion against Forrest, including

an allegation that Forrest had failed to pay her 20 percent of the consideration he received

when he transferred his interest in the MPP to ARG as required under Section 7.12 of the

FTSA. The trial court conducted a hearing on Su's contempt motion on March 28, 2024,

and a hearing on Forrest's contempt motion on January 16, 2024.

{¶ 14} By decision and entry of January 30, 2024, the trial court ordered Su to pay

Forrest her outstanding share of Patent Costs under Section 7.5 of the FTSA. The court

found that the Addendum and Section 7.5 of the FTSA clearly stated that the Patent Costs

were an obligation of both parties–not solely Forrest. However, the trial court declined to

award a lump sum judgment in favor of Forrest for the amount owed based upon Forrest's

counsel's representation that the trial court lacked jurisdiction to do so and the lack of a

prayer for a lump sum judgment in Forrest's motion. The trial court deferred ruling on

Forrest's request for attorney fees pending resolution of Su's contempt motion.

{¶ 15} In March 2024, Forrest moved the trial court to issue a lump sum judgment

against Su for Patent Costs. Forrest asserted that the trial court did indeed have

jurisdiction to issue such judgment based upon additional research performed by

Forrest's counsel and because the FTSA was fully incorporated in the parties' divorce

decree. Su moved the trial court to reconsider its January 30, 2024 holding that she was

liable to Forrest for her share of Patent Costs. Su argued that (1) the Addendum

eliminated her responsibility for Patent Costs; (2) interpreting the FTSA as requiring Su

to pay any deficit accruing in the enforcement of patent rights was unconscionable

because it was contrary to the statutory definition and purpose of spousal support; and

(3) Forrest's claim for Patent Costs was barred by the eight-year statute of limitations in

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R.C. 2305.06. In particular, Su asserted that the statute began to run no later than

February 4, 2015, when Forrest demanded payment for Su's share of Patent Costs, and

expired eight years later, in February 2023. Su claimed that as Forrest filed his contempt

motion in August 2023, his Patent Costs claim was time-barred.

{¶ 16} On April 15, 2024, the trial court denied Su's contempt motion. The trial

court found that Forrest did not sell the MPP to ARG but only "granted a license to [ARG]

for its prosecution of the patents," and that therefore, Forrest did not violate Section 7.12

of the FTSA.

{¶ 17} By decision and final judgment entry of April 17, 2024, the trial court

addressed Forrest's motion for a lump sum judgment against Su for Patent Costs and

Su's motion for reconsideration. The trial court found that Su owed Forrest $225,476.94

for her share of Patent Costs. However, the trial court once again declined to award

Forrest a lump sum judgment for this amount because Forrest had previously taken the

position in a Hamilton County civil action against Su, that a domestic relations court lacks

subject-matter jurisdiction to render a lump sum judgment. The trial court found that

Forrest was therefore estopped from changing the prayer for relief in his contempt motion.

The trial court denied Forrest's request for attorney fees due to a lack of testimony from

qualified counsel as to the reasonableness of the hourly rate and the reasonableness and

necessity for the legal service rendered.

{¶ 18} The trial court rejected Su's claim on reconsideration that the Addendum

eliminated her responsibility for Patent Costs. The trial court reasoned that while the

Addendum modified Su's "rights, claims, consideration, and benefits" set forth in certain

sections of the FTSA, it did not modify her obligation under the FTSA to pay Patent Costs.

The trial court did not address Su's claim on reconsideration that its interpretation of the

FTSA was unconscionable. However, Su had made the argument in a memorandum in

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opposition to Forrest's contempt motion and the trial court rejected that argument in its

January 30, 2024 decision.

{¶ 19} The trial court agreed with Su that Forrest's Patent Costs claim was barred

by the statute of limitations in R.C. 2305.06. The trial court found that while the FTSA

was incorporated into the divorce decree, it was not merged into the decree and thus

"retained its character as a 'binding contract between the parties.'" The trial court found

that Forrest's Patent Costs claim was barred by the R.C. 2305.06 six-year statute of

limitations because Su's "dispute of the debt and her non-payment prior to 2015 [were]

the date that the cause of action accrued," and Forrest did not file his contempt motion

until August 15, 2023. Consequently, the trial court dismissed Forrest's Patent Costs

claim and vacated its finding that Su owed Forrest $225,476.94 for Patent Costs.

{¶ 20} Forrest now appeals, raising two assignments of error. Su cross-appeals,

raising two cross-assignments of error. Forrest's first assignment of error and Su's first

cross-assignment of error will be addressed together.

{¶ 21} Forrest's Assignment of Error No. 1:

{¶ 22} THE TRIAL COURT ERRED BY NOT ISSUING A JUDGMENT TO

FORREST FOR PATENT COSTS SU OWED UNDER THE FTSA.

{¶ 23} Su's Cross-Assignment of Error no. 1:

{¶ 24} THE TRIAL COURT ERRED IN FINDING THAT UNDER THE FTSA SU

GAUTHIER OWES FORREST GAUTHIER $225,476 FOR PATENT COSTS.

{¶ 25} In his first assignment of error, Forrest challenges the trial court's failure to

award him a $225,476.94 lump sum judgment for Su's share of Patent Costs, raising four

issues for review. Forrest's first three issues for review challenge the trial court's

dismissal of his Patent Costs claim as time-barred by the statute of limitations in R.C.

2305.06. Forrest's fourth issue for review challenges the trial court's dismissal of his

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Patent Costs claim on the ground of judicial estoppel.

{¶ 26} In her first cross-assignment of error, Su argues the trial court erred in

finding she owes Forrest $225,476.94 for her share of Patent Costs under the FTSA,

raising two issues for review. We note that while the trial court found that Su owes Forrest

"$225,476.94 as her portion of the costs related to the marital patents," the court ultimately

dismissed Forrest's Patent Costs claim as being barred by the statute of limitations,

thereby "vacating [Su's] obligation to pay patent enforcement expenses to [Forrest]."

Thus, there is nothing for Su to appeal regarding Patent Costs. Nevertheless, we address

her two issues for review as they have a bearing on our consideration of Forrest's first

assignment of error.

{¶ 27} In her first issue for review, Su argues that Section 7.5 of the FTSA is

unconscionable because it resulted in Su, "the supported spouse," owing Forrest, "the

supporting spouse," $225,476.94. As stated above, Section 8.1 of the FTSA provides

that any percentage received by Su under Sections 7.11 and 7.12 of the FTSA as a result

of settlements/judgments or consideration received by Forrest from transferring

ownership in the MPP to another entity, are considered spousal support. However, under

Section 7.5(e) of the FTSA, Su was equally responsible with Forrest for Patent Costs. Su

asserts it is unconscionable that she be indebted based upon an order for spousal support

because (1) the Patent Costs were all incurred after the parties' divorce and 2010

Addendum and accumulated between January 2011 and August 2017, (2) this was not

the result intended by the parties when they entered into the FTSA, and (3) she was at

the mercy of Forrest because he had complete and unilateral control over the MPP and

the Patent Costs.

{¶ 28} However, Su, who was represented by an experienced divorce attorney,

voluntarily entered into the FTSA. Su worked at Tesseron during the marriage and claims

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she helped Forrest build it. She was therefore familiar with the risks of patent litigation,

enforcement, and prosecution. The parties specifically chose for Forrest to pay spousal

support to Su based upon the formulas and terms set forth in the FTSA in lieu of the

standard spousal support method employed by domestic relations courts. Su

represented to the trial court, under oath, that the terms of the FTSA were complete, fair,

and acceptable to the parties. The trial court found that the FTSA was fair and equitable,

approved it, and incorporated it into the divorce decree. Subsequently, Su never

challenged it, including on the ground it was unenforceable or unconscionable. The

language of Section 7.5 is clear that Su's responsibility for Patent Costs under Section

7.5(e) is not part of the spousal support but a separate obligation. Pursuant to the

Addendum, and in consideration of $746,711.61, Su relinquished her right to participate

in patent enforcement, infringement, and licensing proceedings. Accordingly, Su's first

issue for review lacks merit and is denied.

{¶ 29} In her second issue for review, Su argues that the Addendum eliminated

any obligation she had under the FTSA to pay 50 percent of Patent Costs because the

Addendum neither mentions nor reinstates her obligation to pay Patent Costs.

{¶ 30} Section 7.5(e) of the FTSA requires the parties to contribute equally to the

Patent Costs should the 7.5 Funds become insufficient to pay for them. Though the

parties entered into the Addendum to resolve disputes that had arisen under the FTSA,

including Sections 7.5 and 7.11, the Addendum did not replace the FTSA and only

amended it as expressly set forth in the Addendum. Moreover, the Addendum was

entered in 2010, before any dispute related to Patent Costs had arisen. While Paragraph

6 of the Addendum amended Section 7.11 of the FTSA, it kept the definition of Net

Proceeds under the FTSA and specifically referenced Section 7.11(c) of the FTSA. That

provision defines Net Proceeds as the Target Cases Funds less attorney fees, costs and

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expenses, and Patent Costs. Therefore, the Addendum incorporated the parties' FTSA

obligation to contribute equally to the Patent Costs and neither relieved Su of her

obligation to so contribute nor terminated or eliminated her obligation. Accordingly, Su's

second issue for review lacks merit and is denied.

{¶ 31} Su's first cross-assignment of error is overruled.

{¶ 32} We now turn to Forrest's first assignment of error. In his first three issues

for review, Forrest argues that the trial court erred in dismissing his Patent Costs claim

as being time-barred by the statute of limitations in R.C. 2305.06.

{¶ 33} Relying upon the language of the FTSA and the 2009 divorce decree, the

trial court found that although the FTSA was incorporated into the divorce decree, it was

not merged into the decree and thus "retained its character as a 'binding contract between

the parties,'" thereby effectively treating Forrest's contempt motion as though it was a

claim for breach of contract.4 Consequently, the trial court found that Forrest's Patent

Costs claim was subject to the six-year statute of limitations for written contracts in R.C.

2305.06. Noting Forrest's 2015 demand for Su to pay her share of Patent Costs and Su's

awareness of her nonpayment "even before 2015," the trial court determined that "[Su's]

dispute of the debt and her non-payment prior to 2015 are . . . the date that the cause of

action accrued." As Forrest did not file his contempt motion until August 15, 2023, the

trial court held that his Patent Costs claim was barred by the six-year statute of limitations.

{¶ 34} Forrest asserts that the trial court (1) improperly applied the "discovery rule"

to a breach-of-contract claim, (2) erred in finding his Patent Costs claim was barred by

4. In finding that the FTSA was a written contract, the trial court implicitly found that though incorporated into the divorce decree, it was not also an order of the court. However, as the issue was not raised on appeal, we decline to address whether the FTSA became a court order upon its incorporation into the divorce decree. We further note that a domestic relations court, such as the trial court, has subject-matter jurisdiction to consider a claim for breach of a separation agreement and award a lump sum judgment for such a breach because it is within the domestic relations court's authority to enforce its decrees under R.C. 3105.65(B). - 11 - Warren CA2024-05-026

the six-year statute of limitations that became effective in 2021, and (3) erred in finding

that the cause of action accrued before 2015. A determination of when a cause of action

accrues is a matter of law, which we review de novo. Forest Hills Local School Dist. Bd.

of Edn. v. Huegel, 2008-Ohio-2414, ¶ 5 (12th Dist.). We address Forrest's second issue

for review first.

{¶ 35} The parties agree that the trial court correctly identified R.C. 2305.06 as the

applicable statute of limitations. R.C. 2305.06 currently provides, subject to certain

inapplicable statutory exceptions, that "an action upon a specialty or an agreement,

contract, or promise in writing shall be brought within six years after the cause of action

accrued." As relevant here, R.C. 2305.06 was amended in 2012 and again in 2021.

Specifically, the statute of limitations was changed to eight years on September 28, 2012,

and to six years on June 16, 2021. An editor's note to the 2012 amendment of the statute

provides that the limitations period for causes of action that accrued prior to the effective

date of the 2012 amendment "shall be eight years from the effective date of this act or

the expiration of the period of limitations in effect prior to the effective date of this act,

whichever occurs first." In turn, an editor's note to the 2021 amendment of the statute

provides that the limitations period for causes of action that accrued prior to the effective

date of the 2021 amendment "shall be six years from the effective date of this act or the

expiration of the period of limitations in effect prior to the effective date of this act,

whichever occurs first." See Tabbaa v. Nouraldin, 2022-Ohio-1172 (8th Dist.).

{¶ 36} The trial court determined that Forrest's Patent Costs claim accrued in 2015,

based upon his 2015 demand for payment, or before 2015, based upon Su's awareness

of her nonpayment prior to 2015. As the claim accrued before the 2021 amendment to

R.C. 2305.06 took effect, the eight-year statute of limitations applied, and the trial court

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erred in applying the six-year statute of limitations that became effective in 2021.5 See

Tabbaa; Rudolph v. Viking Internatl. Resources Co., Inc., 2017-Ohio-7369 (4th Dist.).

Forrest's second issue for review is well taken.

{¶ 37} Although the trial court did not use the phrase "discovery rule" in

determining when the cause of action accrued, it held that "'a cause of action does not

arise until the plaintiff knows or, by the exercise of reasonable diligence should have

known, that he or she has been injured by the conduct of the defendant,'" quoting Ault v.

Jasko, 1994-Ohio-376, ¶ 6. In its decision, the Ohio Supreme Court labels such rule as

the "discovery rule." However, Ault did not involve a breach of contract, but rather was a

case in which a 29-year-old plaintiff had sued her biological father, alleging he had

sexually abused her, beginning when she was 12 years old. Furthermore, no Ohio court

has applied the discovery rule to a claim for breach of contract. Cristino v. Bur. of

Workers' Comp., 2012-Ohio-4420, ¶ 41 (10th Dist.). See also Settles v. Overpeck

Trucking Co., 1993 Ohio App. LEXIS 6217, *3 (12th Dist. Dec. 27, 1993); Freelon v. GRG

Farms, Inc., 2024-Ohio-4764, ¶ 30, fn. 2 (6th Dist.). The trial court, therefore, erred in

applying the discovery rule in this case. Forrest's first issue for review is well taken.

{¶ 38} "Normally, a cause of action does not accrue until such time as the

infringement of a right arises. It is at this point that the time within which a cause of action

is to be commenced begins to run." State ex rel. Teamsters Local Union 377 v.

Youngstown, 50 Ohio St.2d 200, 203-204 (1977). Regarding contract claims, the Ohio

Supreme Court has held that "[a] cause of action for breach of contract does not accrue

until the complaining party suffers actual damages as a result of the alleged breach."

5. Forrest's Exhibit 21 indicates that the 7.5 Funds, from which Patents Costs were paid, was depleted in March 2013. Assuming, arguendo, that Forrest's Patent Costs claim accrued in March 2013, it accrued after the 2012 amendment to the statute of limitations, and thus, the eight-year statute of limitations would apply. - 13 - Warren CA2024-05-026

Kincaid v. Erie Ins. Co., 2010-Ohio-6036, ¶ 13. "Until [a party] refuses to pay a claim for

a loss, [the other party] has suffered no actual damages for breach of contract . . . ." Id.

Stated otherwise, a cause of action for breach of contract accrues when the contract is

violated and actual damages occur. Cadle Co. II, Inc. v. HRP Auto Ctrs., Inc., 2004-Ohio-

6292, ¶ 10 (8th Dist.).

{¶ 39} Forrest argues that the cause of action accrued on December 16, 2015,

when he first invoiced Su for her share of Patent Costs and Su did not pay or, alternatively,

on October 24, 2022, when "Su's MPP Net Proceeds were applied to her Patent Costs

debt, all remedies of the FTSA were exhausted, and the final total amounts she owed

were known." In support of the latter date, Forrest relies on the "delayed injury" rule

pursuant to which, where damages from a breach of contract evolve over time, the cause

of action only accrues once the aggrieved party can ascertain the full extent of the

damages. Forrest cites Midwest Specialties, Inc. v. Firestone Tire & Rubber Co., 42 Ohio

App.3d 6 (9th Dist. 1988) (statutory period in an action for the entire breach of the contract

should be calculated from the time the plaintiff was first able to sue for an entire breach

of the contract); and Zink v. Harp, 1991 Ohio App. LEXIS 5011 (12th Dist. Oct. 21, 1991)

(cause of action accrued not when a storage tank was left underground in breach of

contract but when the aggrieved party was forced to have it removed at his own expense

14 years later).

{¶ 40} Su argues that Forrest suffered actual damages, and thus the cause of

action accrued, on March 11, 2013, when the 7.5 Funds was depleted and Forrest made

up the deficit from his own funds and paid her share of the deficit. Alternatively, Su argues

that even if the "continuing breach" exception to the general rule of accrual of the statute

of limitations applies here, "any discrete breaches that occurred more than 8 years before

August 15, 2023–that is, before August 15, 2015–are outside the statute of limitations

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and cannot be recovered." Should this court find that some of Forrest's claims were timely

filed, Su asks that the case be remanded to the trial court for further proceedings because

it is impossible from the record to determine the status of the 7.5 Funds on any given

date.

{¶ 41} In finding that Su owed Forrest for her share of Patent Costs, the trial court

relied on Forrest's Exhibits 20 and 21. Exhibit 20 is a letter Forrest sent to Su on October

24, 2022, advising her that this was "the final status and reporting notice of the MPP

patent licensing program," that "the MPP licensing program is concluded, the Patent

Costs are paid, your share of the Net Proceeds is determined," and that Su's outstanding

share of Patent Costs in the amount of $225,476.94 was due immediately. Exhibit 20

further stated,

On multiple occasions I provided you . . . with the documentation of the disbursements of FTSA ¶7.5 Funds, [providing] to you the invoices and the proof of payment as required by the terms of the FTSA. The fund went into arrears in March 2013 and your 50% contribution was progressively due immediately as payments were made. You were repeatedly notified of the deficit and your obligation to pay your 50% share.

{¶ 42} Forrest testified that Su never objected to or challenged Exhibit 20. He also

testified that he periodically asked Su to contribute to the Patent Costs after the 7.5 Funds

was depleted, that Su never responded to his requests or paid her share of Patent Costs,

and that he subsequently paid all the Patent Costs to maintain the viability of the MPP.

Forrest also stated that following their divorce, he regularly provided Su with general

status reports regarding patent litigation, that these reports usually came with the invoices

for Patent Costs, and that some notices did not include invoices. Exhibit 20 indicates that

Forrest sent Su 12 "notices," beginning on February 4, 2015. The record does not

indicate when Forrest first invoiced Su for her share of Patent Costs. However, as stated

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above, Forrest argues he first invoiced Su for her share of Patent Costs on December 16,

2015. Exhibit 20 indicates that Forrest's second notice to Su was sent on December 16,

2015.

{¶ 43} Exhibit 21 is a report from Forrest's accountant at the conclusion of the MPP

licensing program. Exhibit 21 lists Patent Costs between January 2011 and August 2017

and Patent Reexamination Costs between September 2013 and October 2015. Forrest

testified that the Patent Costs for which he and Su were equally responsible included

patent reexamination costs. Such costs are related to patent prosecution as this term of

art is understood, and not to patent litigation, and are incurred when an individual or entity

files an ex-parte request with the USPTO to reexamine the validity of a patent. Exhibit 21

shows that the 7.5 Funds was first depleted on March 11, 2013, with a total deficit of

$12,488.63, making Su's share of the deficit $6,244.32; that the 7.5 Funds deficit

increased incrementally over the next few years until Su's share of the deficit increased

to $19,077.32 on August 10, 2015; and that the 7.5 Funds deficit greatly increased the

next few years due to patent reexamination costs until Su's share of the deficit increased

to $165,476.94 on August 18, 2017.

{¶ 44} The trial court held that Forrest's Patent Costs claim was barred by the

statute of limitations based upon its determination that Su's "dispute of the debt and her

non-payment prior to 2015 [constituted] the date that the cause of action accrued."

Because the trial court failed to specify an exact accrual date, it cannot be determined

from its April 17, 2024 decision and final judgment entry when the eight-year statute of

limitations began to run in relation to Forrest's August 15, 2023 contempt motion.

{¶ 45} Despite Forrest's characterization of Su's obligation to pay her share of

Patent Costs in his October 24, 2022 letter to her, the FTSA does not set forth when the

parties must pay their share of Patent Costs or when demands for payment must be

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made. Rather, Section 7.5(e) only states that "[i]f the Funds are insufficient to make the

payments required under this Paragraph 7.5(e), both parties will contribute equally to

those payments." Section 7.9(b) does provide that "any Patent Costs must be satisfied

before any other payments shall be made by Forrest to Su under this Agreement."

{¶ 46} Assuming, arguendo, that Forrest suffered actual damages when he first

invoiced Su on December 16, 2015, and Su subsequently failed to pay her share of Patent

Costs, the cause of action accrued on December 16, 2015, and Forrest's August 15, 2023

contempt motion was timely filed within the eight-year statute of limitations. This, in turn,

would mean that Forrest's February 4, 2015 notice to Su was barred by the statute of

limitations. Alternatively, the fact Forrest started to pay Su's share of Patent Costs upon

depletion of the 7.5 Funds and continued to do so until the final accounting of the MPP

program and Forrest's October 24, 2022 letter to Su does not mean Forrest suffered

actual damages during that period of time. By insuring that all the Patent Costs were

paid, Forrest maintained the viability of the MPP throughout the years, which was

beneficial to the MPP and the parties, including Forrest. Under that scenario, Su's

ultimate liability for her share of Patent Costs and thus, Forrest's exact amount of actual

damages could not be determined until all costs were incurred and all settlement,

judgments, and licensing fees had been received. Because Su's ultimate liability for her

share of Patent Costs was not determined until October 2022, Forrest's contempt motion

was timely filed within the eight-year statute of limitations.

{¶ 47} Thus, whether the cause of action accrued on October 24, 2022, or

December 16, 2015, the trial court erred in finding that Forrest's Patent Costs claim was

barred by the statute of limitations under R.C. 2305.06. Forrest's third issue for review is

well taken.

{¶ 48} In his fourth issue for review, Forrest argues the trial court erred in

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dismissing his Patent Costs claim on the ground of judicial estoppel.

{¶ 49} In its January 30, 2024 decision, the trial court ordered Su to pay Forrest

her share of Patent Costs under Section 7.5 of the FTSA but declined to award a lump

sum judgment for the amount owed based, in part, upon Forrest's counsel's then

representation that the trial court lacked jurisdiction to do so. Subsequently, upon

conducting additional research, Forrest's counsel conceded the trial court had jurisdiction

to enforce the incorporated provisions of the FTSA in the divorce decree and award a

lump sum judgment. In its April 17, 2024 decision, the trial court found that Su owed

Forrest $225,476.94 for her share of Patent Costs. However, the trial court declined to

award Forrest a lump sum judgment for this amount because Forrest had previously taken

the position in a civil action filed against Su in Hamilton County that a domestic relations

court lacks subject-matter jurisdiction to award a lump sum judgment. The trial court

found that Forrest was therefore estopped from changing the prayer for relief in his

contempt motion.

{¶ 50} The doctrine of judicial estoppel precludes a party from taking a legal

position inconsistent with one it successfully and unequivocally asserted in a prior judicial

proceeding. Independence v. Office of the Cuyahoga Cty. Executive, 2014-Ohio-4650, ¶

29. The purpose of judicial estoppel is "to preserve the integrity of the courts by

preventing a party from abusing the judicial process through cynical gamesmanship,

achieving success on one position, then arguing the opposing to suit an exigency for the

moment." Greer-Burger v. Temesi, 2007-Ohio-6442, ¶ 25. The doctrine applies only

when a party shows that his opponent "(1) took a contrary position; (2) under oath in a

prior proceeding; and (3) the prior position was accepted by the court." Id. The doctrine

applies only when the party making the inconsistent assertion was successful in making

the prior assertion. Edwards v. Edwards, 2007-Ohio-123, ¶ 11 (12th Dist.).

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{¶ 51} The other judicial action referred to by the trial court in applying judicial

estoppel is Gauthier v. Gauthier, 2018-Ohio-4970 (1st Dist.). That case arose from a civil

lawsuit Forrest filed against Su and her attorney in the Hamilton County Court of Common

Pleas for Su's conversion of personal property allocated to Forrest in the divorce. The

case was dismissed on summary judgment grounds, and Forrest was ordered to pay Su

and her attorney $96,000 in attorney fees for engaging in frivolous conduct by filing the

civil action. Forrest appealed to the First District Court of Appeals, arguing he had not

engaged in frivolous conduct by seeking an award of damages that could not be issued

by a domestic relations court. Id. at ¶ 22. The court of appeals reversed the trial court's

finding that Forrest had acted frivolously and its award of attorney fees on that basis as

follows: "We cannot conclude that no reasonable attorney would have filed the personal-

property claims, which . . . sought an award of damages on claims for breach of contract

and conversion regarding separation of the parties' personal property, in a court of

common pleas rather than a domestic relations court." Id. at ¶ 23-24.

{¶ 52} The Gauthier decision relied upon by the trial court set forth issues that are

neither involved nor relevant here. In that case, Forrest simply sought tort damages for

the theft of his personal property and did not argue that a domestic relations court

generally lacks jurisdiction to award a lump sum judgment. Likewise, the First District

Court of Appeals did not hold that a domestic relations court lacks jurisdiction to award a

lump sum judgment and simply held it was not frivolous for Forrest to make the argument

that Hamilton County was the proper county to file his personal-property claims. In

determining whether to invoke judicial estoppel, courts "consider whether the party to be

estopped has persuaded a court to accept the party's earlier position, so that subsequent

acceptance of an inconsistent position would create the risk of inconsistent court

determinations." Independence, 2014-Ohio-4650 at ¶ 32. We find no such risk here.

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The trial court therefore erred in applying judicial estoppel to Forrest's Patent Costs claim.

Forrest's fourth issue for review is well taken.

{¶ 53} In light of all of the foregoing, Forrest's first assignment of error is sustained.

{¶ 54} Forrest's Assignment of Error No. 2:

{¶ 55} THE TRIAL COURT ERRED AS A MATTER OF LAW WHEN IT DENIED

FORREST'S ATTORNEY FEES REQUEST FOR LACK OF PROOF.

{¶ 56} Along with his contempt motion, Forrest requested "all attorney fees . . . "

"incurred in this matter since December 1, 2010." The request was supported by an

affidavit executed by Forrest's primary counsel stating the hourly rate charged by the

primary counsel, two co-counsels, and a law school graduate, and an attorney time sheet

describing the work performed by each individual since December 2010, the number of

work hours performed, and each individual's hourly rate, for a total amount of attorney

fees of $207,412.50. The affidavit further stated that Forrest's primary counsel has been

representing Forrest in this case since December 2009, that the time he has spent on this

matter "is reasonable and appropriate," and that the hourly rate and time spent on the

case was "very reasonable" for one co-counsel, reasonable for the other co-counsel, and

reasonable for the law school graduate. The trial court denied the request for lack of

testimony from qualified counsel as to the reasonableness of the hourly rate and the

reasonableness and necessity for the legal services rendered. On appeal, Forrest argues

the trial court erred in failing to award him attorney fees because the affidavit and attorney

time sheet comply with Loc.R. 3.8 of the Warren County Common Pleas Court, Domestic

Relations Division.

{¶ 57} A trial court has discretion to determine the appropriate amount of attorney

fees to award in each case, and thus, the trial court's determination will not be reversed

on appeal absent an abuse of discretion. Bittner v. Tri-County Toyota, Inc., 58 Ohio St.3d

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143, 146 (1991). Reasonable attorney fees must be based upon actual services

performed by the attorney and upon the value of those services. In re C.L.W., 2024-Ohio-

1519, ¶ 59 (12th Dist.). "A raw calculation of hours spent multiplied by the attorney's

hourly rate is not sufficient to determine the reasonableness of the fees." M.A.B. v. B.R.L.,

2024-Ohio-573, ¶ 36 (8th Dist.). There is no steadfast rule in Ohio that the

"reasonableness" of attorney fees must be proved by expert testimony. Murray v. Dunn,

2024-Ohio-1639, ¶ 29 (12th Dist.). Nonetheless, "[i]n order to allow an award of attorney

fees, there must be evidence concerning the proper measure of such fees." Auber v.

Marc Glassman, Inc., 2002-Ohio-2749, ¶ 26 (8th Dist.).

{¶ 58} In support of a motion/request for attorney fees, Loc.R. 3.8 requires the

attorney to present (1) "an itemized statement describing the services rendered, the time

for such services, and the requested hourly rate," (2) an affidavit regarding whether the

case was complicated by new or unique issues of law, difficulty in ascertaining or valuing

the parties' assets, problems with completing discovery, and any other factor

necessitating extra time being spent on the case, (3) an affidavit regarding the attorney's

years in practice and experience in domestic relations cases, and (4) evidence of the

parties' respective incomes and expenses, if not otherwise disclosed during the

proceedings. Loc.R. 3.8(5) provides that "[f]ailure to comply with the provisions of this

rule shall result in the denial of a request for attorney fees, unless jurisdiction to determine

the issue of fees is expressly reserved in any order resulting from the hearing." Although

Loc.R. 3.8(5) prescribes the content of a motion for attorney fees, it does not provide that

attorney fees will automatically be awarded based only upon compliance with the rule.

{¶ 59} The attorney fees affidavit and attorney time sheet submitted by Forrest's

primary counsel were admitted as Exhibit 24 during the January 16, 2024 hearing. On

direct examination, Forrest simply confirmed that Exhibit 24 sets forth the services

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performed by his primary counsel and the two co-counsels and the hourly rates charged

by each counsel. Forrest stated that but for Su's failure to comply with the divorce decree

and the FTSA, he would not have incurred any attorney fees.

{¶ 60} The trial court did not abuse its discretion in denying Forrest's request for

attorney fees. While Exhibit 24 complied with Loc.R. 3.8(1) in that it included an itemized

statement, it did not address whether the case was complicated by any of the factors

listed in Loc.R. 3.8(2), did not present evidence of the parties' income and expenses, and

did not describe the three counsels' years in practice and experience in domestic relations

cases. See Loc.R. 3.8(2)-(4). Further, Forrest failed to present any testimony from

qualified counsel as to the reasonableness of the hourly rate and the reasonableness and

necessity for the legal service rendered. As Forrest was seeking a large award of attorney

fees in excess of $200,000, it was reasonable for the trial court to want evidence and

expert testimony in support of his request for attorney fees and not simply an affidavit and

an attached itemized statement.

{¶ 61} Forrest's second assignment of error is overruled.

{¶ 62} Su's Cross-Assignment of Error No. 2:

{¶ 63} THE TRIAL COURT ERRED IN FAILING TO GRANT SU GAUTHIER'S

CROSS-MOTION FOR A CONTEMPT FINDING UNDER ¶ 7.12 OF THE FTSA AND ¶ 6

OF THE 2010 AGREEMENT.

{¶ 64} Su argues the trial court erred by finding that Forrest's 2013 exclusive

license agreement with ARG did not violate Section 7.12 of the FTSA.

{¶ 65} As stated above, Section 7.12 provides that in the event Forrest transfers

all or a portion of his ownership in the MPP to another entity, he is required to pay Su 20

percent of the consideration he receives for such transfer. On June 28, 2013, in

consideration of $1,000,000, Forrest entered into an exclusive license agreement with

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ARG, granting ARG "all substantial rights in and to the [MPP]." Forrest terminated the

exclusive license agreement in 2019. Citing Forrest's testimony and Exhibits 26, 27, and

28, the trial court found that Forrest "did not sell the patents but, instead, granted a license

to a third-party for the prosecution of the patents. Accordingly, the Court finds that

[Forrest] has not violated the terms of the FTSA. Therefore, [Su] has failed to prove any

contempt."

{¶ 66} 35 U.S.C. 281 provides that "[a] patentee shall have remedy by civil action

for infringement of his patent." "When the entity that holds legal title to the patent makes

an assignment of all substantial rights under the patent, then that assignee is deemed the

effective patentee under 35 U.S.C. § 281 with effective title to the patent, and alone has

standing to maintain an infringement suit in its own name." (Emphasis in original.)

Keranos, LLC v. Silicon Storage Technology, Inc., 797 F.3d 1025, 1031 (Fed.Cir. 2015).

{¶ 67} 37 C.F.R. 3.1 defines an assignment as "a transfer by a party of all or part

of its right, title and interest in a patent [or] patent application[.]" An assignment of a

patent "is the transfer to another of a party's entire ownership interest or a percentage of

that party's ownership interest in the patent." See Manual of Patent Examining

Procedure, Section 301 (Rev. E9_R-08.2017). By contrast, "the licensing of a patent

transfers a bundle of rights which is less than the entire ownership interest, e.g., rights

that may be limited as to time, geographical area, or field of use." Id. "A patent license

is, in effect a contractual agreement that the patent owner will not sue the licensee for

patent infringement if the licensee makes, uses, offers for sale, sells, or imports the

claimed invention, as long as the licensee fulfills its obligations and operates within the

bounds delineated by the licensing agreement." Id. A license, including an exclusive

one, is not an assignment of patent rights in the patent or application. Id. "Transfer of (1)

the exclusive right to make, use, and sell products covered by the patent; (2) the right to

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sue for infringement of the patent; and (3) a virtually unrestricted authority to sublicense

its rights under the agreement . . . strongly favor[s] a finding of an assignment, not a

license." Keranos at 1032. See also Alfred E. Mann Found. for Scientific Research v.

Cochlear Corp., 604 F.3d 1354 (Fed.Cir. 2010).

{¶ 68} The exclusive license agreement granted ARG "all substantial rights in and

to the Patents including

The worldwide, exclusive right and license under the Patents to make, have made, use, import, offer or sell products or services covered by the Patents, including the exclusive right to grant sublicenses, to sue for and collect past, present and future damages and to seek and obtain injunctive or any other relief for infringement of the Patents. Except as expressly set forth in this Agreement, [Forrest] retains no rights in or to the Patents.

{¶ 69} Forrest testified that the purpose of the exclusive license agreement with

ARG was for ARG to finance patent litigation and that he and ARG would then split the

proceeds equally. Forrest testified that the license agreement was not an assignment of

the MPP to ARG, that the agreement only granted partial rights to ARG, and that he is

listed and always has been listed as the owner of each patent in the MPP. Though Forrest

recognized that a license agreement entails a substantial grant of rights to the patents,

he testified he retained the right to sue for infringement of the MPP and denied he gave

up all of his rights to pursue any patent litigation when he entered into the agreement with

ARG. Forrest also testified that his 2019 termination of the agreement "concluded any

rights that [ARG] had."

{¶ 70} In support of his position, Forrest submitted three exhibits which were

admitted into evidence. Exhibit 26 is the exclusive license granted to ARG, which

provides that

[Forrest] grants to [ARG] all substantial rights in and to the Patents including the worldwide, exclusive right and license

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under the Patents to make, have made, use, import, offer or sell products or services covered by the Patents, the exclusive right to grant sublicenses, to sue for and collect past, present and future damages and to seek and obtain injunctive or any other relief for infringement of the Patents. Except for ownership of the Patents, [Forrest] expressly retains no rights in or to the Patents . . . .

{¶ 71} Exhibits 27 and 28 are 2015 orders from two federal district courts

referencing the exclusive license agreement. Exhibit 28 provides that pursuant to the

exclusive license agreement, Forrest "maintains a reversionary right in the patents to the

extent the License Agreement is terminated and retains a transferable right to practice

the patents and develop and market patent inventions." Exhibit 27 provides that "all right,

title, and interest in the asserted patents is owed by the inventor of the patented

technology," i.e., Forrest. Su did not rebut Forrest's testimony and evidence.

{¶ 72} In light of the foregoing, the trial court did not err in finding that Forrest did

not assign ownership of the MPP to ARG but instead, simply granted a license to ARG,

and that therefore, Forrest did not violate Section 7.12 of the FTSA.

{¶ 73} Su's second cross-assignment of error is overruled.

{¶ 74} Judgment affirmed in part, reversed in part, and remanded for further

proceedings consistent with this opinion.

HENDRICKSON, P.J., and PIPER, J., concur.

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