IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

No. 13-20430

URETEK (USA), INCORPORATED, 

 Plaintiff – Appellant,

v.

URETEKNOLOGIA DE MEXICO S.A. DE C.V., 

 Defendant – Appellee.

Appeal from the United States District Court

for the Southern District of Texas

USDC No. 4:11-CV-3060

Before DAVIS, DeMOSS, and ELROD, Circuit Judges.

PER CURIAM:*

After a jury verdict against Uretek USA, Inc. (“Uretek”) in this breach of 

contract dispute, the district court entered judgment for Ureteknologia de 

Mexico S.A. de C.V. (“UdeM”) and awarded it $211,609.88 in attorney’s fees. 

On appeal, Uretek contends that the district court’s judgment is not supported 

by sufficient evidence and that the attorney’s fee award amounted to an abuse 

of discretion. Because ample evidence supported the verdict and judgment, 

* Pursuant to 5TH CIR. R. 47.5, the court has determined that this opinion should not 

be published and is not precedent except under the limited circumstances set forth in 5TH 

CIR. R. 47.5.4.

United States Court of Appeals

Fifth Circuit

FILED

October 29, 2014

Lyle W. Cayce

Clerk

 

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and because the district court acted well within its discretion in awarding 

attorney’s fees to UdeM, we AFFIRM.

I.

Uretek, an Iowa corporation with its principal place of business in Texas,

has developed a proprietary polyurethane foam and “deep injection” process to 

repair pavement and foundations. In a sublicense agreement executed in 

March 2003, Uretek granted UdeM the right to use its products and processes 

in Mexico. This agreement required UdeM to annually purchase from Uretek, 

at a minimum, 100,000 pounds of Uretek’s polyurethane. It also required 

UdeM to pay a royalty whenever it used Uretek’s deep injection process and 

prohibited UdeM from purchasing Uretek products from sources other than 

Uretek.

In December 2009 and January 2010, Uretek provided labor and 

materials to UdeM as a subcontractor to UdeM’s “Metro Project” in Mexico. 

Uretek sent invoices to UdeM, but UdeM disputed the charges and refused to 

pay. Uretek’s chairman and CEO, Brent J. Barron, and UdeM’s president, 

Francisco Alvarez, met in May 2010 in an attempt to resolve the dispute. At 

this meeting, Barron and Alvarez executed an agreement that modified the 

sublicense agreement and declared that UdeM had satisfied its polyurethane 

purchase requirement through May 2010. Uretek also accepted and deposited 

a check for $175,023.34 to pay four invoices.

Alvarez again met with Barron in June 2010, presenting to him a 

document entitled “First Amendment to Sublicense Agreement.” The 

amendment recited that it was for “$10.00 and other good and valuable 

consideration.” Barron and Alvarez initialed the document in several places. 

Barron also dated and initialed a release, which contained an identical 

consideration recitation. During this meeting, Uretek accepted four checks 

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from UdeM. The amounts and memo lines of these checks were as follows: (1) 

$10.00 “As per First Amendment to Sublicense Agreement between [Uretek] 

and [UdeM]”; (2) $76,950.89 for “Full payment on Technical Assistance”; (3) 

$225,471.05 for “Full payment on Royalties”; and (4) $10.00 for “Full Release 

[Uretek] to [UdeM].” Barron accepted the checks by signing and dating 

photocopies, and he placed a “paid” stamp on the invoices that accompanied 

the second and third checks. Uretek deposited all four of the checks. Notably, 

Uretek employees deposited the amendment’s $10 consideration payment at 

Barron’s specific direction.

The June 2010 amendment modified the sublicense agreement in several 

respects. It eliminated the royalty that UdeM owed Uretek for the use of its 

deep injection process. In addition, while the sublicense agreement originally 

provided that UdeM must purchase all its polyurethane requirements—and 

any Uretek products—directly from Uretek, the amendment eliminated these 

provisions, requiring only that Uretek make its polyurethane available to 

UdeM at a specified purchase price. The amendment also eliminated UdeM’s 

minimum purchase requirement and deleted a provision that had empowered 

Uretek to terminate the sublicense agreement if UdeM failed to purchase 

polyurethane from Uretek. Finally, the amendment added a new paragraph 

to the agreement, providing that UdeM would owe royalties to Uretek on 

UdeM’s purchases of any materials that were subject to Uretek’s patent. These 

royalties were to be paid “at the rate of fifty (50) percent of the lesser of (a) the 

actual cost of such materials only as purchased by [UdeM] from URETEK, or 

(b) the actual cost of such materials only as purchased by URETEK for, and resold and actually delivered by URETEK to, [UdeM].”

In October 2010, UdeM purchased Uretek polyurethane from another 

company. In December 2010, Uretek accepted, endorsed, and deposited two 

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more checks from UdeM. These checks—one for $25,230.00 and the other for 

$18,021.00—stated in the memo lines that they were “[p]ayment on behalf of 

[UdeM] DI Royalties paid in full as per First Amendment for polymers 

delivered by” the company from which UdeM had bought the polyurethane. 

However, Uretek subsequently refused to sell any more polyurethane to UdeM

and terminated the sublicense agreement. 

Uretek brought suit against UdeM in Texas state court, seeking a 

declaration that the June 2010 amendment never became effective. Uretek 

also sought damages for UdeM’s alleged breaches of the sublicense agreement 

and attorney’s fees. UdeM counterclaimed, seeking a declaration that the 

sublicense agreement, as modified by the May 2010 agreement and June 2010 

amendment, was valid and enforceable; the June 2010 amendment was valid 

and enforceable; Uretek’s attempted termination was ineffective; and the June 

2010 release was valid and enforceable. UdeM also sought attorney’s fees and 

specific performance of the sublicense agreement.

The district court granted summary judgment to UdeM on the issue of 

whether the amendment was supported by consideration. The case then 

proceeded to trial. The jury found that UdeM did not fraudulently procure 

Barron’s initials on the amendment or release, that in June 2010 Uretek did 

not agree to the amendment but did agree to the release, and that Uretek later 

ratified both the amendment and the release. The district court then entered 

a judgment declaring that the sublicense agreement, as modified by the May 

2010 agreement and the June 2010 amendment, was valid; that Uretek’s 

termination constituted a breach of the sublicense agreement; and that the 

June 2010 release was valid. The district court denied, however, UdeM’s 

specific performance claims. The district court then awarded UdeM 

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$211,609.88 in attorney’s fees. After the district court denied its motion for 

new trial, Uretek initiated this appeal.

II.

We review a jury’s verdict for sufficiency of the evidence. “We must view 

the evidence in the light most favorable to upholding the jury’s verdict and may 

only reverse if the evidence points so strongly and overwhelmingly in favor of 

one party that the court believes that reasonable men could not arrive at a 

contrary conclusion.” Douglas v. DynMcDermott Petroleum Operations Co., 

144 F.3d 364, 369 (5th Cir. 1998) (internal quotation marks omitted).

“The district court’s award of attorney’s fees under Chapter 38 of the 

Texas Civil Practice & Remedies Code is . . . reviewed for abuse of discretion.” 

Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 341 (5th Cir. 2008). 

Supporting factual findings, however, are reviewed for clear error. Id.

III.

The jury found that Uretek, although it did not execute the June 2010 

amendment to the sublicense agreement, later ratified it. “Ratification is the 

adoption or confirmation, by a party with actual knowledge of all material 

facts, of a prior act that did not then legally bind that party and which that 

party had a right to repudiate.” PanAmerican Operating, Inc. v. Maud Smith 

Estate, 409 S.W.3d 168, 176 (Tex. App.—El Paso 2013, pet. denied). “A party 

ratifies a contract by acting under it, performing under it, or affirmatively 

acknowledging it.” Id. “Any act inconsistent with an intent to avoid a contract 

has the effect of ratifying the contract.” Barker v. Roelke, 105 S.W.3d 75, 85 

(Tex. App.—Eastland 2003, pet. denied). In particular, a party can ratify an 

agreement by cashing a check. Texas Emp’rs Ins. Ass’n v. Bottoms, 200 S.W.2d 

418, 420–21 (Tex. Civ. App.—Fort Worth 1947, no writ).

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Uretek asserts that its cashing of the two December 2010 checks and the 

June 2010 check for $10.00 “as per” the amendment could not support the 

jury’s ratification finding. We address each of Uretek’s contentions in turn.

We first address the December 2010 checks. Uretek argues that its 

acceptance of payments for “DI [r]oyalties” in connection with purchases of 

polyurethane from another company could not constitute ratification because 

the June 2010 amendment would abolish deep injection royalties and, on 

Uretek’s reading, would not permit UdeM to purchase Uretek polyurethane 

from other companies. Uretek’s argument misrepresents the June 2010 

amendment and sidesteps an ambiguity in the checks’ memo lines. 

To begin, Uretek observes that although paragraph 16 of the June 2010 

amendment deleted the provisions of the sublicense agreement that prohibited 

UdeM from purchasing Uretek polyurethane from others, it left “unaltered”

the provision that obligated UdeM to purchase all its Uretek polyurethane 

requirements from Uretek. It is true that paragraph 16 of the amendment did 

not alter the requirements provision. In making this observation, however, 

Uretek omits to mention the effect of the amendment’s preceding paragraph. 

In particular, paragraph 15 of the amendment modified the requirements 

provision so that UdeM merely had the option (rather than the obligation) of 

purchasing Uretek polyurethane directly from Uretek. Paragraphs 15 and 16 

of the amendment, operating together, unambiguously relieved UdeM of its 

obligation to purchase its Uretek polyurethane requirements exclusively from 

Uretek. Furthermore, while Uretek points to paragraph 33 of the amendment 

and the strike-out of the phrase “parties other than [Uretek],” that paragraph 

dealt only with the computation of royalties. Under the edited version of 

paragraph 33, regardless of the source from which UdeM purchased Uretek 

products, the royalties that it owed would depend on the actual cost of the 

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products had Uretek sold them to UdeM. This calculation-of-royalties 

provision, contrary to Uretek’s assertion, did not require UdeM to purchase its 

polyurethane requirements exclusively from Uretek. 

Finally, Uretek notes that the June 2010 amendment, in paragraph 7, 

deleted a provision in the sublicense agreement that required UdeM to pay 

Uretek a royalty for any use of Uretek’s deep injection process. As Uretek 

argues, because the memo lines of the December 2010 checks said they were 

for “DI [r]oyalties,” the jury could have concluded that they were inconsistent 

with the June 2010 amendment. This conclusion was not, however, the only 

reasonable one that the jury could have drawn. The entire memo line on the 

checks read: “Payment on behalf of [UdeM] DI Royalties paid in full as per 

First Amendment for polymers delivered by [another company].” The 

amendment had added a new paragraph to the agreement, providing that 

UdeM would owe royalties to Uretek on UdeM’s purchases of any Uretek 

products. The jury was entitled to conclude that the December 2010 checks 

represented royalty payments for UdeM’s purchase of Uretek products, rather 

than its use of Uretek’s deep injection process. Indeed, Alvarez testified to that 

effect and explained that he included the “DI [r]oyalties” phrase because 

“[t]hat’s the way Mr. Barron wanted to call it.” This factual dispute was 

properly left to the jury.

In sum, sufficient evidence showed that the two December 2010 checks 

referenced, and were consistent with, the June 2010 amendment. The jury 

was entitled to find that by cashing them, Uretek acted under or affirmatively 

acknowledged the amendment. Cf. Coastal Plains Dev. Corp. v. Tech-Con 

Corp., 531 S.W.2d 143, 147 (Tex. Civ. App.—Houston [1st Dist.] 1975, writ ref’d 

n.r.e.) (holding that when a party accepts and deposits a check as-written, 

retaining the proceeds, “it is deemed to have agreed to any conditions which 

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are clearly shown by the draft to have constituted part of the agreement 

between the parties”).

Uretek argues that the $10 check it cashed “as per” the June 2010 

amendment was merely a nominal sum without legal significance, and that its 

acceptance could not ratify the amendment. In support of this proposition, 

Uretek cites irrelevant cases that address whether a sale-leaseback 

transaction, because the leaseholder’s option to purchase is supported by only 

nominal consideration, is a secured loan for purposes of Article 9 of the U.C.C. 

Uretek does not cite any authority demonstrating that the acceptance of a 

small sum “as per” an unexecuted contract or amendment—when the contract 

or amendment designates that sum as the consideration—cannot constitute 

ratification. Furthermore, viewing the evidence in the light most favorable to 

the verdict, the jury could have found that Barron took the check to Uretek’s 

office and specifically instructed his employees to deposit it. Thus, the jury 

had sufficient evidence to find that by cashing the $10 check, Uretek acted 

under or affirmatively acknowledged the June 2010 amendment. Cf. Coastal 

Plains Dev. Corp., 531 S.W.2d at 147.

Finally, we note that the circumstances surrounding the June 2010 

meeting properly informed the jury’s finding that Uretek ratified the 

amendment. Alvarez and Barron met in May 2010, and again in June 2010, 

to resolve an ongoing dispute over the amount that UdeM owed Uretek for the 

Metro Project. At the first meeting, an agreement was executed, four invoices 

were paid, and Barron indicated receipt and acceptance of the checks by 

signing and dating photocopies. At the second meeting, Alvarez and Barron 

initialed the amendment to the sublicense agreement, executed a release, and 

settled two more matters concerning payment for the Metro Project. As during 

the first meeting, Barron indicated receipt and acceptance of the checks—one 

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of which expressly stated that it was tendered in consideration for the 

amendment—by signing and dating photocopies. Uretek deposited those 

checks and, several months later, deposited two more checks that UdeM 

tendered for royalties “as per” the amendment. In addition, Alvarez testified 

that after the June 2010 meeting, he and Barron were satisfied that the parties 

had settled their disagreements. The jury could reasonably conclude that the 

parties had engaged in an ongoing effort to resolve the Metro Project dispute, 

the amendment represented part of that effort, and Uretek’s deposit of 

payments after the June 2010 meeting ratified the amendment.

IV.

The district court awarded UdeM $211,609.88 in attorney’s fees, 

including fees for claims upon which UdeM did not prevail, after finding that 

the claims were so interrelated that the fees could not be segregated. Uretek 

argues that the award was error for two reasons. First, Uretek contends that 

the fees should have been segregated. Second, Uretek contends that UdeM’s 

attorneys billed excessively for the removal, depositions, work by a specific 

attorney, and an unsuccessful summary judgment motion. 

“State law controls both the award of and the reasonableness of fees 

awarded where state law supplies the rule of decision.” Mathis v. Exxon Corp., 

302 F.3d 448, 461 (5th Cir. 2002). Both as a matter of Texas law and pursuant 

to the June 2010 amendment to the sublicense agreement, UdeM, as the 

prevailing party in a breach of contract suit, was entitled to recover its 

reasonable attorney’s fees. Tex. Civ. Prac. & Rem. Code § 38.001; see also 

Mohican Oil & Gas, LLC v. Scorpion Exploration & Prod., Inc., 337 S.W.3d 

310, 321 (Tex. App.—Corpus Christi 2011, pet. denied) (parties are free to 

contract for their own fee-recovery standard). Generally, a court may award 

fees only in connection with claims on which the party prevailed. Stewart Title 

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Guar. Co. v. Sterling, 822 S.W.2d 1, 10–11 (Tex. 1991). An exception applies, 

however, “when the attorney’s fees rendered are in connection with claims 

arising out of the same transaction and are so interrelated that their 

prosecution or defense entails proof or denial of essentially the same facts.” Id.

at 11. In such cases, a court may award “the entire amount covering all 

claims.” Id. Intertwined facts alone, however, can no longer trigger this 

exception. Tony Gullo Motors I, L.P. v. Chapa, 212 S.W.3d 299, 313 (Tex. 2006) 

(discussing and limiting Sterling). Rather, “it is only when discrete legal 

services advance both a recoverable and unrecoverable claim that they are so 

intertwined that they need not be segregated.” Id. at 313–14.

The district court correctly found that the legal services of UdeM’s 

attorneys advanced both recoverable and unrecoverable claims so that the 

services could not be segregated. Uretek’s conclusory argument that the 

pursuit of additional claims necessarily requires additional work dodges the 

relevant inquiry. The test is not whether the pursuit of unsuccessful claims 

added to the workload in the abstract, but instead whether discrete legal 

services can be segregated between those devoted to the successful claims and 

those devoted to the unsuccessful ones. Uretek fails to show how any discrete 

legal service that UdeM’s counsel provided could be so segregated. The district 

court, familiar with the progress of the litigation, did not err when it awarded 

unsegregated fees.

Uretek’s argument that the district court failed to adequately scrutinize 

the fees is also wholly without merit. First, Uretek misplaces reliance on El 

Apple I, Ltd. v. Olivas, 370 S.W.3d 757 (Tex. 2012). In that case, the Texas 

Supreme Court reversed an attorney’s fee award where the affidavit listed only 

the total number of hours that counsel had billed in the case. Id. at 759. In 

this case, however, UdeM’s counsel supplied the district court with daily billing 

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entries. Moreover, Uretek simply reiterates on appeal the same objections to 

the billing entries that the district court carefully rejected. The district court, 

in calculating the lodestar amount, expressly considered the factors specified 

in Arthur Andersen & Co. v. Perry Equipment Corp., 945 S.W.2d 812, 818 (Tex. 

1997). Uretek did not object to the hourly rates charged by UdeM’s counsel, 

and the district court found that they were reasonable. As for the hours 

expended, the district court observed that to defeat Uretek’s damages claim, 

UdeM had to show that the 2010 release and 2010 amendment were valid and 

enforceable. The district court found that UdeM’s counsel sufficiently 

documented the hours and did not bill excessively in light of the complex issues 

involved, the amounts in controversy, and counsel’s experience and expertise. 

Noting that “[s]ummary judgment motions are common in contract disputes,” 

the district court found that UdeM’s unsuccessful summary judgment motion 

was reasonable and, therefore, UdeM was entitled to fees in connection with 

its summary judgment motion. See DP Solutions, Inc. v. Rollins, Inc., 353 F.3d 

421, 434 (5th Cir. 2003) (“[A] party may recover for time spent on unsuccessful 

motions so long as it succeeds on the overall claim.”). 

Where, as here, the district court has carefully considered the billing 

records and lodestar factors, and the appellant merely reiterates on appeal the 

contentions that the district court rejected, we will uphold the award. See, e.g., 

DP Solutions, 353 F.3d at 433–34. This is especially true under Texas law, 

which presumes the reasonableness of “usual” or “customary” fees in breach of 

contract suits. Mathis, 302 F.3d at 462.

V.

For the foregoing reasons, we AFFIRM the judgment of the district court.

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