FILED

United States Court of Appeals

Tenth Circuit

December 18, 2008

Elisabeth A. Shumaker

Clerk of Court

PUBLISH

UNITED STATES COURT OF APPEALS

TENTH CIRCUIT

RONALD D. RUSSO,

Plaintiff-Appellee/CrossAppellant,

v.

BALLARD MEDICAL PRODUCTS,

Defendant-Appellant/CrossAppellee .

Nos. 07-4090 & 07-4102

Appeal from the United States District Court

for the District of Utah

(D.C. No. 05-CV-59-TC )

Constantine L. Trela, Jr., Sidley Austin LLP, Chicago, IL (Michael B. Apfeld,

Godrey & Kahn, S.C., Milwaukee, WI and Marcy G. Glenn, Holland & Hart, LLP,

Denver, CO, with him on the briefs), for Defendant-Appellant/Cross-Appellee .

Richard D. Burbidge (Jefferson W. Gross and Robert J. Shelby with him on the

briefs) Burbidge Mitchell & Gross, Salt Lake City, UT, for PlaintiffAppellee/Cross-Appellant.

Before McCONNELL, SEYMOUR , and GORSUCH , Circuit Judges.

GORSUCH, Circuit Judge.
Medical device inventor Ronald Russo brought this lawsuit against Ballard

Medical Products contending that the company misappropriated his trade secret

and breached the parties’ confidentiality agreement by incorporating certain of his

innovations into one of its popular medical devices without his consent. After a

seven-day trial, a jury found for Mr. Russo and awarded him $20 million in

damages. On appeal, Ballard argues primarily that Mr. Russo’s state law claims

are preempted by federal patent law. Mr. Russo cross-appeals, submitting that the

district court erred in declining to add post-verdict, pre-judgment interest to his

award. Finding none of the parties’ various arguments for reversal persuasive, we

affirm.

I

A

In 1983 Ballard introduced its flagship product, the Trach Care 24 catheter,

a closed-suction catheter designed to remove debris from endotracheal ventilator

tubes without having to disconnect patients from the ventilators on which they

depend for oxygen. Before the Trach Care 24, medical professionals relied on an

1

open-suction process, in which they had to disconnect the patient from the

ventilator, insert a catheter into the patient’s airway to suction accumulated

Given the presence of a jury verdict in Mr. Russo’s favor, we review (and

1

here recount) the evidence before us in the light most favorable to him.

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mucus, and then remove the catheter before reconnecting the ventilator – a

process that not only involved temporarily removing the patient from the

ventilator, but also a non-trivial risk of infection from the cleaning process.

Mr. Russo is an independent medical device designer. In 1992, Ballard

retained Mr. Russo in a consulting role with the aim of improving various aspects

of its Trach Care catheter. After completing this project, Mr. Russo continued

working independently on tracheal suction devices, while Ballard also worked on

its own to improve its product. In particular, Ballard focused on enhancing the

useful life span of its catheter. As its name implies, the Trach Care 24 is

approved by the United States Food and Drug Administration (“FDA”) for only 24

hours’ continuous use. After that period, even Ballard’s design is insufficient to

prevent bacteria from developing to the point of unduly risking patient infection.

In 1997, after several failed attempts to extend the life span of the

Trach Care 24, Ballard again sought Mr. Russo’s help. Mr. Russo agreed and,

building on his independent work, he devised various improvements to the Trach

Care 24, all memorialized in a series of drawings and a prototype. These

improvements included a vented “duckbill” valve that isolated the patient-side of

the catheter assembly from the catheter cleaning chamber – an innovation that

allowed mucus to be more effectively cleaned from the catheter in the cleaning

chamber while minimizing back flow to the patient. Mr. Russo’s improvements

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also included an additional “wiper” seal to wipe the catheter clean, which allowed

the tip of the catheter to be withdrawn past the wiper seal into the cleaning

chamber, leaving secretions in the cleaning chamber. In combination, Mr.

Russo’s modifications created a more effective method for cleaning Ballard’s

catheter, which he expected would improve the device’s safety and, consequently,

its useful life span.

In early 1998, Mr. Russo agreed to meet with Ballard to discuss his

improvements, but conditioned any meeting on the parties executing a

confidential disclosure agreement (“CDA”). Ballard assented to this condition,

sending Mr. Russo a proposed CDA for his consideration. Mr. Russo signed the

document and, in April 1998, the parties met in New York City to discuss Mr.

Russo’s research. In preparation for the meeting, but after signing the CDA, Mr.

Russo forwarded a binder of materials to Ballard disclosing his innovations, and

he brought additional drawings and a prototype to the meeting itself. During the

course of the conference, Mr. Russo gave the drawings to Ballard engineers,

showed them the prototype, explained his various improvements, and answered “a

million questions.” Aplt. App. at 1211.

Before the meeting concluded, Ballard asked Mr. Russo how much it would

cost to license his innovations. Mr. Russo replied with a request for $50,000,

plus a 5% annual royalty with a guaranteed annual minimum payment of $50,000,

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but the parties concluded the meeting without reaching any agreement on terms.

Over the next few months, the parties continued to negotiate, during which time

Mr. Russo dropped his request to a 3% annual royalty with a $50,000 guaranteed

annual minimum. Eventually, Ballard agreed to a 3% royalty rate, but still would

not acquiesce to an annual minimum payment and, in August 1998, negotiations

ended without a meeting of the minds.

Shortly after the parties broke off negotiations, Mr. Russo asked Ballard’s

General Counsel, Paul Hess, to return the confidential materials he had shared

with Ballard pursuant to the CDA. Mr. Hess promised that he would secure the

return of Mr. Russo’s materials, but Mr. Russo received nothing. When Mr.

Russo brought this to Mr. Hess’s attention and renewed his request in September

1998, Mr. Hess represented that Ballard was unable to locate Mr. Russo’s

materials.

Unknown to Mr. Russo at the time, Ballard made use of his work to secure

two patents and introduce a new product to market. In September 1998, Ballard

submitted a patent application embodying the innovations Mr. Russo disclosed at

the parties’ New York meeting; though that application was denied, the Patent

and Trademark Office subsequently issued Ballard two patents based on its 1998

application, patent nos. 6,227,200 (the ’200 patent) and 6,543,451 (the ’451

patent). Both contained the essential innovations embodied in Mr. Russo’s

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prototype and drawings. The only difference between Mr. Russo’s work and

Ballard’s patents was the substitution of a flap valve for a duckbill valve –

although the patent allowed for either kind of valve to be used. Otherwise, the

designs were “exactly the same” as the ones Mr. Russo proposed. Id. at 1230-32.

Ballard’s patents allowed it to introduce a new device, the Trach Care 72, which

the company began selling in 2001. As its name suggests, Trach Care 72 is

approved by the FDA for 72 hours’ continuous use. At the heart of the product

are Mr. Russo’s designs ensuring a superior cleaning process, delaying the build

up of potentially infectious bacteria, and thus allowing Ballard’s product to be

safely employed for an extended period.

B

Believing that Ballard misappropriated his trade secret and violated the

parties’ CDA, Mr. Russo filed suit in Rhode Island Superior Court. Ballard

removed the action to federal court based on diversity jurisdiction and, pursuant

to a forum selection clause in the CDA, the case was transferred to the District of

Utah. At the trial that followed, the district court submitted two claims to the

jury: (1) misappropriation of Mr. Russo’s trade secret, and (2) breach of contract

(viz., the CDA). Both claims turned on Mr. Russo’s allegation that, in derogation

of the CDA, Ballard misappropriated his drawings and prototype by using them in

its Trach Care 72 product. For his trade secret claim, Mr. Russo sought unjust

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enrichment damages, and asserted that those damages were properly measured by

the net profit the company expected to secure from its Trach Care 72 product over

the life of the ’200 and ’451 patents. Without his innovations, Mr. Russo

claimed, Ballard simply could not have created its new product and would have

been forced to continue offering only its 24-hour product. Mr. Russo’s expert

estimated the present value of Ballard’s expected net profits from the Trach Care

72 product over the 17-year life of its patents to be $32.3 million. Mr. Russo also

sought compensatory damages for his actual loss under the breach of contract

claim. Mr. Russo argued that, but for Ballard’s breach, the parties would have

agreed on at least a 3% royalty rate and a $50,000 minimum annual payment.

Using several “conservative” assumptions, Mr. Russo’s expert testified that this

would have amounted to royalty payments over the life of Ballard’s patents with a

net present value of at least $2.751 million.

For its part, Ballard contended that Mr. Russo never, at the New York City

meeting or otherwise, disclosed any design containing the innovations found in

Ballard’s Trach Care 72 product. Instead, Ballard submitted, its engineers

independently developed all of the innovations embodied in its product.

Additionally, Ballard argued that Mr. Russo’s state tort claims were preempted by

federal patent law. Ballard further challenged Mr. Russo’s damages evidence and

presented its own damages expert who opined that, even if Ballard did

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misappropriate Mr. Russo’s innovations, his losses were much smaller than he

claimed.

Ultimately, the jury found in favor of Mr. Russo, awarding him $17

million in unjust enrichment damages for his trade secret misappropriation claim

and $3 million in damages for his breach of contract claim. The district court

entered judgment for Mr. Russo in the amount of $20 million and denied all of the

parties’ various post-trial motions. Ballard now appeals, asking us to hold Mr.

Russo’s suit preempted by federal patent law and, alternatively, seeking to

overturn the jury’s damage awards on a variety of other grounds. For his part,

Mr. Russo cross-appeals the district court’s denial of post-verdict, pre-judgment

interest.

II

Before reaching the merits of the parties’ appeals, we must pause to address

a jurisdictional question. Mr. Russo asserts that our jurisdiction arises under 28

U.S.C. § 1291, and that the district court had jurisdiction over this dispute based

on diversity of citizenship, pursuant to 28 U.S.C. § 1332. Ballard concurs in this

analysis, but identifies a potential wrinkle. Ballard draws our attention to the fact

that the Federal Circuit has exclusive jurisdiction pursuant to 28 U.S.C. § 1295

over appeals from district court judgments predicated on 28 U.S.C. § 1338, a

provision that gives the district court original jurisdiction over any “civil action

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arising under any Act of Congress relating to patents, plant variety protection,

copyrights and trademarks.” Id. Ballard assures us that neither of these

provisions pertains to this case but nonetheless flags them for our independent

consideration because, it says, they would, if applicable, divest us of subject

matter jurisdiction over this dispute.

It is our obligation always to be certain of our subject matter jurisdiction.

See, e.g., Adams v. Reliance Standard Life Ins. Co., 225 F.3d 1179, 1182 (10th

Cir. 2000). In fulfilling our obligation in this case, we are guided by the Supreme

Court’s instruction that the Federal Circuit’s exclusive jurisdiction arises under

sections 1295 and 1338 if, but only if, “federal patent law creates the cause of

action or . . . the plaintiff’s right to relief necessarily depends on resolution of a

substantial question of federal patent law, in that patent law is a necessary

element of one of the well-pleaded claims.” Christianson v. Colt Indus.

Operating Corp., 486 U.S. 800, 809 (1988). In answering this question, we are

told to look only to the face of the plaintiff’s complaint, not the manner in which

the case was tried: “If on the face of a well-pleaded complaint there are reasons

completely unrelated to the provisions and purposes of the patent laws why the

plaintiff may or may not be entitled to the relief it seeks, then the claim does not

‘arise under’ those laws.” Id. at 810 (internal citation, quotation marks, and

brackets omitted). “Thus, a claim supported by alternative theories in the

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complaint may not form the basis for § 1338(a) jurisdiction unless patent law is

essential to each of those theories.” Id. (internal citations, quotation marks, and

brackets omitted). See also AT&T Co. v. Integrated Network Corp., 972 F.2d

1321, 1324 (Fed. Cir. 1992).

Mr. Russo’s claims for relief do not meet this restrictive test. Neither of

his two state law claims for relief was created by federal patent law. And neither

“necessarily depends on resolution of a substantial question of federal patent

law.” Christianson, 486 U.S. at 809. In his trade secret claim, Mr. Russo asserts

that he disclosed a trade secret to Ballard, that Ballard misappropriated that secret

by using it to develop the Trach Care 72 product without his knowledge or

consent, and that Ballard’s actions harmed him. Under Utah’s trade secret statute,

this is all Mr. Russo had to prove to prevail. See U.C.A. 1953 § 13-24-1, et seq.

To be sure, Ballard’s patents are mentioned in Mr. Russo’s complaint as evidence

showing how Ballard misappropriated his designs. But the fact that patents may

be used as evidence in aid of a trade secret claim is not the same thing as raising a

substantial (or really, any) question of federal patent law. See Uroplasty, Inc. v.

Advanced Uroscience, Inc., 239 F.3d 1277, 1280 (Fed. Cir. 2001) (trade secret

complaint does not implicate exclusive Federal Circuit jurisdiction because, while

plaintiff may use defendant’s patent to show misappropriation, and the patent thus

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“may be evidence in support of [plaintiff’s misappropriation] allegations . . . the

mere presence of the patent does not create a substantial issue of patent law”).

What holds true for Mr. Russo’s trade secret claim also holds true for his

breach of contract claim. To secure damages for the latter claim, Mr. Russo had

to show only that he disclosed materials to Ballard pursuant to the CDA, that

Ballard then disclosed those materials to others, that Mr. Russo was harmed by

this act and suffered damages, and that this result was reasonably foreseeable to

Ballard. Here, again, the fact that Ballard used Mr. Russo’s ideas to secure

patents is surely relevant evidence suggesting a breach occurred, but it does not

implicate any question of federal patent law. See id. (discussing breach of

contract claim as well as trade secret misappropriation claim); cf. U.S. Valves,

Inc. v. Dray, 212 F.3d 1368, 1372 (Fed. Cir. 2000) (when breach of contract claim

requires a showing that defendant infringed patents, patent law is a necessary

element of the breach of contract claim).

III

With our jurisdiction confirmed, we turn to the merits of Ballard’s appeal.

First and primarily, the company asserts that, while the nature of the claims

presented in Mr. Russo’s complaint did not necessarily implicate patent law (and

thus invest the Federal Circuit with exclusive jurisdiction), the case Mr. Russo

actually presented at trial was “irreconcilable” with federal patent law and so

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preempted by it. Because Ballard’s preemption argument – pressed in a variety of

ways before the district court, including by motions for summary judgment,

directed verdict, and judgment as a matter of law (or, in the alternative, a new

trial) – is a legal argument, we review it de novo. We begin by outlining the

2

principles that control our preemption analysis, and then turn to assess their

application in Mr. Russo’s case.

A

The Supremacy Clause of the Constitution provides that federal law trumps,

or preempts, contrary state laws. U.S. Const. art. VI, cl. 2. While a seemingly

simple rule, preemption takes a number of guises, known variously as explicit,

field, and conflict preemption. The first two of these species of preemption do

not bear on our current problem. Federal patent law does not explicitly preempt

state trade secret laws. See 35 U.S.C. §§ 1-376 (2000). Neither has Congress

evinced an intent to occupy exclusively the entire intellectual property field

associated with inventions. Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 478-

79 (1974). Our only concern in this case is thus narrowed to conflict preemption.

Conflict preemption arises when state law “stands as an obstacle to the

See Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc., 528 F.3d 1258,

2

1262 (10th Cir. 2008) (summary judgment reviewed de novo); Williams v. W.D.

Sports, N.M., Inc., 497 F.3d 1079, 1086 (10th Cir. 2007) (judgment as matter of

law reviewed de novo); Weese v. Schukman, 98 F.3d 542, 547 (10th Cir. 1996)

(motion for new trial reviewed de novo when it turns on a question of law).

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accomplishment and execution of the full purposes and objectives of Congress,”

as expressed in this case in the Patent Act. Id. at 479 (citations omitted). When it

comes to assessing this question, two particular doctrinal strands bear upon our

analysis, one illustrated by Kewanee Oil, the other by Bonito Boats, Inc. v.

Thunder Craft Boats, Inc., 489 U.S. 141 (1989).

1

In Kewanee Oil, the Supreme Court confronted the question whether the

Patent Act preempted a claim for violation of Ohio’s trade secret law, a law

substantively identical for our purposes to the Utah trade secret statute under

which Mr. Russo sought relief in this case. At the outset, the Court readily

acknowledged that good arguments could be mustered for preempting traditional

state trade secret claims. Even so, the Court ultimately took the view that such

3

claims do not fatally conflict with federal patent law. Kewanee Oil Co., 416 U.S.

at 484-491; see also Aronson v. Quick Point Pencil Co., 440 U.S. 257, 262-63

(1979) (same holding with respect to contract claims for breach of a royalty

agreement).

As have commentators who take issue with Kewanee Oil’s analysis. See,

3

e.g., Sharon K. Sandeen, Kewanee Revisisted: Returning to First Principles of

Intellectual Property Law to Determine the Issue of Federal Preemption, 12

Marq. Intell. Prop. L. Rev. 299 (2008) (noting that Kewanee did not address the

trade secret laws of all states and that there have been significant changes in

patent law since 1974).

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In reaching its conclusion, the Kewanee Oil Court stressed that traditional

state trade secret laws and federal patent law usually serve complementary, not

conflicting, purposes. Both create incentives to invention, after all, and plainly

“[i]n this respect the two systems are not and never would be in conflict.” 416

U.S. at 484. Trade secret serves this shared purpose, moreover, in arenas “where

patent law does not reach,” thus mitigating the potential for conflict between the

two systems of law. Id. at 485. Trade secret laws operate only to protect those

ideas held in secret, while patent law affords the exclusive means of protecting

the right to an invention only after it is disclosed to the public. Id. Similarly,

trade secret law applies to innovations that may not ever be amenable to patent,

given patent law’s strict requirements of novelty, utility, and non-obviousness.

Id. The Kewanee Oil Court also emphasized the social costs associated with

preempting state trade secret laws. Without trade secret protection, the Court

observed, the holders of trade secrets would be discouraged from sharing their

ideas with potential manufacturers who, in such a regime, could not be bound to

pay a license fee or protect any secret. Id. at 486. Such a rule of law would serve

to encourage the “hoard[ing] rather than [the] disseminat[ion]” of knowledge,

requiring trade secret holders to “engage in the time-consuming and economically

wasteful enterprise of constructing duplicative manufacturing and marketing

mechanisms” to get their ideas to market. Id. at 486-87. Such inefficiencies

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would deter the development and dissemination of scientific and technological

innovations, causing “society, as a whole, [to] suffer,” id. at 486, a result, the

Court emphasized, that “cannot be justified by reference to any policy that the

federal patent law seeks to advance,” id. at 487. Indeed, if anything, such a

regime would be inimical to patent law’s primary purpose, embodied in our

Constitution, of “promot[ing] the Progress of Science and the useful Arts.” U.S.

Const. Art. I, sec. 8, cl. 8.

At the same time, the Kewanee Oil Court was not blind to costs and

considerations on the other side of the ledger. Though not all trade secrets are

amenable to patent, many are, and the potential for conflict between state and

federal law is, for these secrets, at its “peak.” Id. at 489. Federal law expresses a

strong interest in seeing that patentable innovations do not stay bottled up in

secret but are instead shared with the public in order to promote social progress.

This interest is most obviously embodied in patent law’s bargain of providing

inventors with many years of monopoly rents in return for the public’s

opportunity to use and enjoy their ideas. Id. But even for this class of trade

secrets – those amenable to patent and thus for which there is a strong interest in

their public dissemination – the Court ultimately declined to preempt traditional

state trade secret laws. It did so reasoning that, even here, trade secret laws pose

“no reasonable risk” of deterring inventors with patentable ideas from sharing

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their work with the world through the patent process. Id. Trade secret laws, after

all, provide “far weaker protection” than patent law in critical respects. Id. at

489-90. While proof of inventorship under patent law operates “‘against the

world,’ forbidding any use of the invention for whatever purpose for a significant

length of time,” and affording monopoly rents during that period, trade secret

laws do nothing to foreclose others from discovering the trade secret holder’s idea

(either independently or by means of reverse engineering) and exploiting it for

profit publicly. Id. at 490. So, “[w]here patent law acts as a barrier, trade secret

law functions relatively as a sieve,” and a rational inventor would have every

reason to choose the barrier over the sieve. Id. at 490. Of course, there is the

possibility that the occasional “rare inventor” will choose trade secret protection

over patent protection, even where a patent is available. Id. But this, the Court

held, is no cause for (serious) concern. Patent law’s objective of encouraging

scientific and technological progress is not likely to be significantly impeded

because, “[i]f something is to be discovered at all very likely it will be discovered

by more than one person.” Id. As the Court put it, “[i]f Watson and Crick had

not discovered the structure of DNA it is likely that Linus Pauling would have

made the discovery soon.” Id. at 490, n.19. So, “[e]ven were an inventor to keep

his discovery completely to himself, something that neither the patent nor trade

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secret laws forbid, there is a high probability that it will be soon independently

developed.” Id. at 490-91.

4

Under the arrangement contemplated by the Court in Kewanee Oil, then,

inventors have a choice. They may keep their ideas secret with the protection of

state law but run the risk of potential independent discovery by others. Or they

may disclose their ideas and enjoy the ensuing legal monopoly afforded by federal

patent law. See Bonito Boats, 489 U.S. at 149 (“[I]t is a condition upon the

inventor’s right to a patent that he shall not exploit his discovery competitively

after it is ready for patenting; he must content himself with either secrecy or legal

monopoly.”) (quoting Metallizing Eng’g Co. v. Kenyon Bearing & Auto Parts Co.,

153 F.2d 516, 520 (2d Cir.) (L. Hand, J.), cert denied, 328 U.S. 840 (1946)).

2

To say that traditional trade secret claims can peacefully coexist with patent

law, however, is not to say that states may freely regulate the dissemination of

potentially patentable innovations. Far from it. The Court in Kewanee Oil

cautioned that, if “a State, through a system of protection, were to cause a

substantial risk that holders of patentable inventions would not seek patents, but

rather would rely on the state protection, we would be compelled to hold that such

See also id. at 490 (citing for support Singletons and Multiples in

4

Science (1961), in R. Merton, The Sociology of Science 343 (1973); J. Cole & S.

Cole, Social Stratification in Science 12-13, 229-230 (1973); Ogburn & Thomas,

Are Inventions Inevitable?, 37 Pol.Sci.Q 83 (1922)).

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a system could not constitutionally continue to exist.” 416 U.S. at 489. This

warning anticipated and was amplified by the Court’s holding fifteen years later

in Bonito Boats.

In Bonito Boats, the Court faced a Florida statute that made it “unlawful for

any person to use the direct molding process to duplicate for the purpose of sale

any manufactured vessel hull or component part of a vessel made by another

without the written permission of that other person.” 489 U.S. at 144-45. In

essence, the Florida law afforded vessel hull designers who had already made

their designs publicly known (by manufacturing and selling boats embodying their

designs) with protections different from, and more extensive than, federal patent

law. Plainly, Florida sought to protect its highly prized boat design industry from

what it considered to be undesirable competition.

The Court had no difficulty holding Florida’s statute preempted by federal

patent law, explaining that states “may not offer patent-like protection[s]” to

publicly disclosed ideas because “the ultimate goal of public disclosure and use

which is the centerpiece of federal patent policy” is contravened by “[a] state law

that substantially interferes with the enjoyment of an unpatented utilitarian or

design conception which has been freely disclosed by its author to the public at

large.” Id. at 156-57. Simply put, once an idea is in the public domain, federal

patent law controls; states may not further insulate their inventors from (or expose

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them to) competition. Still, the Court in Bonito Boats took pains to reaffirm

Kewanee Oil, and underscore the compatibility of its holdings. The Court

explained that, so long as “the veil of secrecy” continues to shroud an idea, it

remains “private” property amenable to state trade secret laws. Id. at 149.

Federal law requires only, but significantly, that, once that veil is lifted, an

inventor must choose between “the protection of a federal patent or the dedication

of his idea to the public at large,” by placing it in the public domain. Id.

B

With this guidance in hand, we turn to the specifics of Ballard’s preemption

argument, which itself divides into two parts. First, Ballard submits that the

liability case Mr. Russo tried was “irreconcilable with the presumption of

inventorship arising from Ballard’s patents.” Appellant’s Br. at 5. Second, even

if Mr. Russo’s liability case is consistent with federal patent law, Ballard argues

that the damages he sought are not. In Ballard’s view, the district court intruded

on Ballard’s patents by instructing the jury to award, or allowing Mr. Russo to

seek and obtain, the full value of Ballard’s invention per se, rather than the value

of his misappropriated trade secret. We address each of these preemption claims

in turn.

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1

Ballard complains that, at trial, Mr. Russo cast himself as the “true

inventor” of the Trach Care 72, and that any question of inventorship must be

established under federal patent law standards. In Ballard’s words, “Russo’s

claims depended upon establishing that he, and not [Ballard’s engineers], was the

true inventor of the subject matter of Ballard’s patents.” Appellant’s Br. at 45.

And any such claim, Ballard submits, “is irreconcilable with Ballard’s patents.”

Id. at 46.

We do not agree. As was true of his complaint, see supra Part II, no

question of federal patent law was raised by Mr. Russo’s trial. He did not seek to

be proclaimed the inventor of Ballard’s patents, or seek any of the rights

associated with inventorship of a patent (e.g., right to exclude the public from

exploiting the ideas embodied in those patents). Instead, like any other plaintiff

proceeding under traditional trade secret laws, Mr. Russo simply sought to

establish that he had a valid trade secret; that he disclosed his secret to Ballard

under terms precluding the company from making use of the secret without his

consent; that Ballard violated that trust; and that Ballard’s conduct caused him

harm. Indeed, the court’s instructions to the jury on the elements necessary to

find liability tracked precisely the elements of Utah trade secret law, and did not

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call upon the jury to decide any question falling within patent’s domain.

Compare Jury Inst. 18 & 20 with U.C.A. 1953 § 13-24-1, et seq.

Exactly the same can be said of Mr. Russo’s CDA claim. At trial, Mr.

Russo sought simply to establish, consistent with entirely unremarkable breach of

contract jury instructions, that Ballard breached the terms of its written promise to

maintain Mr. Russo’s confidences. The jury in this case was asked to decide

whether Ballard disclosed Mr. Russo’s secret, as he alleged, “by some ‘improper

means’” and in violation of the parties’ agreement, or whether the company

discovered his idea independently “by fair and honest means,” a question

Kewanee Oil has held may be tried under state law without running afoul of

federal patent law. 416 U.S. at 475-76.

5

To be sure, Mr. Russo pointed at trial, precisely as he did in his complaint,

to Ballard’s patents as evidence of how Ballard misappropriated his secret and

breached the CDA. But this bare fact does not necessarily mean that his trial

raised any question of federal patent law, as we have already noted, see supra Part

In fact, Mr. Russo testified that he had no ability to manufacture

5

catheters and, precisely because of this fact, wanted to ensure his idea’s secrecy

until he could secure a licensing agreement with a company that had the necessary

manufacturing capacity. This, of course, is exactly one of the purposes trade

secret law serves in harmony, not at odds, with federal patent law. See Kewanee

Oil, 416 U.S. at 493 (patent and trade secret law do not conflict in part because

“[t]rade secret law promotes the sharing of knowledge, and the efficient operation

of industry; it permits the individual inventor to reap the rewards of his labor by

contracting with a company large enough to develop and exploit it”); see also

supra Part III.A.1.

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II, let alone suggest that Mr. Russo sought rights associated with being a patent’s

inventor. As our sister circuit explained in the face of an identical challenge,

“[t]he fact that [the defendant] improperly secured [a] patent and used this patent

to obtain incremental profits” can be properly used as evidence to show

misappropriation of a trade secret and the extent of the plaintiff’s resulting

damages without suggesting that “[t]he right involved here . . . is . . . ‘patent-like’

at all.” Univ. of Colorado Found., Inc. v. American Cyanamid, 342 F.3d 1298,

1306 (Fed. Cir. 2003). Were the law otherwise, it would be incongruous indeed.

Any defendant could (and would have a significant incentive to) insulate itself

from a trade secret misappropriation claim simply by patenting the stolen idea.

And Kewanee Oil’s holding that trade secret and patent law can coexist would be

significantly impaired because patent law would preempt many (if not most) trade

secret claims.

Ballard’s arguments from precedent undermine, rather than bolster, its

cause. The company relies heavily on University of Colorado Foundation Inc. v.

American Cyanamid, 196 F.3d 1366 (Fed. Cir. 1999), in asserting that federal

inventorship standards should have been used to determine if Mr. Russo was

entitled to his relief. In American Cyanamid, two University of Colorado

research physicians helped American Cyanamid reformulate a prenatal

multivitamin/mineral supplement, sharing a confidential manuscript with the

company. Without the doctors’ knowledge, however, the company eventually

- 22 -
patented a new formula using their research. The doctors and the university sued

alleging, among other things, that the company wrongfully used its confidential

materials, failed to list them as inventors on the patent, and failed to disclose the

patent application to them. In a holding Ballard highlights, the Federal Circuit

held that some of the claims implicated the question of inventorship and the right

to exclude the public from using their invention and, accordingly, had to be

decided under federal, not state, law. Id. at 1372.

But this tells only half the story. While some of the doctors’ claims

involved patent law issues that had to be decided under federal law, the Federal

Circuit went on to hold that not every claim brought by the doctors did so,

explaining that “federal patent law does not preempt . . . state law claims” for

unjust enrichment for “wrongful use of the Doctors’ research results.” Id. at

1371-72. Ballard also neglects to mention that, after the case was remanded and

eventually returned to it, the Federal Circuit reaffirmed this point, holding that the

doctors’ unjust enrichment claim was properly adjudicated under state law. As

our sister circuit explained, the doctors’ unjust enrichment claim “is not ‘patentlike’ at all, . . . [but springs] from Cyanamid’s alleged wrongful use of the

Doctors’ research results. . . . [T]he Doctors’ claim of unjust enrichment is a legal

claim to remedy the breach of contract implied in law for disclosure of their

confidential manuscript in exchange for a promise not to disseminate the idea

without the Doctors’ consent.” American Cyanamid, 342 F.3d at 1306. The line

- 23 -
drawn by the Federal Circuit in American Cyanamid is thus the very same line we

have drawn here, and the same one drawn by the Supreme Court in Kewanee Oil

and Bonito Boats, between those claims, like Mr. Russo’s, that arise from the

misappropriation of a trade secret, which generally may be tried under state law,

and those that seek to exclude others from employing a publicly disclosed idea,

which must be tried under federal patent law.

6

2

Liability aside, Ballard submits that the district court’s jury instructions

wrongly authorized the jury to give Mr. Russo the full benefit of its

Trach Care 72 product per se. As Ballard puts it, “the district court should have

limited Russo’s recovery to damages appropriate to misappropriation” of a trade

Ballard’s citation to Ultra-Precision Mfg., Ltd. v. Ford Motor Co., 411

6

F.3d 1369, 1382 (Fed. Cir. 2005), is no more helpful to its cause. There, the

Federal Circuit faced a claim by a Ford Motor Company supplier, Ultra-Precision,

that Ford took its idea for decreasing noise and vibration in car air conditioning

systems without appropriate compensation. Although Ultra-Precision had not

patented the technology used by Ford, “‘one of ordinary skill in the art’ could

readily glean the concept” from two of Ultra-Precision’s existing patents. Id. at

1380. The Federal Circuit held the claim preempted. In doing so, the court

emphasized that Ultra-Precision expressly disclaimed any clam associated with

exploitation of a trade secret – it “never alleged that it enjoyed a confidential

relationship with Ford or that its technical information enjoyed trade secret

protection.” Id. Instead, Ultra-Precision sought damages only for the

unauthorized use of its publicly available information. Id. The court held simply

and sensibly that, while state law can surely protect trade secrets, the protection

of publicly disclosed ideas is the exclusive domain of federal patent law. Id. By

its terms, this holding has no application to a traditional trade secret case like the

one now before us.

- 24 -
secret, but “[i]nstead, the court allowed the jury to award Russo damages for the

value of the invention per se.” Appellant’s Br. at 53. The district court’s award,

Ballard complains, “represents a value protected exclusively by patent law,” id.,

and, to avoid any interference with patent law, the court should have limited Mr.

Russo’s damages to the “incremental profits derived from use of [his] idea, rather

than total profits from selling [a] product incorporating [that] idea.” Id. at 54.

Alternatively, Ballard submits that, even if the district court correctly instructed

the jury that Mr. Russo was entitled only to the incremental value his trade secret

added to Ballard’s product, Mr. Russo tried his case in a way that allowed him to

evade the district court’s instructions and recoup the full value of Ballard’s

patents per se. Id. at 55. As a matter of fact, Ballard contends, Mr. Russo asked

the jury “to award, and [the jury] did award, Russo damages for the value of the

invention per se.” Id. at 56.

We do not necessarily disagree with the premise undergirding Ballard’s

arguments. It may be that a state law claim automatically (or per se) guaranteeing

a plaintiff the full value of a defendant’s patents could interfere with federal

patent law. But that simply is not the sort of claim we have before us. In any

trade secret or breach of a CDA trial, a properly instructed jury may award the

plaintiff only those damages it has suffered, or the amount the defendant has been

enriched, by virtue of the defendant’s misconduct. By dint of this required causal

link between the defendant’s misconduct and the plaintiff’s recovery, the plaintiff

- 25 -
is precluded from obtaining any earnings the defendant received, or value it

derived, from other causal factors, including its own innovative work.

Recognizing just these points, the district court in this case never required or

permitted Mr. Russo to recover the value of Ballard’s product or patents per se.

Instead, in describing the scope of Mr. Russo’s permissible damages in

connection with his trade secret claim, the court instructed the jury to award only

those damages “caused by [Ballard’s] violation [of Utah’s trade secret law]. . . .

Damages for misappropriation of a trade secret may include the actual loss to Mr.

Russo caused by the misappropriation. But damages may also include any unjust

enrichment flowing to the party that misappropriated the trade secret. In this

context, unjust enrichment is defined as the reasonable value of the benefit that

the party who misappropriated the trade secret has gained from disclosing or

using the trade secret.” Jury Inst. 26. Similarly, the court instructed that damages

for breach of the CDA had to be limited to those that Ballard “had reason to

foresee, at the time the contract was made, as a probable result of that contract.”

Jury Inst. 27.

With respect to both claims, then, the district court properly informed the

jury that Mr. Russo could recoup only amounts causally attributable to Ballard’s

misconduct, not to other factors, including Ballard’s own hard work. In this way,

our case again parallels American Cyanamid, where the Federal Circuit held that

the plaintiffs could and did, without impinging on federal patent law interests,

- 26 -
recoup the “incremental profits” earned by the defendant company that were

“attributable to its misconduct” when it improperly secured a patent using the

plaintiffs’ confidential manuscript. 342 F.3d at 1311. We concur, and so did the

district court, which recognized just these points and correctly instructed the jury

to abide them in this case.

7

To be sure, Mr. Russo suggested that Ballard was able to extend the useful

life of its product, and thus offer the Trach Care 72, only because of its

exploitation of his trade secret. That is, in Mr. Russo’s view, all of Ballard’s net

profits on its Trach Care 72 were causally attributable to its misappropriation of

his ideas rather than any other source. But in pursuing this line of argument, Mr.

Russo did not suggest that a trade secret violation automatically and per se

entitled him to the full value of the patents Ballard later secured. Rather, Mr.

Russo argued that, on the facts of this particular case, the evidence showed the

incremental value his trade secret added to Ballard was to transform the useful

life span of its Trach Care product from 24 to 72 hours. Ballard cites no authority

While now arguing that the district court failed to link Mr. Russo’s

7

damages to Ballard’s misconduct, at trial Ballard quite happily argued on the

basis of the district court’s instructions that Mr. Russo’s damages should be

minimal because its own innovative hard work was responsible for the bulk of its

profits on the Trach Care 72 product. See Aplt. App. at 2449 (arguing that Mr.

Russo admitted “his alleged trade secret contribution to this product would not

have exceeded 20 percent” and what Mr. Russo is “providing is a single trade

secret. You cannot trump all that other invented intellectual property for other

patents.”).

- 27 -
suggesting that this is an impermissible theory under trade secret law, or that it

somehow impermissibly trenches on federal patent law, and we are aware of none.

See generally C&F Packing Co., Inc. v. IBP, Inc., 224 F.3d 1296, 1304 (Fed. Cir.

2000) (the jury was free to decide whether defendant’s misappropriation was

responsible for 100% of its profits on a particular product, as plaintiff claimed the

evidence suggested, or 30%, as defendant claimed). Of course, Ballard contests

whether sufficient evidence exists in the trial record from which a reasonable jury

could find that the incremental value added by Mr. Russo accounts for the full

difference between Ballard’s Trach Care 24 and 72 products, and we recognize

the viability of this argument and take it up in earnest shortly, see infra Part IV.

But, for our current purposes, the dispositive point is that Ballard has identified

no legal impediment in patent law to Mr. Russo’s right to recover the full

incremental value added by his misappropriated trade secret, whatever that may

be, and in these circumstances we are unable to reverse the jury’s award.

8

Ballard voices a similar complaint when it contends that the Utah trade

8

secret statute allows a plaintiff to recoup only damages arising from his or her

contributions wrongly taken by the defendant, not from the defendant’s

independent contributions. Appellant’s Br. at 62 (arguing that Mr. Russo failed to

apportion damages). And this is surely a fair view of Utah law. Utah Code Ann.

1953 § 13-24-4(1) (“Damages can include both the actual loss caused by

misappropriation and the unjust enrichment caused by misappropriation that is not

taken into account in computing actual loss.”) (emphasis added). But, again, this

legal principle simply was not in dispute at trial. Indeed, the district court’s jury

instructions tracked the pertinent statutory language. At trial, the parties’ dispute

focused on the simple factual question whether and to what degree the Trach Care

(continued...)

- 28 -
IV

As we have foreshadowed, Ballard’s legal arguments bleed into a factual

one, with the company next contending that the $20 million in damages the jury

awarded exceeded what the record evidence could support. We may, of course,

reverse a jury’s award for lack of a sufficient evidentiary basis when, but only

when, viewing the evidence in the light most favorable to the prevailing party, the

amount of damages awarded is “clearly erroneous, or there is no evidence to

support it.” Hudson v. Smith, 618 F.2d 642, 646 (10th Cir. 1980); Bitler v. A.O.

Smith Corp., 391 F.3d 1114, 1128 (10th Cir. 2004).

Those circumstances do not pertain here. With respect to the jury’s $17

million unjust enrichment award, the parties presented competing evidence about

the incremental value added by Mr. Russo’s contributions to Ballard’s Trach Care

72 product. Mr. Russo took the position and presented evidence suggesting that

the only material difference between Ballard’s Trach Care 24 and 72 products

stemmed from its exploitation of his trade secrets; accordingly, in his view, he

was entitled to the present value of Ballard’s expected net profits on its Trach

Care 72 product, or $32 million. Critically, Ballard does not now contest the

admission of Mr. Russo’s evidence suggesting that he was solely responsible for

(...continued)

8

72 product owed its existence to Mr. Russo’s contributions versus Ballard’s. And

on that question, the jury was free to choose any amount supported by the

evidence.

- 29 -
the innovations contained in Ballard’s Trach Care 72 product; instead, it points us

to, and asks us to credit, its contrary evidence suggesting that Mr. Russo’s

contributions added nothing, or very little of value, to its independent work. As

is often the case, the jury found the truth to lie somewhere in between the

extremes suggested by the evidence received at trial, returning an award that

represented 53% of the damages Mr. Russo sought. When the damages awarded

by the jury fall within the range permitted by the evidence admitted at trial (and

whose admission is unchallenged on appeal), we may not second guess the award.

See C&F Packing Co., 224 F.3d at 1304 (“In setting damages, the jury’s function

is to weigh contradictory evidence, to judge the credibility of the witnesses, and

to resolve factual disputes.”); Hudson, 618 F.2d at 646; Bitler, 391 F.3d at 1128.

Much the same holds true for Mr. Russo’s breach of contract claim.

Ballard stresses that Mr. Russo’s own expert estimated that the 3% royalty the

parties discussed would yield $2.751 million over the life of Ballard’s patents, not

the $3 million awarded by the jury. But Mr. Russo’s expert testified that his

$2.751 million estimate was “conservative” because, among other things, it

employed a 5% annual sales growth figure when Ballard achieved a 42% growth

rate in the period 2001 to 2005 and a 17% growth rate in the period 2004 to 2005.

Aplt. App. at 1679. In addition, the expert calculated royalties only through the

life of the patent (because after such time, anyone could access the technology),

- 30 -
even though he testified such products often have a “very long life.” Id. at 1683.

Mr. Russo’s expert testified that modest changes in any of the assumptions he

employed would yield a significantly greater award. Ballard does not contest that

the evidence could support changes in the expert’s assumptions, or that such

changes supported by the evidence could yield damages in excess of $3 million.

Accordingly, we again are in no position to say that the jury’s award was “clearly

erroneous, or [that] there is no evidence to support it.” Hudson, 618 F.2d at 646.

V

While we have addressed Ballard’s central arguments, it presents a flurry of

additional, but significantly less developed arguments for overturning the jury’s

damages award. We address the most colorable of these claims here, but find

none persuasive.

First, Ballard asserts that Mr. Russo’s unjust enrichment and royalty

damages should be limited to, and not extend beyond, the two-year contract

period discussed in the CDA. This argument, however, depends on a

misconstruction of the CDA and a selective view of the evidence. While the CDA

indicated that Ballard’s obligations to keep Mr. Russo’s secrets only extended for

two years, it imposed no limit on the damages Mr. Russo could seek in the event

Ballard chose to breach the agreement. To be sure, Ballard argues that it was free

to make use of the information disclosed by Mr. Russo after the CDA expired.

- 31 -
But it could do so lawfully only if neither Mr. Russo nor anyone else secured

patents covering Mr. Russo’s innovations during the CDA’s two-year term.

Ballard strains to suggest that the evidence at trial, as a matter of law,

demonstrates that this surely would have been the case. But a strain it is. Ballard

points only to the fact that Mr. Russo had not patented or licensed his ideas to

another company by the time of its breach. Meanwhile, competing record

evidence shows that Mr. Russo was no stranger to the patent process, having

patented other ideas previously, and thus that he was presumably able to patent

his latest innovations, too. In fact, Mr. Russo testified that the only reason he had

not yet incurred the expense of patenting his catheter improvement ideas was

because of the parties’ confidentiality agreement protecting against Ballard’s use

of his ideas. Mr. Russo further testified that he was still anticipating that

Ballard’s demonstrated interest in his ideas would lead it, “sooner or later,” to

license them before the CDA expired. Aplt. App. at 1228; see also id. (“Ballard

was the largest manufacturer of closed trach suction systems in the world. . . . I

knew what I had. They already offered me a substantial amount of money, and I

felt that sooner or later they would come back to me.”). Plainly, the jury was free

to conclude on the basis of these facts that Mr. Russo had a valid reason for

waiting to patent his idea and that, in the event the parties’ negotiations did not

yield a licensing agreement within two years, he was able and ready to secure

- 32 -
appropriate patents that would have foreclosed Ballard’s use of his ideas without

his consent.

Second, Ballard argues that its misappropriation of Mr. Russo’s trade

secrets at most only gave the company a “head start” to a result it would have

eventually achieved on its own, and that the district court should have given its

proffered jury instruction underscoring this point. Under the so-called “head

start” or “lead time” rule, adopted in some jurisdictions, a trade secret defendant’s

damages may be limited to the time the defendant saved in getting a product to

market by virtue of its misappropriation. See Uniform Trade Secrets Act §§ 2-3

cmts. Ballard has failed to point us to a single Utah case adopting the head start

rule, but even side-stepping this deficiency and assuming Utah embraces the rule,

we discern no reversible error in the district court’s jury instructions. The jury

was instructed that unjust enrichment “is defined as the reasonable value of the

benefit that the party who misappropriated the trade secret has gained from

disclosing or using the trade secret,” and that it “may only award damages for a

time period equal to the amount of time (1) you find that Mr. Russo’s trade secret

would be entitled to protection, plus (2) any additional period, if any, that you

find that the trade secret afforded the particular Defendant a competitive

advantage.” Jury Inst. 26. One may well be able to improve on these instructions

as an enunciation of the head start principle. However, as the district judge made

- 33 -
clear in its discussions with counsel, see Aplt. App. at 2112, Ballard was free to

argue, consistent with these instructions, that its misappropriation of Mr. Russo’s

trade secrets only benefitted it by the time period in which the misappropriation

afforded the company a head start to market. Not only does Ballard concede that

it made just such an argument to the jury, see Aplt. Reply Br. at 43, but the jury’s

ultimate award of unjust enrichment, which, again, amounted to only 53% of what

Mr. Russo’s expert calculated Ballard’s net profits from the lifetime of the patents

to be, is consistent with the adoption of Ballard’s argument. In these

circumstances taken as a whole, we cannot say that the district court’s failure to

give Ballard’s proffered instruction amounted to an abuse of discretion, or that its

instructions failed to inform the jury fairly of the governing law. See Brown v.

Wal-Mart Stores, Inc., 11 F.3d 1559, 1564 (10th Cir. 1993) (we “consider all that

the jury heard and, from [the] standpoint of the jury, decide not whether the

charge was faultless in every particular but whether the jury was misled in any

way and whether it had [an] understanding of the issues and its duty to determine

those issues”) (quotations omitted); United States v. Holly, 488 F.3d 1298, 1302

(10th Cir. 2007) (We “review a district court’s decision to give [or decline to

give] a particular jury instruction for an abuse of discretion and consider the

instructions [as given] as a whole de novo to determine whether they accurately

informed the jury of the governing law.”).

- 34 -
Third, and finally, Ballard argues that unjust enrichment damages are

inappropriate as a matter of law for the misappropriation of a trade secret where,

as here, the plaintiff was willing to license his or her idea. Appellant’s Br. at 58.

Elsewhere in its brief, Ballard returns to this theme, suggesting that, because Mr.

Russo had no independent means of bringing his idea to market, “the only way

Russo could have profited” from his idea without licensing it to Ballard would

have been to license it to another party such that his innovations would no longer

be secret. Appellant’s Br. at 68. Given these circumstances, Ballard submits,

9

the district court should have allowed Mr. Russo to recoup only royalty, not

unjust enrichment, damages.

We cannot agree. In Ballard’s view, unjust enrichment damages are

appropriate only when the defendant has used a misappropriated trade secret to

compete with the plaintiff, because there the defendant’s profits serve as a proxy

for the plaintiff’s lost profit. See Appellant’s Br. at 59 (citing Mid-Michigan

Computer Sys., Inc. v. Marc Glassman, Inc., 416 F.3d 505, 510 (6th Cir. 2005));

see also Restatement (Third) of Unfair Competition § 45, cmt. d (noting that one

measure of monetary relief for misappropriation is the award of plaintiff’s profit

While afforded its own heading, Ballard devotes only 10 lines to this

9

argument in its brief. We believe it is a related and further refinement of the first

line of argument concerning Mr. Russo’s willingness to license the technology to

Ballard, but any misapprehension on this score must be attributable to the

argument’s lack of development. See W.D. Sports, 497 F.3d at 1095; United

Transp. Union v. Dole, 797 F.2d 823, 827 (10th Cir. 1986).

- 35 -
loss). While perhaps a plausible position as a policy matter, the problem with

Ballard’s argument is that the Utah legislature has rejected it. Under Utah Code

Ann. § 13-24-4(1), a plaintiff has the express choice of seeking unjust enrichment

damages to remedy trade secret misappropriation. See supra n.8 (quoting

statutory language). Apparently, it was the Utah legislature’s desire to ensure that

misappropriators are not allowed to keep ill-gotten gains from their unlawful acts

of misappropriation.

Neither is Utah alone in its judgment. The Restatement recognizes that

unjust enrichment awards can in these circumstances serve a legitimate deterrent

function, see Restatement (Third) of Unfair Competition § 45, cmt. g (“Since the

imposition of a reasonable royalty requires the defendant to pay only the amount

it would have paid had it fairly bargained for use of the plaintiff’s secret, it may

not adequately discourage the appropriation of trade secrets.”), and the Supreme

Court has acknowledged that one of the functions of trade secret law is to ensure

that “industrial espionage is [not] condoned or . . . made profitable,” Bonito

Boats, 489 U.S. at 155. Unlike a standard breach of contract claim, after all, a

misappropriation claim involves an allegation of theft, and it is not unknown to

require a thief to return not only what was stolen, but any additional

consequential profits he or she reaped as a result of his or her wrongful actions.

While it is true that the unjust enrichment award put Mr. Russo in a much better

- 36 -
position than if he had entered a licensing agreement with Ballard, under Utah

law, Ballard, as the party that acted wrongfully, must assume the risk it took by

misappropriating rather than licensing Mr. Russo’s secret. Neither are we free to

substitute our judgment for that of the Utah legislature on this score. See also

American Cyanamid, 342 F.3d at 1311 (rejecting materially identical argument

under Colorado law).

10

VI

Relatedly, Ballard fleetingly suggests that the Utah Trade Secrets Act

10

prohibits the award of both unjust enrichment damages and royalty. But the

royalty awarded by the jury was not associated with Mr. Russo’s claim under the

trade secrets statute. Instead, it was associated with a separate contract claim for

breach of the CDA and represented his estimated actual loss based on the parties’

actual history of negotiations. Ballard offers no reason or authority suggesting

that the Act serves to limit damages obtained in a separate contract action. In

fact, even under the Act itself damages “can include both the actual loss caused

by misappropriation [including as measured by royalty] and the unjust enrichment

caused by misappropriation that is not taken into account in computing actual

loss.” U.C.A. 1953 § 13-24-4. See also Water & Energy Sys. Tech., Inc. v. Keil,

48 P.3d 888, 894 (Utah 2002) (under Utah law, plaintiff can recover both actual

damages and unjust enrichment as long as the awards are not duplicative). Of

course, this is not to say that a party may receive the same damages twice simply

by seeking two forms of relief or invoking two different causes of action. See

Morrison Knudsen Corp. v. Ground Improvement Techniques, Inc., 532 F.3d

1063, 1080 (10th Cir. 2008) (when it is clear that duplication occurred the “court

must . . . reduce the verdict by the amount duplicated”). But Ballard has

presented to us no complaint about duplicative awards, and it would be difficult

to see how it could. Even if Mr. Russo’s request for $32 million in unjust

enrichment damages overlapped with the approximately $3 million he sought in

royalty payments, a fact neither argued to us nor clear from the record, the jury

awarded only 53% of the requested $32 million in unjust enrichment damages,

leaving ample room for a non-duplicative $3 million royalty award.

- 37 -
Having exhausted Ballard’s appeal, we must still confront Mr. Russo’s

cross-appeal. Mr. Russo contends that the district court erred in denying his

motion for interest on his damages award for the period between the issuance of

the jury verdict and the entry of the judgment, a period of approximately four

months in this case.

Whether post-verdict, pre-judgment interest is recoverable in diversity

cases is a question of state law. See Chesapeake Operating, Inc. v. Valence

Operating, Inc., 193 F.3d 1153, 1156 (10th Cir. 1999). Mr. Russo argues that the

plain language of Rule 54(e) of the Utah Rules of Civil Procedure requires the

issuance of post-verdict interest in every civil case. That Rule provides in

relevant part that

[t]he clerk must include in any judgment signed by him any interest

on the verdict or decision from the time it was rendered, and the

costs, if the same have been taxed or ascertained. The clerk must,

within two days after the costs have been taxed or ascertained, in any

case where not included in the judgment, insert the amount thereof in

a blank left in the judgment for that purpose.

As Mr. Russo reads the Rule, the term “the same” refers only to “costs”; thus, in

his view, the Rule requires the clerk to add interest on the verdict as a matter of

course, and to add costs only if they have already been “taxed or ascertained.”

We do not question that Mr. Russo’s interpretation of the Rule is at least a

plausible one, particularly given that the comma following “rendered” sets apart

the references to interest and costs such that the subordinate clause, “if the same

- 38 -
have been taxed or ascertained” appears to modify only “costs.” Without that

comma, the “same” would have more clearly referenced both interest and costs.

Notably, too, the term “taxed or ascertained” appears again in the second

sentence, and there applies only to costs, making no reference to interest. We

also acknowledge that states with similar rules sometimes do authorize postverdict, pre-judgment interest, just as Mr. Russo seeks here.

11

The difficulty with Mr. Russo’s reading of the Rule, as Ballard points out,

is that, if it were correct, post-verdict, pre-judgment interest would be an

everyday matter in Utah. Yet, Mr. Russo cites to us not a single Utah case

adopting his view of Rule 54(e). And while the Rule is no model of clarity,

Ballard notes that it does not unavoidably suggest that “the same” refers to both

“interest” and “costs.” It is at least possible, Ballard stresses, that only interest

and costs “taxed or ascertained” by the trial court should be added to a verdict

amount before its final entry as a judgment; and because the trial court did not tax

or ascertain any interest here, none was properly included in the judgment.

See, e.g., Simmons v. New York City Transit Auth., No. CV-02-1575,

11

2008 WL 3251391, at *1 (E.D.N.Y. July 31, 2008) (under New York law, postverdict, pre-judgment interest should always be entered to “indemnify successful

plaintiffs for the nonpayment of what is due to them . . .”); Mgmt. Computer

Servs., Inc. v. Hawkins, Ash, Baptie & Co., 592 N.W.2d 279, 282 (Wis. Ct. App.

1998) (Wisconsin law provides that “interest at the rate of 12% per year from the

time of verdict, decision or report until judgment is entered shall be computed by

the clerk and added to the costs”); see also 1 ALR2d 479, Date of Verdict or Date

of Entry of Judgment Thereon as Beginning of Interest Period on Judgment

(discussing diverging state views on this subject).

- 39 -
Perhaps more persuasively still, Ballard draws our attention to Bailey-Allen

Co. v. Kurzet. There, the Utah Court of Appeals expressly held that, at least

where a claim is considered unliquidated before trial, as in the case of a claim

arising in equity or (as here, with respect to Mr. Russo’s primary cause of action)

for unjust enrichment, interest should run “from the date the . . . judgment is

entered, rather than orally rendered” because an oral ruling liquidating damages is

“subject to change before entry.” 876 P.2d 421, 427 n.4 (Utah Ct. App. 1994).

The Bailey court proceeded to cite with favor a Wyoming case declining to

authorize post-verdict, pre-judgment interest on the basis that a “verdict is not

final liquidation of sum due until judgment.” Id. (citing Pure Gas & Chem. Co. v.

Cook, 526 P.2d 986, 993 (Wyo. 1974)). Bailey also cited in support of its

conclusion Utah Rule of Appellate Procedure 32, which provides that, “[u]nless

otherwise provided by law, if a judgment for money in a civil case is affirmed,

whatever interest is allowed by law shall be payable from the date the judgment

was entered.” Id.

In light of this authority, we are unable to conclude that Utah law

definitively authorizes post-verdict, pre-judgment interest in all cases, as Mr.

Russo’s line of argument suggests. The decision whether to do so is a matter for

the legislature and courts of Utah, not us, and, accordingly, we believe it proper

to leave any further development of the law on this point to those authorities. Cf.

- 40 -
Kaiser Aluminum v. Bonjorno, 494 U.S. 827, 835 (1990) (in “the absence of

legislative intent to the contrary, we conclude that postjudgment interest properly

runs from the date of the entry of judgment[,]” not from the date of the entry of a

verdict).

* * *

The judgment of the district court is affirmed.

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