      Case: 16-11381      Document: 00514237248     Page: 1    Date Filed: 11/14/2017




           IN THE UNITED STATES COURT OF APPEALS
                    FOR THE FIFTH CIRCUIT     United States Court of Appeals
                                                       Fif h Circuit

                                                                             FILED
                                                                        November 14, 2017
                                     No. 16-11381
                                                                          Lyle W. Cayce
                                                                               Clerk

MOTION MEDICAL TECHNOLOGIES, L.L.C.; WABASH MEDICAL COM-
PANY, L.L.C.; ORTHOFLEX, INCORPORATED, doing business as Inte-
grated Orthopedics,

                 Plaintiffs - Counter Defendants - Appellees

v.

THERMOTEK, INCORPORATED,

                 Defendant- Counter Claimant- Third Party Plaintiff - Appellant

v.

TRI 3 ENTERPRISES, L.L.C.; THERMO COMPRESSION SOLUTIONS,
L.L.C.; WMI ENTERPRISES, L.L.C.,

                 Third Party Defendants - Appellees

----------------------

THERMOTEK, INCORPORATED,

                 Plaintiff - Appellant

v.

MIKE WILFORD,

                 Defendant – Appellee
    Case: 16-11381    Document: 00514237248     Page: 2   Date Filed: 11/14/2017



                                 No. 16-11381


                Appeal from the United States District Court
                     for the Northern District of Texas


Before SMITH, OWEN, and HIGGINSON, Circuit Judges.
STEPHEN A. HIGGINSON, Circuit Judge:
      ThermoTek, Inc. convinced a jury that Mike Wilford and his companies
engaged in unfair competition and fraud in violation of Texas law. The district
court, however, granted judgment as a matter of law to the defendants, con-
cluding that federal law preempted the unfair competition claim and that
ThermoTek failed to prove its damages for fraud. We affirm.
                                       I.
      ThermoTek designs, manufactures, and sells the VascuTherm system,
which consists of a medical device and specially designed wraps that provide
thermal and compression therapy. ThermoTek sells this equipment to medical
goods distributors, who then sell or lease it to hospitals and clinics. Once a
doctor prescribes VascuTherm, a distributor delivers it to, demonstrates it for,
and fields questions from the patient. The distributor then bills the patient’s
insurance.
      In addition to vending VascuTherm to distributors, ThermoTek trains
those distributors to use and care for the unit and wraps. Distributors receive
access to a password-protected portion of ThermoTek’s website, user manuals,
pricing data, insurance coding information, and other written materials.
      Mike Wilford is an executive of several medical equipment companies,
including Orthoflex, Inc., Motion Medical Technologies, LLC, and Wabash
Medical Co., LLC (the Orthoflex companies). In 2008, Wilford, through his com-
panies, began buying and distributing the VascuTherm system. As a distribu-
tor, Wilford received various ThermoTek materials, including billing codes and

                                       2
     Case: 16-11381       Document: 00514237248          Page: 3     Date Filed: 11/14/2017



                                       No. 16-11381
product manuals. He visited ThermoTek’s facilities at least twice.
       Soon after his companies started purchasing the VascuTherm system,
Wilford reported problems with the product and requested information about
its design, repairs, and manufacturing. ThermoTek believes these reports were
pretexts for Wilford to obtain proprietary information about VascuTherm. In
March 2010, the Orthoflex companies sued ThermoTek in the Northern Dis-
trict of Illinois, alleging breach of the products’ warranties. ThermoTek alleges
that Wilford used the discovery process to obtain additional proprietary infor-
mation, including a non-public version of ThermoTek’s § 510(k) application 1 to
the Food and Drug Administration (FDA) for VascuTherm. Wilford eventually
developed and began selling his own unit and wraps, dubbed the Recovery+
system. ThermoTek ended its relationship with Wilford in August 2010.
       Three months later, in November 2010, ThermoTek sued Wilford and
another of his companies, WMI Enterprises, LLC, for fraud and unfair compe-
tition in Texas state court. 2 Wilford removed that case to the Northern District
of Texas, which then consolidated it with the related breach-of-warranty suit
from Illinois. After several pretrial motions and amended pleadings, the par-
ties tried the following to a jury:
       (1) the Orthoflex companies’ counterclaim against ThermoTek for
           breach of express warranty;
       (2) ThermoTek’s claim against Wilford for fraud;


       1 See Food, Drug, and Cosmetic Act section 510(k) (codified as amended at 21 U.S.C.
§ 360(k)). Under this provision, the FDA may approve some medical devices without “rigor-
ous” testing if they are “substantially equivalent” to other devices exempt from the rigorous
testing requirement. Bass v. Stryker Corp., 669 F.3d 501, 506–07 (5th Cir. 2012) (quoting
Riegel v. Medtronic, Inc., 552 U.S. 312, 317 (2008)).
       2 The label “unfair competition” is an “umbrella” comprising distinct causes of action

under Texas law. U.S. Sporting Prods., Inc. v. Johnny Stewart Game Calls, Inc., 865 S.W.2d
214, 217 (Tex. App.—Waco 1993, writ denied) (“Within the broad scope of unfair competition
are the independent causes of action such as trade-secret law, ‘palming off’ or passing off, and
misappropriation, to name only a few.”).

                                               3
     Case: 16-11381        Document: 00514237248           Page: 4     Date Filed: 11/14/2017



                                        No. 16-11381
       (3) ThermoTek’s claim against Motion Medical, Wabash Medi-
           cal, and Tri 3 Enterprises LLC 3 for breach of contract; and
       (4) ThermoTek’s claim against Wilford and Thermo Compression
           Solutions, LLC 4 for unfair competition by misappropriation.
       Important for our purposes, ThermoTek’s Texas common law claim of
unfair competition by misappropriation was the only unfair competition claim
tried to the jury. Although ThermoTek had pleaded a distinct claim for misap-
propriation of trade secrets, it voluntarily dismissed that claim before trial. 5
       The jury broke ThermoTek’s way. It rejected the Orthoflex companies’
warranty claim, but found for ThermoTek on the fraud, contract, and unfair
competition claims. The jury also awarded ThermoTek more than $7.5 million
in damages for “lost profits.” On the unfair competition claim, it awarded $4
million for infringing unit sales and $2 million for infringing wrap sales. On
the fraud claim, it awarded $770,000 for VascuTherm wrap sales; $500,000 for
VascuTherm unit sales; $193,000 for additional expenses from unit repairs;
$90,000 for additional engineering costs; and $13,000 for additional evaluation
and tooling costs. (The jury awarded no damages for breach of contract.)
       In response, Wilford and Thermo Compression renewed their motion for
judgment as a matter of law. See Fed. R. Civ. P. 50. 6 They argued that federal
copyright and patent law preempted ThermoTek’s misappropriation claim, and
that ThermoTek failed to prove its damages. The district court agreed and en-
tered an amended judgment dismissing all claims with prejudice and denying
all requested relief. 7


       3  Tri 3 is a limited liability holding company for Motion Medical and Wabash Medical.
       4  Thermo Compression is another medical sales company that Wilford controls.
        5 The district court also dismissed ThermoTek’s claim for tortious interference with

contractual relations for failure to state a claim, and ruled that ThermoTek’s unfair compe-
tition claim was not based on trade dress infringement.
        6 Wilford and Thermo Compression alternatively moved for a new trial. See Fed. R.

Civ. P. 59.
        7 The court conditionally denied the motion for a new trial. See Fed. R. Civ. P. 50(c)(1).

                                                4
     Case: 16-11381       Document: 00514237248          Page: 5     Date Filed: 11/14/2017



                                       No. 16-11381
       ThermoTek’s appeal raises three issues. The first is waiver—whether the
failure to plead preemption bars that defense. Second is the preemption de-
fense’s merits—whether federal law indeed forecloses ThermoTek’s unfair
competition claim. And last is the money—whether the jury had enough evi-
dence to assess lost profits. Though we neither examine nor question the jury’s
factual finding that Wilford made material misrepresentations, we affirm the
district court’s decision to grant the motion for judgment as a matter of law
and dismiss ThermoTek’s claims.
                                              II.
       First up is whether Wilford and Thermo Compression waived their
preemption defenses by failing to plead them. The district court said no—an
answer we review for abuse of discretion. 8 We find no abuse of discretion here.


       8 Relying on a D.C. Circuit decision, ThermoTek posits that our review should be de
novo. True, in Harris v. Secretary, U.S. Department of Veterans Affairs, the D.C. Circuit re-
viewed de novo whether the defendant waived an affirmative defense by failing to plead it.
126 F.3d 339, 342 (D.C. Cir. 1997). But ThermoTek reads too much into that decision. The
Harris court used a de novo standard because the D.C. Circuit had never before determined
whether Rule 8(c) of the Federal Rules of Civil Procedure permits a party to raise unpled
defenses for the first time in dispositive motions. Id. at 342 n.1. And since that decision, the
D.C. Circuit has left open whether an abuse-of-discretion or de novo standard applies. Kapche
v. Holder, 677 F.3d 454, 465 n.13 (D.C. Cir. 2012).
        Unlike the Harris court, we are not breaking new ground. Our circuit has already
articulated a rule: a “technical failure to comply precisely with Rule 8(c) is not fatal” when
an affirmative defense is raised at a “pragmatically sufficient time” and the plaintiff is “not
prejudiced in its ability to respond.” Allied Chem. Corp. v. Mackay, 695 F.2d 854, 856 (5th
Cir. 1983) (per curiam). An abuse-of-discretion standard is therefore appropriate, particu-
larly given the fact-specific approach Allied Chemical requires. See Pierce v. Underwood, 487
U.S. 552, 562 (1988); Miller v. Fenton, 474 U.S. 104, 114 (1985).
        To be sure, at least one of our precedents, Pasco ex rel. Pasco v. Knoblauch, could be
read to have applied a de novo standard to a district court’s waiver determination. 566 F.3d
572, 575 (5th Cir. 2009). But there, unlike here, we reversed the district court’s waiver deter-
mination for applying the wrong legal standard. Id. at 577; cf. Klier v. Elf Atochem N. Am.,
Inc., 658 F.3d 468, 474 (5th Cir. 2011) (“By definition, a district court abuses its discretion
when it makes an error of law or applies an incorrect legal standard.”). Most of our decisions
have instead applied an abuse-of-discretion standard when considering whether a party
waived its affirmative defense. See, e.g., LSREF2 Baron, L.L.C. v. Tauch, 751 F.3d 394, 399
(5th Cir. 2014); Levy Gardens Partners 2007, L.P. v. Commonwealth Land Title Ins. Co., 706

                                               5
     Case: 16-11381      Document: 00514237248        Page: 6     Date Filed: 11/14/2017



                                     No. 16-11381
      Federal Rule of Civil Procedure 8(c) requires a defendant to state affirm-
ative defenses in its responsive pleading. Fed. R. Civ. P. 8(c) (“In responding to
a pleading, a party must affirmatively state any avoidance or affirmative de-
fense . . . .”). Failure to comply with this rule may result in waiver. Lucas v.
United States, 807 F.2d 414, 417 (5th Cir. 1986) (citing Starcraft Co. v. C.J.
Heck Co., 748 F.2d 982, 990 n.11 (5th Cir. 1984)). But if “the [affirmative de-
fense] is raised in the trial court in a manner that does not result in unfair
surprise,” then a “technical failure to comply precisely with Rule 8(c) is not
fatal.” Id. at 417 (quoting Allied Chem. Corp. v. Mackay, 695 F.2d 854, 855–56
(5th Cir. 1983) (per curiam)). Because Rule 8(c)’s purpose is to give the plaintiff
fair notice, we recognize “some play in the joints.” Rogers v. McDorman, 521
F.3d 381, 385 (5th Cir. 2008). A defendant thus avoids waiver if (1) the defend-
ant raised the affirmative defense “at a pragmatically sufficient time,” and (2)
the plaintiff “was not prejudiced in its ability to respond.” Lucas, 807 F.2d at
418 (quotation mark omitted) (quoting Allied Chem., 695 F.2d at 856); see also
2 Moore’s Federal Practice § 8.08[3] (3d ed. 2016).
      ThermoTek got fair notice. It learned of the preemption defense at a
pragmatically sufficient time and suffered no prejudice. The preemption issue
first surfaced at the summary judgment stage before discovery closed and
nearly two years before trial. And, in denying the motion to reconsider its sum-
mary judgment order, the district court noted that it could “consider a preemp-
tion challenge to ThermoTek’s unfair competition claim by motion for judg-
ment as a matter of law and by post-judgment motion, if necessary, assuming
ThermoTek prevails on that claim at trial.” The parties therefore had two
years’ notice that preemption was on the table.



F.3d 622, 633 (5th Cir. 2013). In any event, even under ThermoTek’s proposed de novo stand-
ard we would still agree with the district court.
                                            6
     Case: 16-11381       Document: 00514237248         Page: 7    Date Filed: 11/14/2017



                                      No. 16-11381
       Preemption resurfaced closer to and during trial. After the parties had
engaged in substantial additional discovery—and still before trial—Wilford
and Thermo Compression raised copyright and patent law preemption in the
parties’ joint proposed pretrial order. Wilford and Thermo Compression raised
those defenses again in Rule 50 motions at the close of both cases-in-chief. See
Fed. R. Civ. P. 50. The charge conference also addressed preemption. 9
       All this was enough to meet our “sufficiently pragmatic” requirement.
We have repeatedly rejected waiver arguments when a defendant raised an
affirmative defense for the first time at summary judgment—or even later. See,
e.g., Pasco ex rel. Pasco v. Knoblauch, 566 F.3d 572, 578 (5th Cir. 2009) (no
waiver when defendant first raised affirmative defense of qualified immunity
in summary judgment motion filed two months before discovery was due and
six months before the pretrial conference); Lafreniere Park Found. v. Brous-
sard, 221 F.3d 804, 808 (5th Cir. 2000) (no waiver where defendants first raised
affirmative defense of res judicata in summary judgment motion and plaintiffs
had fourteen months to respond and filed three responsive briefs during that
period); Allied Chem., 695 F.2d at 855–56 (no waiver where defendant first
raised affirmative defense of usury in motion for summary judgment and the
defense appeared in the pretrial order); Lucas, 807 F.2d at 417–18 (no waiver
when the government first raised affirmative defense of a statutory damages
cap at trial immediately after expert testimony on damages). In fact, we have
recognized that sometimes a preemption defense is most suitably raised after
the defendant answers the complaint. See Fisher v. Halliburton, 667 F.3d 602,
610 (5th Cir. 2012) (“Unless the complaint itself establishes the applicability
of a federal-preemption defense—in which case the issue may properly be the


       9 To help resolve the preemption questions, Wilford and Thermo Compression sought
a special verdict form requiring the jury to identify each misappropriated product or type of
information. The district court denied this request after ThermoTek failed to agree to it.
                                             7
    Case: 16-11381         Document: 00514237248         Page: 8     Date Filed: 11/14/2017



                                        No. 16-11381
subject of a Rule 12(b)(6) motion—a defendant should ordinarily raise preemp-
tion in a Rule 12(c) motion for judgment on the pleadings or a Rule 56 motion
for summary judgment.” (footnote omitted)).
      Nor did ThermoTek suffer prejudice “in its ability to respond.” Allied
Chem., 695 F.2d at 856. The company admitted as much to the district court.
When asked to identify specific prejudice, including what it would have done
differently had Wilford and Thermo Compression pleaded preemption, Ther-
moTek’s counsel stated, “I don’t know what we would have done differently,”
and “[p]ractically speaking, I don’t know that we would have done anything
differently.”
      The district court did not abuse its discretion in reaching the preemption
defense on the merits.
                                              III.
      The merits question is whether federal copyright and patent laws
preempted the unfair-competition-by-misappropriation claim. They did.
                                              A.
      The district court held that federal copyright law preempts ThermoTek’s
unfair competition claim insofar as that claim relates to works of authorship
fixed in a tangible medium of expression—here, ThermoTek’s manuals, re-
ports, billing information, and other written documents.
      Section 102(a) of the federal Copyright Act protects “original works of
authorship fixed in any tangible medium of expression.” 17 U.S.C. § 102. 10 In


      10   “Works of authorship” include the following, non-exclusive, categories:
      (1)   literary works;
      (2)   musical works, including any accompanying words;
      (3)   dramatic works, including any accompanying music;
      (4)   pantomimes and choreographic works;
      (5)   pictorial, graphic, and sculptural works;
      (6)   motion pictures and other audiovisual works;

                                               8
      Case: 16-11381       Document: 00514237248          Page: 9     Date Filed: 11/14/2017



                                        No. 16-11381
turn, § 102(b) excludes from copyright protection “any idea, procedure, process,
system, method of operation, concept, principle, or discovery, regardless of the
form in which it is described, explained, illustrated, or embodied in such work.”
Id.
       But the Copyright Act preempts more than it protects. Ultraflo Corp. v.
Pelican Tank Parts, Inc., 845 F.3d 652, 656 (5th Cir.), cert. denied, 137 S. Ct.
2266 (2017). Specifically, § 301(a) 11 “preempts state protection of works that
fall within the subject matter (that is, the scope) of copyright, regardless
whether the works are actually afforded protection under the Copyright Act.”
Id. (citing Spear Mktg., Inc. v. BancorpSouth Bank, 791 F.3d 586, 596–96 (5th
Cir. 2015)); see also United States ex rel. Barge v. Bd. of Trustees of the Univ.
of Ala., 104 F.3d 1453, 1463 (4th Cir. 1997) (“[S]cope and protection are not
synonyms. . . . [T]he shadow actually cast by the Act’s preemption is notably
broader than the wing of its protection.”). That means the Copyright Act can
preempt a state law claim even if the intellectual property lands in one of §
102(b)’s exclusions. Ultraflo, 845 F.3d at 656; Spear, 791 F.3d at 596–97.
       Our copyright preemption test involves two steps. Ultraflo, 845 F.3d at
656 (citing Alcatel USA, Inc. v. DGI Techs., Inc., 166 F.3d 772, 785 (5th Cir.



       (7) sound recordings; and
       (8) architectural works.
17 U.S.C. § 102(a); see also id. § 101 (“The terms ‘including’ and ‘such as’ are illustrative and
not limitative.”).
       11 This section provides that


       all legal or equitable rights that are equivalent to any of the exclusive rights
       within the general scope of copyright as specified by section 106 in works of
       authorship that are fixed in a tangible medium of expression and come within
       the subject matter of copyright as specified by sections 102 and 103 . . . are
       governed exclusively by this title. Thereafter, no person is entitled to any such
       right or equivalent right in any such work under the common law or statutes
       of any State.
17 U.S.C. § 301(a).
                                               9
    Case: 16-11381     Document: 00514237248     Page: 10   Date Filed: 11/14/2017



                                  No. 16-11381
1999)). We first ask whether “the intellectual property at issue is within the
subject matter of copyright.” Id. If yes, we find preemption if the state law
claim “protects rights in that property that are equivalent to any of the exclu-
sive rights within the general scope of copyright.” Id.; cf. 1 Melville B. Nimmer
& David Nimmer, Nimmer on Copyright § 1.01[B] (2017). We review de novo
the district court’s answers to these two questions. Ultraflo, 845 F.3d at 655.
                                        i.
      We agree with the district court that most of the misappropriated infor-
mation—including ThermoTek’s manuals, reports, billing information, and
other written documents—is within the subject matter of copyright. That in-
formation constitutes original works of authorship fixed in a tangible medium
of expression.
      Seeking to avoid this result, ThermoTek contends that the district court
should have required proof that the intellectual property at issue “fell outside
of section 102(b).” This argument carries no purchase because it conflates cop-
yright protection with copyright preemption. See, e.g., Ultraflo, 845 F.3d at 656.
Again, preemption is the broader concept because it preserves Congress’s calls
on what gets protection. Id. (“[T]o allow states to protect fixed ideas would in-
trude upon Congress’s exclusion in section 102(b) of ideas from federal copy-
right protection.”).
      ThermoTek also faults the district court for not requiring Wilford and
Thermo Compression to identify which § 102(a) categories applied to each piece
of intellectual property. This argument also founders because § 102(a)’s list is
“illustrative and not limitive.” 17 U.S.C. § 101. The task was to show that Ther-
moTek’s allegedly misappropriated intellectual property fell within copyright’s
subject matter, not to find the right § 102(a) label. Wilford and Thermo Com-
pression met that burden, identifying the intellectual property that would be
subject to copyright preemption—emails, website information, product codes,
                                       10
    Case: 16-11381        Document: 00514237248          Page: 11     Date Filed: 11/14/2017



                                        No. 16-11381
drawings, FDA filings, and reports. Cf. Ultraflo, 845 F.3d at 656 (holding a
noncopyrightable valve design within copyright’s subject matter); Spear, 791
F.3d at 596–97 (holding noncopyrightable ideas contained in a software pro-
gram within copyright’s subject matter); Taquino v. Teledyne Monarch Rubber,
893 F.2d 1488, 1501 (5th Cir. 1990) (finding engineering drawings within cop-
yright’s    subject    matter     and    holding     a    conversion-of-drawings         claim
preempted). 12
       We therefore agree with the district court on step one.
                                              ii.
       So, too, for step two. Here, we ask whether the relevant state law claim
seeks to protect property rights “equivalent” to those “within the general scope
of copyright.” 17 U.S.C. § 301; see also Ultraflo, 845 F.3d at 658 (“[T]he ‘equiv-
alent rights’ inquiry . . . looks not at the rights Congress actually provided but
at the type of rights it has the power to confer.”). To measure equivalency, we
employ the “extra elements” test, probing whether the state law claim has at
least one element that “qualitatively differs” from a federal copyright claim.
Id. at 657. We have previously observed that “if the act or acts of [the defend-
ant] would violate both misappropriation law and copyright law, then the state
right is deemed equivalent to copyright.” Alcatel, 166 F.3d at 787 (quotation
marks omitted).



       12 This is a point ThermoTek appears largely to concede. The company acknowledged
in its brief that “much” of the intellectual property at issue was “reduced to a tangible me-
dium.” The only piece of intellectual property ThermoTek identifies in its brief as falling out-
side copyright’s protection is “a distinct characteristic of the [VascuTherm] unit’s power sup-
ply” that “was discussed specifically with Wilford.” As explained below, however, that infor-
mation about VascuTherm’s functional characteristics falls under the scope of federal patent
law. Beyond its brief, ThermoTek asserted for the first time during oral argument that its
entire “distribution system” fell outside the scope of copyright. But ThermoTek waived that
argument. E.g., United States v. Scroggins, 599 F.3d 433, 446 (5th Cir. 2010) (“A party that
asserts an argument on appeal, but fails to adequately brief it, is deemed to have waived it.”
(quoting Knatt v. Hosp. Serv. Dist. No. 1, 327 F. App’x 472, 483 (5th Cir. 2009)).
                                              11
   Case: 16-11381     Document: 00514237248      Page: 12    Date Filed: 11/14/2017



                                  No. 16-11381
      The only unfair competition claim that ThermoTek tried to the jury was
“unfair competition by misappropriation,” a Texas common law tort. That
claim comprises three elements:
      (i) the creation of plaintiff’s product through extensive time, labor,
      skill and money, (ii) the defendant’s use of that product in compe-
      tition with the plaintiff, thereby gaining a special advantage in
      that competition (i.e., a “free ride”) because defendant is burdened
      with little or none of the expense incurred by the plaintiff, and (iii)
      commercial damage to the plaintiff.
U.S. Sporting Prods., Inc. v. Johnny Stewart Game Calls, Inc., 865 S.W.2d 214,
218 (Tex. App.—Waco 1993, writ denied); see also Alcatel, 166 F.3d at 788. A
copyright claim also has three prongs: “(1) ownership of a valid copyright; (2)
factual copying; and (3) substantial similarity.” Nola Spice Designs, L.L.C. v.
Haydel Enters., 783 F.3d 527, 549 (5th Cir. 2015) (quotation mark omitted).
      We have twice held that Texas’s unfair-competition-by-misappropriation
tort does not afford protection qualitatively different from federal copyright
law. See Ultraflo, 845 F.3d at 657–59 (holding that copyright preempted a
Texas unfair-competition-by-misappropriation claim); Alcatel, 166 F.3d at
787–89 (same). We do so again here.
      We also disagree with ThermoTek’s position that the jury instructions
added an extra element—an “improper means” prong—to the misappropria-
tion claim. The instructions did no such thing. They informed the jury that
      [a] person does not misappropriate a competitor’s product . . .
      merely by developing a competing product through such means as
      inspection and analysis of the competitor’s product, reverse engi-
      neering applied to the competitor’s finished product, independent
      research, or use of publicly-available information.
According to ThermoTek, that language distinguishes “information discovered
by fair and honest means” from “information obtained wrongfully”—a dichot-
omy that supposedly sets the state law claim outside of copyright’s ambit. The


                                        12
    Case: 16-11381    Document: 00514237248      Page: 13    Date Filed: 11/14/2017



                                  No. 16-11381
problem with this argument is that ThermoTek misreads both the jury instruc-
tions and the cases discussing “improper means” elements.
      As ThermoTek concedes, a claim for unfair competition by misappropri-
ation does not include an “improper means” element; that prong instead ap-
pears in the Texas tort of misappropriation of trade secrets. And in the trade
secrets context, Texas law defines “improper means” as “theft, fraud, unau-
thorized interception of communications, inducement of or knowing participa-
tion in a breach of confidence, and other means either wrongful in themselves
or wrongful under the circumstances of the case.” Astoria Indus. of Iowa, Inc.
v. SNF, Inc., 223 S.W.3d 616, 636 (Tex. App.—Fort Worth 2007, pet. denied).
We have held that, precisely because a trade secrets claim requires “wrongful
conduct beyond mere reproduction,” federal copyright law does not preempt
the Texas action for misappropriation of trade secrets. GlobeRanger Corp. v.
Software AG United States of Am., Inc., 836 F.3d 477, 488 (5th Cir. 2016). No
such requirement appeared in this case.
      Here, the jury instruction never mentioned “improper means,” nor did it
condition liability on a defendant’s “wrongful conduct beyond mere reproduc-
tion.” Id. The instruction instead defined the “use” element of ThermoTek’s
misappropriation claim as involving literal copying—a specific type of repro-
duction. See, e.g., Oracle Am., Inc. v. Google Inc., 750 F.3d 1339, 1356 (Fed. Cir.
2014) (distinguishing between literal and non-literal copying, both of which
may be actionable copyright infringement); Nichols v. Universal Pictures Corp.,
45 F.2d 119, 121 (2d Cir. 1930) (Hand, J.) (same); see also 4 Nimmer & Nimmer,
supra, § 13.03[A][1]. In other words, the jury instruction still protected against
the type of reproduction against which copyright guards. The state law claim
was therefore preempted.
      Our caselaw confirms this conclusion. In fact, ThermoTek’s argument is
nearly identical with the one we rejected in Alcatel. See 166 F.3d at 789. There,
                                        13
    Case: 16-11381    Document: 00514237248       Page: 14   Date Filed: 11/14/2017



                                  No. 16-11381
a defendant attempted to show that the Texas unfair-competition-by-misap-
propriation claim requires more than mere reproduction because a defendant
is liable only if he “uses” the plaintiff’s product “in competition” with the plain-
tiff. See id. In that defendant’s view, the state law claim qualitatively differed
from a copyright action because “an unauthorized act of reproduc-
tion . . . would not, in itself, offend the competition requirement of state law.”
Id. That was a distinction without a difference, we held, because proof of copy-
ing under the Texas claim’s “use” element was sufficient to satisfy copyright’s
factual copying element. Id. The same logic obtains here.
      Seeking to circumvent Alcatel, ThermoTek argues that we must look to
the “discrete facts” and “actual alleged misconduct,” not just the elements of a
misappropriation claim. GlobeRanger, 836 F.3d at 485, 488 (finding no preemp-
tion on Texas’s misappropriation-of-trade-secrets claim). ThermoTek’s argu-
ment is self-defeating; the company contends that “the only difference” be-
tween this case and GlobeRanger is the “claim asserted by ThermoTek.” But
that difference matters. Again, the claim asserted in GlobeRanger was misap-
propriation of trade secrets—a tort requiring proof that “the protected infor-
mation was taken via improper means or breach of a confidential relationship.”
Id. at 488. ThermoTek, however, voluntarily dismissed its trade secrets claim
and instead advanced an unfair-competition-by-misappropriation tort—a
cause of action that, as explained above (and under the facts of this case), did
not demand proof of improper means or breach of confidence. See Ultraflo, 845
F.3d at 657–59; Alcatel, 166 F.3d at 788. ThermoTek cannot escape copyright’s
clutches.
      We therefore decline ThermoTek’s invitation to depart from our binding
precedent. The district court correctly found copyright preemption.
                                        B.
      The district court’s patent preemption analysis was similarly sound. To
                                        14
    Case: 16-11381    Document: 00514237248     Page: 15   Date Filed: 11/14/2017



                                 No. 16-11381
be sure, copyright does not preempt ThermoTek’s case theory that Wilford and
Thermo Compression misappropriated physical products (the VascuTherm
unit and associated wraps) and their functional characteristics. But that the-
ory trades Scylla for Charybdis; in dodging copyright preemption it sinks into
patent preemption.
      The federal patent statute protects those who “invent[] or discover[] any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement therof.” 35 U.S.C. § 101. Federal law also
protects “any new, original and ornamental design for an article of manufac-
ture.” Id. § 171. The Supreme Court has summarized the federal patent scheme
as follows:
      The applicant whose invention satisfies the requirements of nov-
      elty, nonobviousness, and utility, and who is willing to reveal to
      the public the substance of his discovery and “the best mode . . . of
      carrying out his invention,” 35 U.S.C. § 112, is granted “the right
      to exclude others from making, using, or selling the invention
      throughout the United States,” for a period of 17 years. 35 U.S.C.
      § 154. The federal patent system thus embodies a carefully crafted
      bargain for encouraging the creation and disclosure of new, useful,
      and nonobvious advances in technology and design in return for
      the exclusive right to practice the invention for a period of years.
Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 150–51 (1989)
(alteration in original). Patent law’s primary purposes are (1) “to foster and
reward invention”; (2) to “promote[] disclosure of inventions, to stimulate fur-
ther innovation and to permit the public to practice the invention once the pa-
tent expires”; and (3) “to assure that ideas in the public domain remain there
for the free use of the public.” Aronson v. Quick Point Pencil Co., 440 U.S. 257,
262 (1979) (citing Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480–81
(1974)).
      Resolving a federal patent preemption defense requires courts to con-
sider “whether [state] law stands as an obstacle to the accomplishment and
                                       15
    Case: 16-11381    Document: 00514237248      Page: 16   Date Filed: 11/14/2017



                                  No. 16-11381
execution of the full purposes and objectives of Congress.” Id. (quotation marks
omitted). “The offer of federal protection from competitive exploitation of intel-
lectual property would be rendered meaningless in a world where substantially
similar state law protections were readily available.” Bonito Boats, 489 U.S. at
151. “[S]tate regulation of intellectual property,” therefore, “must yield to the
extent that it clashes with the balance struck by Congress in our patent laws.”
Id. at 152.
      Whether federal patent law preempts the Texas claim for unfair compe-
tition by misappropriation is a novel question in our circuit. But we are not
without guidance. Take the Bonito Boats decision. There, the Supreme Court
held that federal patent law preempted a Florida state law prohibiting unau-
thorized duplication of boat hulls or other component parts. 489 U.S. at 144–
45, 168. In reaching that result, the Supreme Court compared two categories
of state unfair competition laws. The first group primarily sought to guard con-
sumers against “deceit” and “confusion as to source.” Id. at 157. The second
aimed to protect “the functional aspects of a product which [have] been placed
in public commerce absent the protection of a valid patent.” Id. at 156 (citing
Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 233 (1964)). Federal patent
law, the Supreme Court observed, would generally tolerate the former but
preempt the latter. The former would typically pass muster because those laws
protect “against copying of nonfunctional aspects of consumer products which
have acquired secondary meaning such that they operate as a designation of
source.” Id. at 158. The latter laws, however, would likely obstruct Congress’s
goals by “offer[ing] patent-like protection to intellectual creations which would
otherwise remain unprotected as a matter of federal law.” Id. at 156.
      Insofar as ThermoTek’s misappropriation action seeks to protect its Vas-
cuTherm unit and wraps (or their functional aspects), that claim falls into the
second Bonito Boats bucket. See id. at 156. ThermoTek’s claim is indeterminate
                                       16
   Case: 16-11381     Document: 00514237248      Page: 17   Date Filed: 11/14/2017



                                  No. 16-11381
as to consumer confusion or the “copying of nonfunctional aspects of consumer
products which have acquired secondary meaning such that they operate as a
designation of source.” Id. at 158. Instead, this claim, like patent law, “is spe-
cifically designed to protect the labor—the so-called ‘sweat-equity’—that goes
into creating a work.” Alcatel, 166 F.3d at 788; see also Aronson, 440 U.S. at
262 (observing that fostering and rewarding invention is a purpose of patent
law); King Instruments Corp. v. Perego, 65 F.3d 941, 950 (Fed. Cir. 1995)
(“[T]he Patent Act creates an incentive for innovation. The economic rewards
during the period of exclusivity are the carrot.”). But unlike patent law, the
Texas cause of action does not limit the period of protection, nor does it condi-
tion protection on the invention’s novelty, nonobviousness, or utility. See Al-
catel, 166 F.3d at 788. ThermoTek’s misappropriation claim therefore “sub-
stantially interferes with the enjoyment of an unpatented utilitarian or design
conception which has been freely disclosed by its author to the public at large”
and “impermissibly contravenes the ultimate goal of public disclosure and use
which is the centerpiece of federal patent policy.” Bonito Boats, 489 U.S. at
156–57; cf. Summit Mach. Tool Mfg. Corp. v. Victor CNC Sys., Inc., 7 F.3d 1434,
1441–42 (9th Cir. 1993) (finding patent preemption of California’s analogous
unfair-competition-by-misappropriation tort).
      In opposition, ThermoTek reprises the same arguments it leveled
against the district court’s copyright findings: that preemption analysis must
consider a defendant’s actions, and that ThermoTek’s claim had an extra ele-
ment of “fraud and dishonest[y]” because the jury instructions excluded reverse
engineering from the proscribed conduct. These arguments fare no better the
second time around. The jury needed only conclude that ThermoTek expended
time and money to create its units and wraps, that Wilford and Thermo Com-
pression used those products to gain a competitive advantage in the market,
and that ThermoTek suffered damages. Alcatel, 166 F.3d at 788. There was no
                                       17
    Case: 16-11381       Document: 00514237248       Page: 18     Date Filed: 11/14/2017



                                     No. 16-11381
fraud or dishonesty element, nor did ThermoTek stake its misappropriation
claim on such arguments. After all, at trial ThermoTek acknowledged its case
theory was that Wilford and Thermo Compression “used” ThermoTek’s units
and wraps by taking its intellectual property “lock, stock, and barrel.” Hence,
patent preemption. See Bonito Boats, 489 U.S. at 164.
      We affirm the district court’s patent preemption finding.
                                           IV.
      Finally, we reach damages. On the fraud claim, the jury awarded Ther-
moTek $770,000 in “lost profits” from wrap sales, $500,000 in “[l]ost profits
from unit sales,” $193,000 in “[l]ost profits from additional expenses for unit
repairs,” $90,000 in “[l]ost profits from additional engineering costs,” and
$13,000 in “[l]ost profits from additional evaluation and tooling costs.” 13
      In granting Wilford’s renewed Rule 50 motion, the district court held
that ThermoTek failed to provide sufficient evidence for a reasonable jury to
award lost profits. See Fed. R. Civ. P. 50. We give a de novo look to that ruling,
applying the same standard as the district court. Brennan’s Inc. v. Dickie Bren-
nan & Co. Inc., 376 F.3d 356, 362 (5th Cir. 2004). That means we affirm if
“there is no legally sufficient evidentiary basis for a reasonable jury to find” for
ThermoTek on the lost profits issue. Id. (quoting Fed. R. Civ. P. 50(a)(1)). We
“review all of the evidence in the record, drawing all reasonable inferences in
favor of the nonmoving party,” without “mak[ing] credibility determinations or
weigh[ing] the evidence, as those are jury functions.” Id. (citing Reeves v. Sand-
erson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000)). Viewing the evidence
through that lens, we see no error.
      Texas law requires “[a] party seeking to recover lost profits [to] prove the
loss through competent evidence with reasonable certainty.” Atlas Copco Tools,


      13   We need not address damages on the preempted claims.
                                           18
    Case: 16-11381       Document: 00514237248          Page: 19     Date Filed: 11/14/2017



                                       No. 16-11381
Inc. v. Air Power Tool & Hoist, Inc., 131 S.W.3d 203, 206–207 (Tex. App.—Fort
Worth 2004, pet. denied) (citing Szczepanik v. First S. Trust Co., 883 S.W.2d
648, 649 (Tex. 1994)). Though this test is “flexible,” any “opinions or estimates
of lost profits must be based on objective facts, figures, or data from which the
amount of lost profits can be ascertained.” Id. (citing Tex. Instruments, Inc. v.
Teletron Energy Mgmt., Inc., 877 S.W.2d 276, 279 (Tex. 1994); Szczepanik, 883
S.W.2d at 649). Failure to comply carries harsh consequences in Texas: “If no
evidence is presented to prove lost profits with reasonable certainty, the trial
court must render a take-nothing judgment as to lost-profit damages.” Barton
v. Resort Dev. Latin Am., Inc., 413 S.W.3d 232, 236 (Tex. App.—Dallas 2013,
pet. denied) (citing Tex. Instruments, 877 S.W.2d at 281).
       The district court vacated the jury award because ThermoTek presented
evidence of gross profits instead of net profits. That is precisely what Texas
law expects courts to do; if a party aims to recover lost profits, it must show its
net profits, not gross profits. Atlas, 131 S.W.3d at 209 (citing Holt Aterton In-
dus. v. Heine, 835 S.W.2d 80, 83 n.1 (Tex. 1992)). Net profits are “what remains
in the conduct of a business after deducting from its total receipts all of the
expenses incurred in carrying on the business.” Id. (quoting Turner v. PV Int’l
Corp., 765 S.W.2d 455, 465 (Tex. App.—Dallas 1988, writ denied)). Contrast
gross profits, the “[t]otal sales revenue less the cost of the goods sold, no ad-
justment being made for additional expenses and taxes.” Gross Profit, Black’s
Law Dictionary (10th ed. 2014). A legally adequate calculation of “lost profits”
therefore accounts for all expenses in carrying out the business, not just the
incremental costs of selling a particular product. 14


       14  See Atlas, 131 S.W.3d at 209 (holding that an expert “incorrectly calculated net
profits by measuring lost gross profits” because the expert “deducted only the incremental
costs of selling the [product at issue] and not other expenses incurred in carrying on [plain-
tiff’s] business” (quotation marks omitted)); see also Hoss v. Alardin, 338 S.W.3d 635, 654

                                             19
    Case: 16-11381         Document: 00514237248           Page: 20      Date Filed: 11/14/2017



                                         No. 16-11381
       ThermoTek’s proof fell short of this standard. Its expert witness testified
that he used ThermoTek’s gross profit margin—gross sales, less the cost of
those goods sold, divided by gross sales—to calculate lost profits. 15 He then
stated that he reached his lost-profit totals for the VascuTherm units and
wraps by (1) multiplying the average sales ThermoTek made to Wilford each
month by the unit sales price and relevant time period, and (2) deducting the
cost of the goods sold. But that is the very definition of gross profits. See Black’s
Law Dictionary, supra (defining gross profits as “[t]otal sales revenue less the
cost of the goods sold, no adjustment being made for additional expenses and
taxes”). Indeed, the expert himself conceded on cross-examination that his
numbers reflected “gross profits rather than net profits.” He further acknowl-
edged his margins were high because they did not account for ThermoTek’s
other business expenses. These same flaws doom his calculations of “lost prof-
its” stemming from ThermoTek’s repair, engineering, and tooling costs associ-
ated with the wrongfully returned VascuTherm units.
       Citing the Restatement (Third) of Unfair Competition § 37, ThermoTek
argues that gross profits are the “proper measure of damages in this context.”
ThermoTek also contends that Wilford had the burden to prove any “costs or



(Tex. App.—Dallas 2011, no pet.) (noting that an expert’s report of plaintiff’s “gross profits,
without accounting for overhead . . . is no[t] evidence of [plaintiff]’s net profits”); Wiese v. Pro
Am Servs., Inc., 317 S.W.3d 857, 863 & n.4 (Tex. App.—Houston [14th Dist.] 2010, no pet.)
(holding evidence insufficient to show lost profits where plaintiff’s calculation did not “de-
duct[] any amount for normal business operating expenses,” such as “employee salaries and
medical benefits”); S. Plains Switching, Ltd. v. BNSF Ry. Co., 255 S.W.3d 690, 705–06 (Tex.
App.—Amarillo 2008, pet. denied) (holding evidence insufficient where plaintiffs showed the
“revenue that would be received” and “cost[s]” associated with their relevant line of business
without any “testimony about other necessary expenses of doing business, such as deprecia-
tion, payroll expenses, administrative expenses, equipment expenses, and maintenance ex-
penses”); Texaco, Inc. v. Phan, 137 S.W.3d 763, 771–73 (Tex. App.—Houston [1st Dist.] 2004,
no pet.) (reversing damages award where the plaintiff failed to show its operating expenses).
        15 The expert used “lost profits” and “lost sales income” interchangeably during his

testimony and in his visual aids. It is well-settled in Texas, however, that “lost income is not
the correct measure” of lost profits. Holt Atherton Indus., 835 S.W.2d at 84.
                                                20
    Case: 16-11381    Document: 00514237248       Page: 21   Date Filed: 11/14/2017



                                  No. 16-11381
expenses to be deducted for purposes of calculating net profit.” Not so. For
starters, ThermoTek’s reliance on the Restatement is misplaced; section 37
pertains to “the award of an accounting of the defendant’s profits in actions for
deceptive marketing and trademark infringement”—claims not at issue here.
Id. § 37, cmt. a. And as the Restatement itself notes, the rules covering an
accounting of profits differ from those governing a damages award. Id. In ad-
dition, Texas law is clear that the plaintiff, not the defendant, must prove net
profits—a figure correctly measured by “deducting from [the plaintiff’s] total
receipts all the expenses incurred in carrying on the business.” Atlas, 131
S.W.3d at 209 (quotation marks omitted).
      Without evidence of ThermoTek’s business expenses, a jury viewing this
record could not determine lost profits with reasonable certainty. E.g., id. Of
course, this omission is not fatal if, for instance, there is evidence that the vic-
tim “was already profitable at the time damages began” and “could have per-
formed profitable services using only its existing resources.” ERI Consulting
Eng’rs, Inc. v. Swinnea, 318 S.W.3d 867, 879 (Tex. 2010). But ThermoTek does
not advance such an argument, nor do we see support for it in the trial record.
The proper recourse, then, was for the district court to enter judgment as a
matter of law instead of remanding for a new trial. See Fed. R. Civ. P.
50(a)(1)(B), (b)(3); see also Atlas, 131 S.W.3d at 209 (rendering take-nothing
judgment where plaintiff offered no evidence of “other expenses incurred in
carrying on the business” besides “incremental costs of selling” the relevant
product); Barton, 413 S.W.3d at 243, 246–47 (rendering take-nothing judgment
where plaintiff failed to show its business expenses); Kellmann v. Workstation
Integrations, Inc., 332 S.W.3d 679, 687 (Tex. App.—Houston [14th Dist.] 2010,
no pet.) (same); cf. Sw. Energy Prod. Co. v. Berry-Helfand, 491 S.W.3d 699, 721




                                        21
    Case: 16-11381       Document: 00514237248            Page: 22   Date Filed: 11/14/2017



                                      No. 16-11381
(Tex. 2016) (remanding for new trial where plaintiff presented sufficient evi-
dence supporting less than the full amount awarded). 16
       Thus, the trial court did not err.
                                     *   *   *    *   *
       AFFIRMED.




       16 Both ThermoTek’s visual aid at trial and the jury verdict form identified the com-
pany’s alleged damages as “lost profits.” On appeal, ThermoTek defends these damages as
“lost profits” and does not pose the question whether those same amounts were instead re-
coverable as out-of-pocket damages. Accord 41 Tex. Jur. 3d, Fraud & Deceit § 105. Thus, we
do not address that issue.
                                             22
