                                                                                          ACCEPTED
                                                                                      01-14-00990-CV
                                                                           FIRST COURT OF APPEALS
                                                                                   HOUSTON, TEXAS
                                                                                  6/4/2015 3:48:07 PM
                                                                                CHRISTOPHER PRINE
                                                                                               CLERK

                            Case No. 01-14-00990-CV

                     IN THE COURT OF APPEALS              FILED IN
                                                   1st COURT OF APPEALS
                      FIRST JUDICIAL DISTRICT          HOUSTON, TEXAS
                          HOUSTON, TEXAS           6/4/2015 3:48:07 PM
           ______________________________________________
                                                   CHRISTOPHER A. PRINE
                                                                   Clerk
                         DR. MANFRED FINK,
                              Appellant,
                                  v.
                     JOANNA D. ANDERSON, et al.,
                              Appellees
             ___________________________________________

                             On Appeal from
                                nd
                      the 152 Judicial District Court
                           Harris County, Texas
                           Cause No. 2014-22740
               ________________________________________

                 BRIEF OF THE UNIVERSITY OF TEXAS, AUSTIN
                       AS AMICUS CURIAE SUPPORTING
                       APPELLANT DR. MANFRED FINK
                        _________________________

KEN PAXTON                                                   ERIKA M. KANE
Attorney General of Texas                               Tex. Bar No. 24050850
                                                    Assistant Attorney General
CHARLES E. ROY                              OFFICE OF THE ATTORNEY GENERAL
First Assistant Attorney General              General Litigation Division – 019
                                                               P.O. Box 12548
JAMES E. DAVIS                                         Austin, Tx. 78711-2548
Deputy Attorney General for Civil                               (512) 463-2120
Litigation                                                (512) 320-0667 (Fax)
                                          erika.kane@texasattorneygeneral.gov
ANGELA V. COLMENERO
Division Chief – General Litigation              Attorneys for Amicus Curiae
Division                                       The University of Texas-Austin
                           Identity of Parties and Counsel

Parties to the Trial Court Judgment:

Plaintiffs/Appellees: Joanna D. Anderson, Betty Bailey, Doug Bird, Ann Brown,
                    Brad Bullock, M.D., Jim Byron, Mike Clann, Claire Crowder,
                    Evan Quiros, Paul Fulmer, M.D., Eric Geibel, Mark Gtiffin,
                    Steve Gerguis, Stacey Harwey, Bill Henderson, Allen Holt,
                    Linda Fludson, Cullen Kappler, Ralph Kirkland, Sam Lo, M.D.,
                    Thomas Lu, M.D., Gailer Miller Holt, Mary Quiros, Larry
                    Sams, Bob Solberg, Lynn Whitt, and Clarissa Willis, M.D.

Defendant/Appellant: Dr. Manfred Fink, Ph.D.

Counsel:

For Plaintiffs/Appellees

Wade T. Howard
Michael P. Cash
Alma F. Gomez
LISKOW & LEWIS
1001 Fannin Street, Ste. 1800
Houston, Texas 77002
Tel (713) 651-2900
Fax: (713) 651.-2908
wthoward@liskow.com
mpcash@liskow.com
afgomez@liskow.com




                                         ii
For Defendants/ Appellants

H. MELISSA MATHER
Assistant Attorney General
State Bar No. 24010216
Financial Litigation, Tax, and
Charitable Trusts Division
P.O. Box 12548
Austin, Texas 78757-2548
Tel: (512) 475-2540
Fax: (512) 477 -2348
melissa.mather@texasattorneygeneral.gov




                                     iii
                        INTEREST OF AMICUS CURIAE

      Amicus Curiae, the University of Texas at Austin (UT-Austin), has an interest

in this case as a state employer. As such, UT-Austin has an interest in ensuring that

the courts of this state properly interpret and apply immunity principles applicable

to suits brought against state employees for acts arising out of their state

employment, including the immunity from suit established in Tex. Civ. Prac. &

Rem. Code § 101.106(f).

      More particularly, the lower court’s denial of the motion to dismiss filed by

Dr. Manfred Fink was contrary to the Texas Supreme Court’s decision in Franka v.

Velasquez, which made clear that Tex. Civ. Prac. & Rem. Code § 101.106(f) serves

to “foreclose suit against a government employee in his individual capacity if he was

acting within the scope of employment.” 332 S.W.3d 367, 381 (Tex. 2011). As the

employer of Professor Fink, UT-Austin is of the position that the petition in this

matter has alleged actions that arose within the general scope of Professor Fink’s

employment. Accordingly, UT-Austin has an interest in ensuring that its employee

is not improperly subjected to litigation in a matter that should be deemed foreclosed

under Franka and its progeny.

      Neither UT-Austin nor any other party has paid any fee in connection with the

preparation of this brief.




                                          iv
                                         TABLE OF CONTENTS

INTEREST OF AMICUS CURIAE .........................................................................iv

TABLE OF CONTENTS ...........................................................................................v

INDEX OF AUTHORITIES.....................................................................................vi

STATEMENT OF THE CASE ............................................................................... vii

ISSUES PRESENTED............................................................................................ vii

STATEMENT OF FACTS ........................................................................................1

SUMMARY OF THE ARGUMENT ........................................................................ 1

ARGUMENT .............................................................................................................2

         I.       UT-Austin professors assisting in the commercialization
                  of UT-owned intellectual property act within the scope of
                  their employment................................................................................... 2

         II.      State employees are entitled to immunity for any act taken
                  within the general scope of their employment for a government
                  agency. ...................................................................................................5

         III.     Any fact dispute that may exist in this matter is not relevant
                  to the disposition of Professor Fink’s § 101.106(f) motion. ............... 10

CONCLUSION AND PRAYER .............................................................................12

CERTIFICATE OF COMPLIANCE .......................................................................14

CERTIFICATE OF SERVICE ................................................................................15

APPENDIX




                                                             v
                                    INDEX OF AUTHORITIES

Cases

Anderson v. Bessman,
  365 S.W.3d 119 (Tex. App.—Houston [1st Dist.] 2011, no pet.) .........................6
Best Steel Bldgs., Inc. v. Hardin,
  553 S.W. 2d 122 (Tex. Civ. App—Tyler 1977, writ ref’d n.r.e.) ......... 6, 7, 11, 12
Bull Bohnsack v. Varco, L.P.,
  668 F.3d 262 (5th Cir. 2012) ..................................................................................8
Dictaphone Corp. v. Torrealba,
  520 S.W. 2d 869 (Tex. Civ. App.—Houston [14th Dist.] 1975, writ ref’d n.r.e.) .6
Franka v. Velasquez,
332 S.W.3d 367 (Tex. 2011)........................................................................... 4, 5, 12
Goodyear Tire & Rubber Co. v. Mayes,
 236 S.W.3d 754 (Tex. 2007) ..................................................................................7
Gulfcraft, Inc. v. Henderson,
 300 S.W.2d 768 (Tex. Civ. App.—Galveston 1957, no writ)..........................7, 11
Hopkins v. Strickland,
 No. 01–12–00315–CV, 2013 WL 1183302
 (Tex. App.-Houston [1st Dist.] Mar. 21, 2013, no pet.) .........................................6
Inter Mountain Mtge., Inc. v. Sulimen,
  93 Cal.Rptr.2d 790 (Cal. App. 2000) .....................................................................8
James v. Wall,
  783 S.W.2d 615 (Tex. App.—Houston [14th Dist.] 1989, no writ) ......................3
Lenoir v. Marino,
  01-13-01034-CV, 2014 WL 6678947
(Tex. App.—Houston [1st Dist.] Nov. 25, 2014, no pet.) .........................................6
Lenoir v. Moore,
  Cause No. 01-13-01034-CV, 2014 Tex. App. LEXIS 12703 (Tex. App.—
  Houston [1st Dist.] November 25, 2014, no pet.) ..................................................9
Minyard Food Stores, Inc. v. Goodman,
 80 S.W.3d 573 (Tex. 2002) ....................................................................................8
Quick v. Peoples Bank,
 993 F.2d 793 (11th Cir.1993) .................................................................................8
                                                       vi
Steel Bldgs., Inc. v. Hardin,
  553 S.W. 2d 122 (Tex. Civ. App—Tyler 1977, writ ref’d n.r.e.) ..........................9


Statutes

TEX. EDUC. CODE § 51.192 ........................................................................................4
TEX. EDUC. CODE § 65.45 ..........................................................................................2
Other Authorities
http://www.otc.utexas.edu/ForInventors.jsp ..............................................................3
http://www.utsystem.edu/sites/utsfiles/offices/board-of-regents/rules-
  regulations/30104.pdf ............................................................................................4
http://www.utsystem.edu/sites/utsfiles/offices/board-of-regents/rules-
   regulations/complete90000.pdf..................................................................................3
Reporter’s Notes, RESTATEMENT (THIRD) OF AGENCY § 7.07 (2006) .......................8




                                                        vii
                          STATEMENT OF THE CASE

      Amicus Curiae adopts the Statement of the Case set forth in Appellant’s Brief.

                              ISSUES PRESENTED

I. Whether the court below erred in failing to grant Professor Fink’s plea to the
   jurisdiction, because the petition failed to allege facts to demonstrate any of the
   acts at issue occurred outside the scope of Professor Fink’s employment




                                         viii
                             Case No. 01-14-00990-CV

                       IN THE COURT OF APPEALS
                        FIRST JUDICIAL DISTRICT
                            HOUSTON, TEXAS
             ______________________________________________

                 DR. MANFRED FINK and DR. RAINER FINK,
                                Appellants,
                                    v.
                       JOANNA D. ANDERSON, et al.,
                                Appellees
               ___________________________________________

                               On Appeal from
                                  nd
                        the 152 Judicial District Court
                             Harris County, Texas
                             Cause No. 2014-22740
                 ________________________________________

                  BRIEF OF THE UNIVERSITY OF TEXAS, AUSTIN
                              AS AMICUS CURIAE
                         _________________________

      Amicus Curiae University of Texas at Austin (UT-Austin) respectfully

submits this brief on behalf of Appellant Professor Manfred Fink’s request that this

Court reverse the order denying his plea to the jurisdiction.

                            STATEMENT OF FACTS

      Amicus Curiae adopts the Statement of Facts set forth in Appellant’s Brief.

                       SUMMARY OF THE ARGUMENT

      This Court should reverse the order of the court below and dismiss Professor

Fink from this suit pursuant to Texas Civil Practice and Remedies Code § 101.106(f)


                                          1
because the acts committed by Professor Fink, as currently alleged, were acts within

the general scope of Professor Fink’s duties as an employee of UT-Austin. More

specifically, the alleged acts occurred within the general scope of Professor Fink’s

duty as an employee of UT-Austin to support the commercialization of technology

owned by UT and created within the course and scope of Professor Fink’s

employment with UT-Austin.

                                  ARGUMENT

   I.     UT-Austin professors assisting in the commercialization of UT-owned
          intellectual property act within the scope of their employment.

        As a premier research institution, UT-Austin encourages—and necessarily

requires—its professors to continually seek to innovate. These efforts result in UT-

Austin employees creating important intellectual property (IP) in the course of their

employment with the university.

        Because this IP often has great societal and monetary value, UT-Austin

established the Office of Technology Commercialization (OTC) to oversee and

facilitate the transfer of university discoveries to the marketplace. See, e.g., TEX.

EDUC. CODE § 65.45 (conferring on UT Board of Regents the power to enter into

“agreements with individuals, corporations, partnerships, associations, and local,

state, or federal agencies for funding the discovery, development, and

commercialization of new products, technology, and scientific information”); see

also Affidavit of Juan M. Sanchez (“Sanchez Aff.”) ¶ 6, attached hereto at Appx. Tab
                                         2
1 (explaining role of OTC). UT-Austin professors who invent valuable technology

play an important part in ensuring the successful commercialization of University-

owned IP by working in conjunction with the OTC, and such activities typically

occur as part of the professor’s employment with UT-Austin. See Sanchez Aff. ¶¶ 6-

7; see also “For Inventors,” website of UT Office of Technology Commercialization,

available at http://www.otc.utexas.edu/ForInventors.jsp (explaining that the OTC

provides “UT faculty with the resources, knowledge, and tools to protect and

promote their discoveries” and that “[p]aramount” to the OTC’s effort to maximize

UT-Austin’s research impact is OTC’s “collaboration with UT researchers, industry,

investors, and other strategic partners”).

        The UT Board of Regents has promulgated rules that establish that when, as

here, a UT professor creates IP within the scope of his employment, that IP is owned

by the UT Board of Regents. See University of Texas System Rules and Regulations

of the Board of Regents, Rule 90102, Sec. 2. 1 Pursuant to these rules, the IP created

by Professor Fink, which was licensed to IsoSpec, was owned by the UT Board of

Regents because it was created during the course and scope of Professor Fink’s

employment with UT-Austin. CR 181. UT Board of Regents rules permitted



1
   UT’s Board of Regent rules relating to IP created at the university are available at:
http://www.utsystem.edu/sites/utsfiles/offices/board-of-regents/rules-regulations/complete90000.pdf. The
Court may take judicial notice of these rules, as they have “the same force as would be a like
enactment of the Legislature.” See James v. Wall, 783 S.W.2d 615, 619 (Tex. App.—Houston
[14th Dist.] 1989, no writ) (quotations omitted).
                                                   3
Professor Fink, as part of his UT-Austin employment, to provide input related to the

commercialization of his invention. See University of Texas System Rules and

Regulations of the Board of Regents, Rule 90101, Sec. 7. Board of Regents rules

also make clear that UT retains “sole discretion” to make “final decisions

concerning…how to…commercialize” any IP owed by the UT Board of Regents.

Id. Additionally, Texas law permits a state university employee who invents

university-owned IP to serve as an officer or employee of a business that has a

licensing agreement concerning the IP. See TEX. EDUC. CODE § 51.192. However,

state law mandates that this can only occur if the university employee publically

reports any such business relationship with the licensee and the relationship

complies with the university’s conflict of interest policies. Id.; see also University

of Texas System Rules and Regulations of the Board of Regents, Rule 90104. In the

instant matter, no report exists to indicate that Professor Fink ever acted as an officer

or employee of IsoSpec. 2

       Given the foregoing, Professor Fink’s relationship with IsoSpec related to his

employment with UT-Austin, because UT-Austin, not Professor Fink, had a direct

relationship with IsoSpec through a licensing agreement. CR 181-83. To the extent


2
 To the extent a UT employee may wish to act as a paid consultant for a company that has licensed
his technology, the UT Board of Regent has promulgated rules governing this type of “outside
employment.” See Rules and Regulations of the Board of Regents, Rule 30104, available at
http://www.utsystem.edu/sites/utsfiles/offices/board-of-regents/rules-regulations/30104.pdf.
Again, UT-Austin is not aware that any such outside employment agreement between Professor
Fink and IsoSpec exists.
                                               4
Professor Fink had involvement in the commercialization of the IP UT-Austin

licensed to IsoSpec, that involvement was subject to UT Board of Regents rules,

which grant UT-Austin authority over any activity related to the commercialization

of IP owned by it. 3 See University of Texas System Rules and Regulations of the

Board of Regents, Rule 90101, Sec. 7. As such, and as explained herein, the acts

from which this suit arose fell within the general scope of Professor Fink’s

employment with UT-Austin.

    II.      State employees are entitled to immunity for any act taken within the
             general scope of their employment for a government agency.

          It is settled that that Texas Civil Practice and Remedies Code § 101.106(f)

permits the dismissal of intentional torts alleged against a government employee

acting within the general scope of their employment. Franka, 332 S.W.3d at 378.

This Court recently explained that:

          “Scope of employment” is defined by the Texas Tort Claims Act as the
          performance “of a task lawfully assigned to an employee.”…This
          definition is broader than the official immunity insulating state
          employees from liability. … Thus, an employee's scope of authority
          extends to job duties to which the official has been assigned, even if the
          official errs in completing the task.”


3
  Appellees suggest that Professor Fink had a managerial or officer role in IsoSpec, citing to a
“PPM” issued by IsoSpec and attached to Appellee’s Brief. App’ee Brief at 8. By its own terms,
however, the PPM does nothing to support an assertion that Professor Fink had any type of officer
or employee role in IsoSpec itself, because the PPM merely lists Professor Fink as an “inventor”
of the technology at issue. See App’ee Appx at 4, 7, 19. As explained herein, as inventor of the
IP at issue Professor Fink could provide information to IsoSpec about his technology, through his
obligations as a UT-Austin employee to assist the OTC in the commercialization of the IP licensed
to IsoSpec, without having to enter into an outside employment agreement with IsoSpec.
                                               5
Lenoir v. Marino, 01-13-01034-CV, 2014 WL 6678947, at *10 (Tex. App.—

Houston [1st Dist.] Nov. 25, 2014, no pet.) (internal quotations and citations omitted

and emphasis added). This Court has further stated that “[i]f the purpose of serving

the employer’s business motivates the employee, his acts are within the scope of

employment.” Anderson v. Bessman, 365 S.W.3d 119, 126 (Tex. App.—Houston

[1st Dist.] 2011, no pet.). This is true even if the employee brings improper,

“personal motives” to bear in undertaking the act that forms the basis for suit against

the employee. See id.; see also Hopkins v. Strickland, No. 01–12–00315–CV, 2013

WL 1183302, at *3 (Tex. App.-Houston [1st Dist.] Mar. 21, 2013, no pet.) (mem.

op.) (“an act may still be within the scope of the employee's duties even if the specific

act that forms the basis of the civil suit was wrongly or negligently performed, so

long as the action was one related to the performance of his job”).

      Other courts in Texas have agreed that allegations that an employee

committed an act primarily for personal reasons does not resolve the scope of

employment inquiry. See, e.g., Dictaphone Corp. v. Torrealba, 520 S.W. 2d 869,

872 (Tex. Civ. App.—Houston [14th Dist.] 1975, writ ref’d n.r.e.) (“employee’s

arrangement of the performance of his duties in a manner consistent with his

personal convenience does not take him out of the scope of his employment”); Best

Steel Bldgs., Inc. v. Hardin, 553 S.W. 2d 122, 128 (Tex. Civ. App—Tyler 1977, writ

ref’d n.r.e.) (“fact that the preponderate motive of the servant is to benefit himself or


                                           6
a third person does not prevent the act from being within the scope of

employment.”). These courts have cited with approval language from the

Restatement (Second) of Agency, which provides that the relevant inquiry for

determining whether an act is within the general scope of employment is whether

“the purpose of serving the master’s business actuates the servant to any appreciable

extent.” Best Steel Bldgs., 553 S.W. 2d at 128 (emphasis added). Similarly, an

employee can be deemed to be acting within the scope of employment for a

particular employer even when the act at issue occurred while the employee was

serving multiple employers. See, e.g., Gulfcraft, Inc. v. Henderson, 300 S.W.2d 768,

773 (Tex. Civ. App.—Galveston 1957, no writ) (if alleged act was “within the

general scope of [] employment of [one employer]...the fact that [employee] was

simultaneously engaged in the furtherance of business of other employers does not

change” the scope of employment determination).

      Conversely, when an employee completely “deviates from the performance

of his duties for his own purposes, the employer is not responsible for what occurs

during that deviation,” because it is outside the scope of employment. See Goodyear

Tire & Rubber Co. v. Mayes, 236 S.W.3d 754, 757 (Tex. 2007) (employer not liable

for car accident that occurred in company vehicle while employee was on an off-

hours, entirely personal errand to buy cigarettes). Nevertheless, the Texas Supreme

Court has held conduct may still be within the scope of employment if the act is


                                         7
“referable to [a] duty owing” the employer, and that “[n]either express authorization

nor subsequent ratification” of the employee’s act by the employer is necessary to

establish that an act as within the scope of employment. Minyard Food Stores, Inc.

v. Goodman, 80 S.W.3d 573, 577 (Tex. 2002).

      Moreover, it is not dispositive to the “scope of employment” inquiry under

§ 101.106(f) that the employee is charged with committing an intentional tort. Even

suits where, as here, an employee is alleged to have acted with fraudulent intent can

arise from acts within the scope of employment, so long as the act arose in the

general course of performance of the employee’s duties. See, e.g., Reporter’s Notes,

RESTATEMENT (THIRD) OF AGENCY § 7.07 (2006) at c (citing Quick v. Peoples Bank,

993 F.2d 793, 798 (11th Cir.1993) and Inter Mountain Mtge., Inc. v. Sulimen, 93

Cal.Rptr.2d 790, 795 (Cal. App. 2000) as examples of cases where employee’s

fraudulent acts were deemed to be within scope of employment); see also Bull

Bohnsack v. Varco, L.P., 668 F.3d 262, 274 (5th Cir. 2012) (alleged employee

misrepresentations that form basis of fraudulent inducement claim can be deemed to

have arisen within scope of employment).

      Given the foregoing, in the instant case it matters not, at least for purposes of

the § 101.106(f) scope of employment analysis at issue here, that Professor Fink is

alleged to have “intentionally” misled Appellees about his technology because of a




                                          8
personal, ill motive.4 Rather, the critical question here in determining whether the

alleged acts arose within the scope of Professor Fink’s employment—as even

Appellees recognize—is whether the acts “ar[ose] from the performance of the

employee’s authorized tasks” or “was otherwise foreseeable given the nature of the

services the employee was engaged to perform on the employer’s behalf.” App’ee

Brief at 15 (citing Lenoir v. Moore, Cause No. 01-13-01034-CV, 2014 Tex. App.

LEXIS 12703, *25-27 (Tex. App.—Houston [1st Dist.] November 25, 2014, no

pet.).

         Here, Professor Fink’s activities with respect to the UT-owned IP licensed to

IsoSpec were subject to UT Board of Regents rules; these rules permitted Professor

Fink to provide “input” related to the commercialization of the IP. See University of

Texas System Rules and Regulations of the Board of Regents, Rule 90101, Sec. 7.

Further, Professor Fink’s provision of information about his invention to IP licensee

IsoSpec is a type of activity UT-Austin professors may perform, in the scope of their

employment, for purposes of assisting UT-Austin’s OTC in the commercialization

of University-owned technology. See Sanchez Aff. ¶¶ 6-7. Accordingly, the general


4
  For this reason, it is not relevant to the scope of employment inquiry that Professor Fink’s son
served on IsoSpec’s board. See App’ee Brief at 17. That is, even if the Court assumes that
Professor Fink’s alleged acts were in part motivated by some intent to financially benefit his son,
the alleged acts are still within the scope of employment if they were within the general scope of
Professor Fink’s employment duties. See, e.g., Best Steel Bldgs., Inc. v. Hardin, 553 S.W. 2d 122,
128 (Tex. Civ. App—Tyler 1977, writ ref’d n.r.e.) (“fact that the preponderate motive of the
servant is to benefit himself or a third person does not prevent the act from being within the scope
of employment.”).
                                                 9
act alleged here—namely, Professor Fink’s discussion at IsoSpec about the IP

licensed to the company—was within the range of employment-related activities he

might foreseeably perform in furthering the commercialization of the technology he

invented within the scope of his employment with UT-Austin. See id.

   III.   Any fact dispute that may exist in this matter is not relevant to the
          disposition of Professor Fink’s § 101.106(f) motion.

      Lest there be any doubt, UT-Austin disputes any allegation that Professor

Fink, or any other person affiliated with UT-Austin, acted with any intent to mislead

or defraud Appellees or any other person related to this matter. Regardless, any

purported fact dispute that may exist between the parties about the intent underlying

Professor Fink’s alleged conduct is not pertinent to the inquiry here regarding

whether Professor Fink was acting within the scope of employment when he spoke

to potential IsoSpec investors about the technology he invented.

      For example, Appellees attempt to create a fact issue by arguing that IsoSpec’s

petition in intervention below—in which IsoSpec alleges that Professor Fink’s acts

occurred “within the scope of his relationship with IsoSpec and in furtherance of

IsoSpec’s business”—creates a fact issue as to whether Professor Fink intended to

act as an employee of IsoSpec when the alleged acts took place. App’ee Brief at 26.

However, IsoSpec’s petition in intervention creates no relevant fact issue. Rather,

IsoSpec’s assertion in its petition that Professor Fink had a “relationship” with the

company is entirely consistent with Professor Fink’s assertion that he was an
                                         10
inventor of IsoSpec’s technology and had a relationship with IsoSpec as a result of

his employment with UT-Austin, the licensor of that technology.

       Moreover, even if this Court assumes that Professor Fink was intending to act,

in part, for the benefit of IsoSpec when the alleged acts occurred, that does not defeat

Professor Fink’s § 101.106(f) motion, because so long as the alleged act was “within

the general scope of [Professor Fink’s] employment of [UT-Austin]...the fact that

[Professor Fink] was simultaneously engaged in the furtherance of business of other

employers does not change” the scope of employment determination. See Gulfcraft,

Inc., 300 S.W.2d at 773. Instead, this Court must consider whether “the purpose of

serving [UT-Austin’s] business actuate[d Professor Fink’s conduct] to any

appreciable extent”; if it did, then the alleged act was within the general scope of

Professor Fink’s employment with UT-Austin and the claims against him must be

dismissed under § 101.106(f). See Best Steel Bldgs., 553 S.W. 2d at 128.

       Here, Professor Fink’s alleged conduct in attending meetings at IsoSpec was

related, to an “appreciable extent,” to the fact that: (1) UT-Austin licensed the

technology at issue to IsoSpec and (2) Professor Fink was an employee of UT-Austin

whose conduct was governed by UT Board of Regent rules.5 Stated another way, the


5
 For this reason, it matters not to the scope of employment inquiry that Appellees allege that the
Professor Fink’s alleged acts were intended to assist IsoSpec in fundraising and UT-Austin
disclaimed any interest in fundraising. See App’ee Brief at 24. This is because, even if Professor
Fink’s acts are deemed to have been motivated in part by an intention to fundraise for IsoSpec, he
must still be found to have been acting within the scope of his employment with UT-Austin if his
acts were related to his UT-Austin employment to any appreciable extent. See Best Steel Bldgs.,
                                               11
undisputed facts in the record show that: (1) the technology licensed to IsoSpec was

owned by UT-Austin due to Professor Fink’s employment with UT-Austin and (2)

Professor Fink’s relationship to IsoSpec was as an employee of UT-Austin, who in

turn acted as licensor to IsoSpec.

       For the foregoing reasons, this Court should find that, for purposes of

Professor Fink’s § 101.106(f) motion to dismiss, Professor Fink’s alleged acts

occurred within the general scope of his employment with UT-Austin. Because of

this, the claims against Professor Fink are barred under Texas Civil Practice and

Remedies Code 101.106(f) and subject to dismissal. See Franka, 332 S.W.3d at 378.

                                      CONCLUSION

       Amicus Curiae respectfully requests that this Court REVERSE the order of

the Court below and DISMISS the claims made against Professor Fink.




553 S.W. 2d at 128. Here, because Professor Fink’s relationship with IsoSpec was governed by
UT Board of Regent rules regarding IP, his actions were motivated, to at least some “appreciable”
extent, by his employment with UT-Austin.
                                               12
Respectfully submitted,

KEN PAXTON
Attorney General of Texas

CHARLES E. ROY
First Assistant Attorney General

JAMES E. DAVIS
Deputy Attorney General for Civil Litigation

ANGELA V. COLMENERO
Chief, General Litigation Division

s/ Erika M. Kane
ERIKA M. KANE
Texas Bar No. 24050850
Assistant Attorney General
Office of the Attorney General - 019
General Litigation Division
P.O. Box 12548, Capitol Station
Austin, Texas 78711
(512) 463-2120
(512) 320-0667 FAX
erika.kane@texasattorneygeneral.gov




  13
                     CERTIFICATE OF COMPLIANCE

      According to Microsoft Word, this brief contains 2,940 words, excluding the

portions of the brief exempted by Texas Rule of Appellate Procedure 9.4(i)(1).


                                       /s/ Erika M. Kane
                                      Erika M. Kane
                                      Assistant Attorney General




                                        14
                          CERTIFICATE OF SERVICE

      I certify that a true and correct copy of this brief has been served via U.S. mail
and electronic mail on all parties on June 4, 2014 by delivery to the following:

 Wade T. Howard                          H. Melissa Mather
 Michael P. Cash                         Office of the Attorney General
 Alma F. Gomez                           for the State of Texas
 LISKOW & LEWIS                          Financial Litigation, Tax, and Charitable
 1001 Fannin Street, Ste. 1800           Trusts Division
 Houston, Texas 77002                    P.O. Box 12548
 Tel (713) 651-2900                      Austin, TX 78711-2548
 Fax: (713) 651.-2908                    (512) 475-2540 – direct
 wthoward@liskow.com                     (512) 475-2994 - fax
 mpcash@liskow.com                       Melissa.Mather@texasattorneygeneral.gov
 afgomez@liskow.com                      Attorney for Appellant
 Attorney for Appellees
                                         Andrew R. Harvin, Esq.
 Timothy M. McDaniel, Esq.               Peter Wells, Esq.
 IRELAN MCDANIEL, PLLC                   DOYLE, RESTREPO, HARVIN &
 440 Louisiana Street, Suite 1800        ROBBINS, LLP
 Houston, Texas 77002                    The Lyric Centre
 Tel. 713-222-7666                       440 Louisiana, Suite 2300
 Fax. 713-222.7669                       Houston, TX 77002
 tmcdaniel@imtexaslaw.com                Tel: 713-228-5100
 Attorneys for Defendant Dr.             Fax: 713-228-6138
 Rainer Fink, Ph.D                       aharvin@drhrlaw.com
                                         PWells@drhrlaw.com
                                         Attorneys for Third-Party
                                         Defendant William Hightower




                                          15
Arnold Anderson “Andy” Vickery,        Paul Flack
Esq.                                   PRATT & FLACK, LLP
Fred H. Shepherd, Esq.                 1331 Lamar Street
THE VICKERY LAW FIRM                   Four Houston Center, Suite 1250
Park Laureate Building                 Houston, Texas 77010
10000 Memorial Drive, Suite 750        Tel: (713) 936-2401
Houston, Texas 77024                   Fax: (713) 481-0231
Tel. 713-526-1100                      pflack@prattflack.com
Fax. 713-523-5939                      Attorneys for Third-Party
Via Email: andy@justiceseekers.com     Defendant UBS
Via Email: fred@justiceseekers.com
Via Email: karin@justiceseekers.com
Attorneys for IsoSpec Technologies,
L.P.




                                   /s/ Erika M. Kane
                                  Erika M. Kane
                                  Assistant Attorney General




                                      16
                            Case No. 01-14-00990-CV

                     IN THE COURT OF APPEALS
                      FIRST JUDICIAL DISTRICT
                          HOUSTON, TEXAS
           ______________________________________________

                         DR. MANFRED FINK,
                              Appellant,
                                  v.
                     JOANNA D. ANDERSON, et al.,
                              Appellees
             ___________________________________________

                             On Appeal from
                                nd
                      the 152 Judicial District Court
                           Harris County, Texas
                           Cause No. 2014-22740
               ________________________________________

              APPENDIX TO THE UNIVERSITY OF TEXAS, AUSTIN’S
                          AMICUS CURIAE BRIEF
                       _________________________

KEN PAXTON                                                  ERIKA M. KANE
Attorney General of Texas                              Tex. Bar No. 24050850
                                                   Assistant Attorney General
CHARLES E. ROY                             OFFICE OF THE ATTORNEY GENERAL
First Assistant Attorney General             General Litigation Division – 019
                                                              P.O. Box 12548
JAMES E. DAVIS                                        Austin, Tx. 78711-2548
Deputy Attorney General for Civil                              (512) 463-2120
Litigation                                               (512) 320-0667 (Fax)
                                         Erika.Kane@texasattorneygeneral.gov
ANGELA V. COLMENERO
Division Chief – General Litigation              Attorneys for Amicus Curiae
Division                                       The University of Texas, Austin
       INDEX TO UNIVERSITY OF TEXAS, AUSTIN’S
              AMICUS CURIAE APPENDIX
            _________________________

TAB    DESCRIPTION

  1.   Affidavit of Juan M. Sanchez

  2.   UT Board of Regents Rules Governing Outside Employment
       and Intellectual Property
TAB 1
TAB 2
The University of Texas System
Rules and Regulations of the Board of Regents                           Rule: 30104


1.    Title

      Conflict of Interest, Conflict of Commitment, and Outside Activities

2.    Rule and Regulation

      Sec. 1    Primary Responsibility. The primary responsibility of employees
                of the U. T. System Administration and each of the U. T. System
                institutions is the accomplishment of the duties and
                responsibilities assigned to one's position of appointment.

      Sec. 2    Outside Work or Activity. Employees may engage in work or
                activity with outside entities and individuals, including
                governmental agencies, industry, or other educational
                institutions so long as such work or activity complies, as
                applicable, with the approval and disclosure requirements of
                Section 5 below and does not violate State laws or U. T. System
                Administration or U. T. System institution rules or policies
                governing the conduct of employees, including ethics standards
                and provisions prohibiting conflicts of interest, conflicts of
                commitment, and the use of State resources.

      Sec. 3    Unmanaged Conflicts of Interest Prohibited. U. T. System
                Administration and U. T. System institution employees may not
                have a direct or indirect interest, including financial and other
                interests, or engage in a business transaction or professional
                activity, or incur any obligation of any nature that is in
                substantial conflict with the proper discharge of the employee’s
                duties in the public interest.

      Sec. 4    Conflicts of Commitment Prohibited. Activities on behalf of
                outside entities or individuals must not interfere with a U. T.
                System Administration or U. T. System institution employee’s
                fulfillment of his/her duties and responsibilities to the University.
                Such conflicts of commitment may arise regardless of the
                location of these activities (on or off campus), the type of
                outside entity (individual, for-profit, not-for-profit, or
                government), or the level of compensation (compensated or
                unpaid).

      Sec. 5    Approval and Disclosure Requirements. U. T. System
                Administration and each institution shall adopt policies that
                clearly delineate the nature and amount of permissible outside
                work or activities. The policies shall include provisions to
                prevent, identify, and manage conflicts of interest and conflicts


                                                                         Page 1 of 5
The University of Texas System
Rules and Regulations of the Board of Regents                       Rule: 30104


               of commitment and shall include specific processes for
               disclosing such work or outside activities, as well as the
               procedures for obtaining and documenting institutional approval
               to carry out such engagements, consistent with this Rule.

               5.1   Approval Required for Compensated Outside Work or
                     Activity and for Outside Board Service. No full-time
                     member of the faculty or administrative and professional
                     staff employed by the U. T. System or any of the
                     institutions on a 12-month or nine-month basis shall be
                     employed in any outside work or activity or receive from
                     an outside source any compensation, or serve on an
                     outside board until a description of the nature and extent
                     of the employment or activity and the range of any
                     compensation has been timely filed with and approved by
                     the president of the institution, or his or her designee(s),
                     or by the Chancellor or his or her designee(s) for U. T.
                     System Administration employees, as set forth in the
                     policies of the U. T. System or the Handbook of
                     Operating Procedures of each institution. Filings and
                     approvals for the presidents will be made to the
                     appropriate Executive Vice Chancellor. Filings and
                     approvals for the Chancellor, the General Counsel to the
                     Board, and the Chief Audit Executive will be made to the
                     Chairman of the Board.

               5.2   Additional Financial Disclosures. All officers and
                     employees shall, in a timely manner, furnish such
                     additional written financial disclosures as may be
                     required by State or federal authorities or by U. T.
                     System Administration or institutional authorities.

               5.3   Electronic Database. Disclosure of outside activity,
                     documentation of requests for approval, and subsequent
                     approvals required under Section 5.1, above, shall be
                     maintained in an electronic database, following
                     guidelines provided by U. T. System Administration.

      Sec. 6   Free Advice. Even in the case of employees specifically
               engaged only in residence work, there exists an obligation,
               usually intermittent, to furnish expert knowledge and counsel for
               public benefit free of charge, provided that the meeting of this
               obligation by an employee does not interfere with his or her
               regular duties, and provided further that in meeting this



                                                                    Page 2 of 5
The University of Texas System
Rules and Regulations of the Board of Regents                                               Rule: 30104


                      obligation an employee shall avoid undue competition with
                      legitimate private agencies.

         Sec. 7       Separation of Activities. If a U. T. System Administration or
                      U. T. System institution employee engages in any outside
                      activity, the employee must make it clear to those who employ
                      him or her that the work is unofficial and that the name of the
                      U. T. System or any of the institutions is not in any way to be
                      connected with the employee’s name, except when used to
                      identify the member as the author of work related to the
                      employee’s academic or research area as more fully described
                      in Rule 90101 of the Regents’ Rules and Regulations
                      concerning general rules for intellectual property. No employee
                      engaged in outside activities shall use in connection therewith
                      the official stationery of the System, give as a business address
                      any building or department of the U. T. System or any of the
                      institutions, or any University telephone extension.

         Sec. 8       Use of University Property. U. T. System Administration and
                      U. T. System institutional property may only be used for State
                      purposes appropriate to the System or institutional mission.

         Sec. 9       Opinions for Advertising Purposes. Every employee must
                      protect the U. T. System and U. T. System institutions against
                      the use of opinions for advertising purposes.

         Sec. 10      Noncompliance. Noncompliance with this Rule subjects an
                      employee to disciplinary action, including termination, in accord
                      with applicable procedures.

3.       Definitions

         Compensation – any form of benefit including but not limited to salary,
         retainer, honoraria, intellectual property rights, or royalties, or promised,
         deferred, or contingent interest. 1

4.       Relevant Federal and State Statutes

         Texas Government Code Chapter 572 – Personal Financial Disclosure,
         Standards of Conduct, and Conflict of Interest

1
  Sponsored or reimbursed travel is included for consistency with Public Health Service regulations and
UTS175 governing conflicts of interest in research [42 CFR Sec. 50.603, definition of “significant financial
interest,” at (2)]. It does not apply to travel that is reimbursed or sponsored by a Federal, state, or local
government agency, an institution of higher education, an academic teaching hospital, a medical center, or
a research institute that is affiliated with an institution of higher education.


                                                                                             Page 3 of 5
The University of Texas System
Rules and Regulations of the Board of Regents                      Rule: 30104



5.    Relevant System Policies, Procedures, and Forms

      Regents’ Rules and Regulations, Rule 30103 – Standards of Conduct

      Regents’ Rules and Regulations, Rule 90101 – Rules for Intellectual
      Property: Purpose, Scope, Authority

      The University of Texas System Office of General Counsel website on
      ethics

      The University of Texas System Policy UTS118, Statement of Operating
      Policy Pertaining to Dishonest or Fraudulent Activities

      The University of Texas System Policy UTS123, Policy on Service on
      Outside Boards

      The University of Texas System Policy UTS134, Code of Ethics for
      Financial Officers and Employees

      The University of Texas System Policy UTS175, Disclosure of Significant
      Financial Interests and Management and Reporting of Financial Conflicts
      of Interest in Research

      The University of Texas System Policy UTS180, Conflicts of Interest,
      Conflicts of Commitment, and Outside Activities

      The University of Texas System Administration Internal Policy INT129,
      Outside Employment

      The University of Texas System Administration Internal Policy INT180,
      Conflicts of Interest, Conflicts of Commitment, and Outside Activities

6.    Who Should Know

      Board of Regents
      Employees

7.    System Administration Office(s) Responsible for Rule

      Office of General Counsel

8.    Dates Approved or Amended

      February 12, 2015


                                                                    Page 4 of 5
The University of Texas System
Rules and Regulations of the Board of Regents                     Rule: 30104


      July 11, 2012
      Editorial amendment to Numbers 4 and 5 made April 17, 2008
      December 10, 2004

9.    Contract Information

      Questions or comments regarding this Rule should be directed to:

         •   bor@utsystem.edu




                                                                   Page 5 of 5
The University of Texas System
Rules and Regulations of the Board of Regents                         Rule: 90101


1.    Title

      Rules for Intellectual Property: Purpose, Scope, Authority

2.    Rule and Regulation

      Sec. 1    Purpose. To balance the interests of the many contributors to
                the substantial creation of intellectual property at and by the
                U. T. System, the Board of Regents promulgates these Rules
                on intellectual property with the purpose to (a) provide certainty
                in research pursuits and technology-based relationships with
                third parties; (b) create an optimal environment for research,
                development, and commercialization opportunities with private
                industry; and (c) encourage the timely and efficient protection
                and management of intellectual property.

      Sec. 2    Individuals Subject to this Rule. This intellectual property Rule
                applies (a) to all persons employed by the U. T. System or any
                U. T. System institution, including, but not limited to, full and
                part-time faculty and staff and visiting faculty members and
                researchers, and (b) to anyone using the facilities or resources
                of the U. T. System or any U. T. System institution, including,
                but not limited to, students enrolled at a U. T. System institution
                such as in an undergraduate or graduate degree program or
                certificate program, and postdoctoral and predoctoral fellows.
                The Board of Regents automatically owns the intellectual
                property created by individuals subject to this Rule that is
                described in Sections 3, 5, and 6 below and in Rule 90102,
                Sections 2 and 3. Accordingly, all individuals subject to this Rule
                must assign and do hereby assign their rights in such
                intellectual property to the Board of Regents. Moreover,
                individuals subject to this Rule who create such intellectual
                property (creators) shall promptly execute and deliver all
                documents and other instruments as are reasonably necessary
                to reflect the Board of Regents’ ownership of such intellectual
                property. A creator of intellectual property owned by the Board
                of Regents has no independent right or authority to convey,
                assign, encumber, or license such intellectual property to any
                entity other than the Board of Regents.

      Sec. 3    Intellectual Property Included. Except as set forth in Sections 4
                and 5 below and Rule 90102 of the Regents’ Rules and
                Regulations, this Rule applies to all types of intellectual
                property, including, but not limited to, any invention, discovery,
                creation, know-how, trade secret, technology, scientific or


                                                                      Page 1 of 4
The University of Texas System
Rules and Regulations of the Board of Regents                         Rule: 90101


               technological development, research data, works of authorship,
               and computer software regardless of whether subject to
               protection under patent, trademark, copyright, or other laws.

      Sec. 4   Interest in Certain Copyrights. Notwithstanding Section 3
               above, the Board of Regents will not assert an ownership
               interest in the copyright of scholarly or educational materials,
               artworks, musical compositions, and literary works related to the
               author's academic or professional field, regardless of the
               medium of expression. This exemption applies to works
               authored by students, professionals, faculty, and nonfaculty
               researchers. The Board of Regents encourages these creators
               to manage their copyrights in accordance with the guidelines
               concerning management and marketing of copyrighted works
               consistent with applicable institutional policies.

      Sec. 5   Copyright Interest in Certain Software. The Board of Regents
               asserts ownership in software; however, copyright in original
               software that is content covered by Section 4 above or that is
               integral to the presentation of such content shall be owned by
               the creator in accordance with Section 4 above.

      Sec. 6   Works for Hire and Institutional Projects. Notwithstanding the
               provisions of Sections 4 and 5 above, the Board of Regents
               shall have sole ownership of all intellectual property created by
               (a) an employee, student, or other individual or entity
               commissioned, required, or hired specifically to produce such
               intellectual property by the U. T. System or any U. T. System
               institution, and (b) an employee, student, or other individual as
               part of an institutional project. Except as may be provided
               otherwise in a written agreement approved by the institution or
               the U. T. System, the provisions of the Regents’ Rules and
               Regulations, Rule 90102, Section 2.5, relating to division of
               royalties, shall not apply to intellectual property owned solely by
               the Board of Regents pursuant to this Section.

      Sec. 7   Role of Creator. Any person subject to this Rule who creates
               intellectual property (other than a work for hire under Section 6
               above or on government or other sponsored research projects
               where the grant agreements provide otherwise) may give
               reasonable input on commercialization of inventions; provided
               however, that the president(s) of the applicable institution(s), or
               his or her designee(s), in his or her sole discretion, will make
               final decisions concerning whether and how to develop and
               commercialize an invention.


                                                                      Page 2 of 4
The University of Texas System
Rules and Regulations of the Board of Regents                        Rule: 90101



      Sec. 8    Use of Facilities and Resources. Neither the facilities nor the
                resources of the U. T. System or any U. T. System institution
                may be used (a) to create, develop, or commercialize
                intellectual property outside the course and scope of
                employment of an individual (see Regents’ Rules and
                Regulations, Rule 90102, Section 1) or (b) to further develop or
                commercialize intellectual properties that have been released to
                an inventor (see Regents’ Rules and Regulations, Rule 90102,
                Sections 2.2 and 2.3) except as the institution's president may
                approve where the U. T. System retains an interest under the
                terms of the release.

      Sec. 9    Use of Research Data. Research data or results created by an
                employee are owned by the Board of Regents and, except to
                the extent that rights to such research data are contractually
                assigned or licensed to another by the Board of Regents, the
                creator shall have a nonexclusive license to use such data for
                nonprofit educational, research, and scholarly purposes within
                the scope of the employee's employment, subject to adherence
                to other provisions of this Rule.

      Sec. 10   Limited License to Institution. Notwithstanding Section 4 above
                and as reasonably required for the limited purpose of continuing
                an institution’s scheduled course offerings, the Board of
                Regents retains for one year following the loss of a course
                instructor’s services, a fully paid-up, royalty-free, nonexclusive
                worldwide license to use, copy, distribute, display, perform, and
                create derivative works of materials prepared by the instructor
                for use in teaching a course (including lectures, lecture notes,
                syllabi, study guides, bibliographies, visual aids, images,
                diagrams, multimedia presentations, examinations, web-ready
                content, and educational software).

3.    Definitions

      None

4.    Relevant Federal and State Statutes

      Texas Education Code, Chapter 153 – Centers for Technology
      Development and Transfer

5.    Relevant System Policies, Procedures, and Forms



                                                                      Page 3 of 4
The University of Texas System
Rules and Regulations of the Board of Regents                     Rule: 90101


      Regents’ Rules and Regulations, Rule 90102 – Intellectual Property
      Rights and Obligations

      Regents’ Rules and Regulations, Rule 90103 – Equity Interests

      Regents’ Rules and Regulations, Rule 90104 – Business Participation and
      Reporting

      Regents’ Rules and Regulations, Rule 90105 – Execution of Legal
      Documents Related to Intellectual Property

      Regents’ Rules and Regulations, Rule 90106 – Income from Intellectual
      Property

6.    Who Should Know

      Administrators
      Faculty
      Staff
      Students

7.    System Administration Office(s) Responsible for Rule

      Office of General Counsel

8.    Dates Approved or Amended

      Editorial amendment to Number 4 made December 8, 2014
      November 10, 2011
      Editorial amendments made October 6, 2011
      Editorial amendment to Sec. 4 made September 29, 2011
      February 8, 2007
      December 10, 2004

9.    Contact Information

      Questions or comments regarding this Rule should be directed to:

         •   bor@utsystem.edu




                                                                   Page 4 of 4
The University of Texas System
Rules and Regulations of the Board of Regents                         Rule: 90102


1.    Title

      Intellectual Property Rights and Obligations

2.    Rule and Regulation

      Sec. 1    Intellectual Property Owned by the Creator. Intellectual property
                developed or created by a U. T. System employee outside the
                course and scope of employment of the individual which is
                developed or created on his/her own time and without the
                support of the U. T. System or any U. T. System institution or
                use of their facilities or resources, is the exclusive property of
                the creator.

      Sec. 2    Intellectual Property Owned by U. T. System. Intellectual
                property either developed within the course and scope of
                employment of the individual or resulting from activities
                performed on U. T. System time, or with support of State funds,
                or from using facilities or resources owned by the U. T. System
                or any U. T. System institution (other than incidental use) is
                owned by the Board of Regents. To effectively implement this
                Rule and provide certainty to individuals subject to this Rule, a
                U. T. System institution may promulgate institutional rules,
                regulations, or policies defining the course and scope of
                employment for persons or classes of persons and specifying
                that authorized (pursuant to existing rules and procedures)
                outside employment is or is not within an employee’s course
                and scope of employment.

                2.1    Determination of U. T. System’s Interest. Before
                       intellectual property subject to ownership by the Board of
                       Regents is disclosed to any party outside the U. T.
                       System, to the public generally, or for commercial
                       purposes, and before publishing same, the creator shall
                       submit a reasonably complete and detailed disclosure of
                       such intellectual property to the president of the creator's
                       institution for determination of the U. T. System's interest.
                       The institution will regularly and promptly communicate
                       with the creator during this decision-making process.

                2.2    Election Not to Assert Ownership Interest. If the
                       institution’s president elects not to assert U. T. System's
                       interest, the U. T. System Office of General Counsel and
                       the primary creator shall be notified in writing within
                       20 business days after a decision is made not to assert


                                                                       Page 1 of 5
The University of Texas System
Rules and Regulations of the Board of Regents                        Rule: 90102


                     ownership rights that the institution will offer the released
                     intellectual property to the creator (see Rule 90101,
                     Section 8), except where prohibited by law or contractual
                     obligations or requirements. Thereafter, the creator will
                     be free to obtain and exploit a patent or other intellectual
                     property protection in his or her own right and the U. T.
                     System and U. T. System institutions shall not have any
                     further rights, obligations, or duties with respect thereto
                     except that, in appropriate circumstances, the institution’s
                     president may elect to impose certain limitations or
                     obligations, including, but not limited to, a nonexclusive
                     license for the creator, U. T. System, and any U. T.
                     System institution to use the released invention for
                     patient care, teaching, scholarly and other academically
                     related purposes, and nonprofit research.

               2.3   Later Release of Invention. Except where prohibited by
                     law or contractual obligations or requirements, the
                     institution’s president may elect to release an invention to
                     its creator at any time after asserting U. T. System's
                     interest, with notice to the U. T. System Office of General
                     Counsel (see Rule 90101, Section 8); however, such a
                     release must include provisions for the recovery by U. T.
                     System of patent and licensing expenses, if any, as well
                     as the retention of income rights by U. T. System, and
                     may include certain limitations or obligations, including
                     those set forth in Section 2.2 above.

               2.4   Protection and Commercialization of Intellectual Property.
                     With respect to intellectual property in which the U. T.
                     System or any U. T. System institution asserts an
                     interest, the institution’s president, or his or her designee,
                     shall decide how, when, and where the intellectual
                     property is to be protected and commercialized. Outside
                     counsel services may be contracted with the prior
                     consent of the U. T. System Vice Chancellor and General
                     Counsel and, if required by law, the approval of the
                     Attorney General. U. T. System shall establish an
                     intellectual property data collection system.

               2.5   Reimbursement of Licensing Costs and Allocation of
                     Income. In those instances where the U. T. System or
                     any U. T. System institution licenses rights in intellectual
                     property to third parties, and other than with regard to
                     elections under Section 2.2 above, the costs of licensing,


                                                                      Page 2 of 5
The University of Texas System
Rules and Regulations of the Board of Regents                        Rule: 90102


                     including, but not limited to, the costs to operate and
                     support a technology transfer office and the costs of
                     obtaining a patent or other protection for the property on
                     behalf of the Board of Regents must first be recaptured
                     from any royalties or other license payments received by
                     the U. T. System or any U. T. System institution. The
                     remainder of any such income (including but not limited
                     to license fees, prepaid royalties, minimum royalties,
                     running royalties, milestone payments, and sublicense
                     payments) shall be divided as follows:

                                           50% to creator(s)
                                           50% to U. T. System,

                     provided, however, that a creator may disclaim his/her
                     interest in such income, in which case the institution shall
                     receive the creator’s share and shall decide, in its sole
                     discretion, if, how, and when to disburse such income.

                     With the prior approval of the Board and after review by
                     the U. T. System Vice Chancellor and General Counsel
                     and the appropriate Executive Vice Chancellor, an
                     institution may adjust the allocation of royalties set forth
                     herein for all creators.

      Sec. 3   Intellectual Property Involving Sponsored Research. Intellectual
               property resulting from research supported by a grant or
               contract with the government (federal and/or state), or an
               agency thereof, with a nonprofit or for-profit nongovernmental
               entity, or by a private gift or grant to the U. T. System or any
               U. T. System institution is owned by the Board of Regents.

               3.1   Nonconformance with Intellectual Property Guidelines.
                     Administrative approval of such grants and contracts
                     containing provisions inconsistent with this Rule or other
                     policies and guidelines adopted by the Board imply a
                     decision that the value to the U. T. System or any U. T.
                     System institution of receiving the grant or performing the
                     contract outweighs the impact of any nonconforming
                     provisions on the intellectual property policies and
                     guidelines of the U. T. System or any U. T. System
                     institution (Reference Regents’ Rules and Regulations,
                     Rule 90105, Section 2).




                                                                      Page 3 of 5
The University of Texas System
Rules and Regulations of the Board of Regents                       Rule: 90102


               3.2   Conflicting Provisions. Subject to approval as described
                     in Subsection 3.1 above, the intellectual property policies
                     and guidelines of the U. T. System or any U. T. System
                     institution are subject to, and thus amended and
                     superseded by, the specific terms pertaining to
                     intellectual property rights included in state and/or federal
                     grants and contracts, or grants and contracts with
                     nonprofit and for-profit nongovernmental entities or
                     private donors, to the extent of any such conflict.

               3.3   Cooperation with Necessary Assignments. Those
                     persons subject to this Rule whose intellectual property
                     creations result from a grant or contract with the
                     government (federal and/or state), or any agency thereof,
                     or with a nonprofit or for-profit nongovernmental entity, or
                     by private gift to the U. T. System or any U. T. System
                     institution shall promptly execute and deliver such
                     documents and other instruments as are reasonably
                     necessary for the U. T. System or any U. T. System
                     institution to discharge its obligations, expressed or
                     implied, under the particular agreement.

               3.4   Sharing of Royalty Income. In the event that two or more
                     persons who are entitled to share royalty income
                     pursuant to Section 2.5 of this Rule (or equity pursuant to
                     Regents’ Rules and Regulations, Rule 90103 concerning
                     equity interests) cannot agree in writing on an
                     appropriate sharing arrangement, the institution’s
                     president shall determine that portion of the royalty
                     income to which the creators are entitled under the
                     circumstances and such amount will be distributed to
                     them accordingly. In the event that the creators are
                     located at two or more U. T. System institutions and
                     cannot agree, such royalty (or equity) distribution
                     decision shall be made by the involved institutions’
                     presidents (or their respective designees). In the further
                     event that the involved presidents cannot agree, then the
                     Chancellor (or designee) shall decide and his/her
                     decision shall be binding on the creators.

               3.5   Geographical Scope of Protection. A decision by the
                     U. T. System or any U. T. System institution to seek
                     patent or other available protection for intellectual
                     property covered by Section 2 of this Rule shall not
                     obligate the U. T. System or any U. T. System institution


                                                                     Page 4 of 5
The University of Texas System
Rules and Regulations of the Board of Regents                       Rule: 90102


                       to pursue such protection in all national jurisdictions.
                       The U. T. System's decision relating to the geographical
                       scope and duration of such protection shall be final.

3.    Definitions

      None


4.    Relevant Federal and State Statutes

      Texas Education Code, Chapter 153 – Centers for Technology
      Development and Transfer

5.    Relevant System Policies, Procedures, and Forms

      Regents’ Rules and Regulations, Rule 90101 – Rules for Intellectual
      Property: Purpose, Scope, Authority

      Regents’ Rules and Regulations, Rule 90103 – Equity Interests

      Regents’ Rules and Regulations, Rule 90104 – Business Participation and
      Reporting

      Regents’ Rules and Regulations, Rule 90105 – Execution of Legal
      Documents Related to Intellectual Property

      Regents’ Rules and Regulations, Rule 90106 – Income from Intellectual
      Property

6.    Who Should Know

      Administrators
      Faculty
      Staff
      Students

7.    System Administration Office(s) Responsible for Rule

      Office of General Counsel

8.    Dates Approved or Amended

      Editorial amendment to Number 4 made December 8, 2014
      Editorial amendment to Sec. 2.5 made May 23, 2013


                                                                    Page 5 of 5
The University of Texas System
Rules and Regulations of the Board of Regents                     Rule: 90102


      November 10, 2011
      Editorial amendments made October 6, 2011
      Editorial amendment to Sec. 2.5 made September 1, 2010
      February 8, 2007
      December 10, 2004

9.    Contact Information

      Questions or comments regarding this Rule should be directed to:

         •   bor@utsystem.edu




                                                                   Page 6 of 5
The University of Texas System
Rules and Regulations of the Board of Regents                          Rule: 90103


1.    Title

      Equity Interests

2.    Rule and Regulation

      Sec. 1    Agreements with Business Entities. In agreements with
                business entities relating to rights in intellectual property owned
                by the Board of Regents, the U. T. System or any U. T. System
                institution may receive equity interests as partial or total
                compensation for the rights conveyed. In any such instance, the
                institution where the intellectual property was created may elect,
                at its option, to share an equity interest, dividend income, or the
                proceeds of the sale of an equity interest with the creator(s) in
                the same manner as royalties are shared pursuant to Regents’
                Rules and Regulations, Rule 90102, Section 2.5. The U. T.
                System or any U. T. System institution may also receive equity
                interests in a business entity as consideration for the institution's
                role as a founder, or for other contributions made to the
                business entity other than as a licensor, and institution shall not
                be obligated to share such equity interests with the creator(s).

      Sec. 2    Creator Holding Equity and Managing Conflict of Interest.
                Employees of the U. T. System or any U. T. System institution
                who conceive, create, discover, invent, or develop intellectual
                property may hold an equity interest in a business entity that
                has an agreement with the U. T. System or any U. T. System
                institution relating to the research, development, licensing, or
                exploitation of that intellectual property only so long as the
                institution where the intellectual property was developed is in full
                compliance with the requirements to have, implement, and
                enforce for that employee an effective conflict of interest
                management plan approved by the institution's president as set
                forth in the U. T. System’s Procedure for Obtaining Approval of
                Plan to Manage Conflicts of Interest
                (http://www.utsystem.edu/ogc/IntellectualProperty/ProcedureMa
                nagingConflicts.htm). In any case where actual conflict of
                interest is found, the employee may be required to divest the
                equity interest or terminate affected research.

      Sec. 3    Employee Equity Interests. The U. T. System or any U. T.
                System institution may, but shall not be obligated to, negotiate
                an equity interest on behalf of any employee as a part of an
                agreement between the U. T. System or any U. T. System
                institution and a business entity relating to intellectual property


                                                                        Page 1 of 3
The University of Texas System
Rules and Regulations of the Board of Regents                     Rule: 90103


                conceived, created, discovered, invented, or developed by the
                employee and owned by the Board of Regents.

3.    Definitions

      None

4.    Relevant Federal and State Statutes

      Texas Education Code, Chapter 153 – Centers for Technology
      Development and Transfer

5.    Relevant System Policies, Procedures, and Forms

      Regents’ Rules and Regulations, Rule 90101 – Rules for Intellectual
      Property: Purpose, Scope, Authority

      Regents’ Rules and Regulations, Rule 90102 – Intellectual Property
      Rights and Obligations

      Regents’ Rules and Regulations, Rule 90104 – Business Participation and
      Reporting

      Regents’ Rules and Regulations, Rule 90105 – Execution of Legal
      Documents Related to Intellectual Property

      Regents’ Rules and Regulations, Rule 90106 – Income from Intellectual
      Property

6.    Who Should Know

      Administrators
      Faculty
      Staff
      Students

7.    System Administration Office(s) Responsible for Rule

      Office of General Counsel

8.    Dates Approved or Amended

      Editorial amendment to Number 4 made December 8, 2014
      November 10, 2011
      Editorial amendments made October 6, 2011


                                                                   Page 2 of 3
The University of Texas System
Rules and Regulations of the Board of Regents                     Rule: 90103


      February 8, 2007
      December 10, 2004

9.    Contact Information

      Questions or comments regarding this Rule should be directed to:

         •   bor@utsystem.edu




                                                                   Page 3 of 3
The University of Texas System
Rules and Regulations of the Board of Regents                        Rule: 90104


1.    Title

      Business Participation and Reporting

2.    Rule and Regulation

      Sec. 1   Approval to Serve as Officer or Director. Any individual subject
               to Rule 90101, Section 2 who conceives, creates, discovers,
               invents, or develops intellectual property may serve, in his/her
               individual capacity, as a member of the board of directors or
               other governing board or as an officer or an employee (other
               than as a consultant) of a business entity that has an agreement
               with the U. T. System or any U. T. System institution relating to
               the research, development, licensing, or exploitation of that
               intellectual property only so long as the institution where the
               intellectual property was developed is in full compliance with the
               requirements to have, implement, and enforce for that individual
               an effective conflict of interest management plan approved by
               the institution's president as set forth in the U. T. System’s
               Procedure for Obtaining Approval of Plan to Manage Conflicts of
               Interest. In any case where actual conflict of interest is found,
               the individual may be required to terminate the business
               relationship or the relevant research.

      Sec. 2   Request for Employee to Serve as Officer or Director. When
               requested by the Board of Regents, an employee may serve on
               behalf of the Board of Regents as a member of the board of
               directors or other governing board of a business entity that has
               an agreement with the U. T. System or any U. T. System
               institution relating to the research, development, licensing, or
               exploitation of intellectual property, but may not accept any
               consideration offered for service on such board.

      Sec. 3   Report of Equity Interest and Service as Officer or Director. Any
               individual subject to Regents’ Rules and Regulations, Rule
               90101, Section 2; Rule 90103, Section 2; and Sections 1 or 2
               above must report in writing to the president of the institution the
               name of any business entity in which the person has an interest
               or for which the person serves as a director, officer, or
               employee and shall be responsible for submitting a revised
               written report upon any change in the interest or position held by
               such person in such business entity. The Office of Technology
               Commercialization will file a report by October 1 of each year
               with the Board of Regents for transmittal to the Comptroller of



                                                                      Page 1 of 3
The University of Texas System
Rules and Regulations of the Board of Regents                     Rule: 90104


                Public Accounts as required by Section 51.912 and Section
                51.005, Texas Education Code.


3.    Definitions

      None

4.    Relevant Federal and State Statutes

      Texas Education Code Section 51.005 – Reports

      Texas Education Code Section 51.912 – Equity Ownership: Business
      Participation

      Texas Education Code, Chapter 153 – Centers for Technology
      Development and Transfer

5.    Relevant System Policies, Procedures, and Forms

      Regents’ Rules and Regulations, Rule 90101 – Rules for Intellectual
      Property: Purpose, Scope, Authority

      Regents’ Rules and Regulations, Rule 90102 – Intellectual Property
      Rights and Obligations

      Regents’ Rules and Regulations, Rule 90103 – Equity Interests

      Regents’ Rules and Regulations, Rule 90105 – Execution of Legal
      Documents Related to Intellectual Property

      Regents’ Rules and Regulations, Rule 90106 – Income from Intellectual
      Property

6.    Who Should Know

      Administrators
      Faculty
      Staff
      Students

7.    System Administration Office(s) Responsible for Rule

      Office of General Counsel



                                                                   Page 2 of 3
The University of Texas System
Rules and Regulations of the Board of Regents                     Rule: 90104


8.    Dates Approved or Amended

      Editorial amendment to Number 4 made December 8, 2014
      November 10, 2011
      Editorial amendments made October 6, 2011
      Editorial amendment to Sec. 3 made September 29, 2011
      Editorial amendment to Sec. 3 made September 1, 2010
      Editorial amendment to Sec. 3 made November 3, 2009
      February 8, 2007
      December 10, 2004

9.    Contact Information

      Questions or comments regarding this Rule should be directed to:

         •   bor@utsystem.edu




                                                                   Page 3 of 3
The University of Texas System
Rules and Regulations of the Board of Regents                         Rule: 90105


1.    Title

      Execution of Legal Documents Related to Intellectual Property

2.    Rule and Regulation

      Sec. 1   Execution of Agreements. Agreements that grant an interest in
               Board intellectual property, including but not limited to option
               and license agreements and contracts with corporate sponsors,
               may be executed and delivered in accordance with the
               provisions of the Regents’ Rules and Regulations, Rule 10501,
               after any required review by the U. T. System Office of General
               Counsel.

      Sec. 2   Agreements That Do Not Conform to the Rules. Any agreement
               that deviates substantially from the basic intellectual property
               Rule of the U. T. System as set out in the Regents’ Rules and
               Regulations may be executed and delivered as set forth in
               Section 1 above if, in the judgment of the institution’s president
               and after any required review by the U. T. System Office of
               General Counsel, the benefits from the level of funding for
               proposed research and/or other consideration from a sponsor,
               licensee, or other party outweigh any potential disadvantage
               that may result from the Rule deviation.

      Sec. 3   Authority to Execute Documents. The Chancellor, the
               appropriate Executive Vice Chancellor, or the Vice Chancellor
               and General Counsel may execute, on behalf of the Board of
               Regents, legal documents relating to the Board's rights in
               intellectual property, including, but not limited to, applications,
               declarations, affidavits, powers of attorney, disclaimers, and
               other such documents relating to patents and copyrights;
               applications, declarations, affidavits, affidavits of use, powers of
               attorney, and other such documents relating to trademarks; and
               corporate documents related to the formation of new
               companies. In addition, the institution’s president may execute,
               on behalf of the Board, (a) institutional applications for
               registration or recordation of transfers of ownership and other
               such documents relating to copyrights and (b) corporate
               documents related to the formation of new companies if (i) first
               reviewed and approved by the U. T. System Office of General
               Counsel or (ii) first reviewed and approved by institution’s
               outside counsel working under a U. T. System Office of General
               Counsel-approved outside counsel agreement.



                                                                      Page 1 of 3
The University of Texas System
Rules and Regulations of the Board of Regents                     Rule: 90105


3.    Definitions

      None

4.    Relevant Federal and State Statutes

      Texas Education Code, Chapter 153 – Centers for Technology
      Development and Transfer

5.    Relevant System Policies, Procedures, and Forms

      Regents’ Rules and Regulations, Rule 10501 – Delegation to Act on
      Behalf of the Board

      Regents’ Rules and Regulations, Rule 90101 – Rules for Intellectual
      Property: Purpose, Scope, Authority

      Regents’ Rules and Regulations, Rule 90102 – Intellectual Property
      Rights and Obligations

      Regents’ Rules and Regulations, Rule 90103 – Equity Interests

      Regents’ Rules and Regulations, Rule 90104 – Business Participation and
      Reporting

      Regents’ Rules and Regulations, Rule 90106 – Income from Intellectual
      Property

6.    Who Should Know

      Administrators
      Faculty
      Staff
      Students

7.    System Administration Office(s) Responsible for Rule

      Office of General Counsel

8.    Dates Approved or Amended

      Editorial amendment to Number 4 made December 8, 2014
      Editorial amendments made October 6, 2011
      Editorial amendment to Sec. 3 made September 1, 2010
      February 8, 2007


                                                                   Page 2 of 3
The University of Texas System
Rules and Regulations of the Board of Regents                     Rule: 90105


      December 10, 2004


9.    Contact Information

      Questions or comments regarding this Rule should be directed to:

         •   bor@utsystem.edu




                                                                   Page 3 of 3
The University of Texas System
Rules and Regulations of the Board of Regents                       Rule: 90106


1.    Title

      Income from Intellectual Property

2.    Rule and Regulation

      Sec. 1    Use of Income. The portion of the net income the U. T. System
                or any U. T. System institution retains from royalties and any
                other intellectual property-related income shall be used by the
                U. T. System institution where the income-producing intellectual
                property originated.

3.    Definitions

      None

4.    Relevant Federal and State Statutes

      Texas Education Code, Chapter 153 – Centers for Technology
      Development and Transfer

5.    Relevant System Policies, Procedures, and Forms

      Regents’ Rules and Regulations, Rule 90101 – Rules for Intellectual
      Property: Purpose, Scope, Authority

      Regents’ Rules and Regulations, Rule 90102 – Intellectual Property
      Rights and Obligations

      Regents’ Rules and Regulations, Rule 90103 – Equity Interests

      Regents’ Rules and Regulations, Rule 90104 – Business Participation and
      Reporting

      Regents’ Rules and Regulations, Rule 90105 – Execution of Legal
      Documents Related to Intellectual Property



6.    Who Should Know

      Administrators
      Faculty
      Staff
      Students


                                                                    Page 1 of 2
The University of Texas System
Rules and Regulations of the Board of Regents                     Rule: 90106



7.    System Administration Office(s) Responsible for Rule

      Office of General Counsel

8.    Dates Approved or Amended

      Editorial amendment to Number 4 made December 8, 2014
      November 10, 2011
      Editorial amendments made October 6, 2011
      December 10, 2004

9.    Contact Information

      Questions or comments regarding this Rule should be directed to:

         •   bor@utsystem.edu




                                                                   Page 2 of 2
