     Case: 17-11113     Document: 00514701356   Page: 1   Date Filed: 10/29/2018




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


                                 No. 17-11113                           FILED
                                                                 October 29, 2018
                                                                   Lyle W. Cayce
In the Matter of: PROVIDER MEDS, L.L.C.,                                Clerk

             Debtor

RPD HOLDINGS, L.L.C.,

             Appellant

v.

TECH PHARMACY SERVICES, doing business as Advanced Pharmacy
Services,

             Appellee




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


Before HIGGINBOTHAM, SMITH, and GRAVES, Circuit Judges.
PATRICK E. HIGGINBOTHAM, Circuit Judge:
      RPD Holdings, L.L.C. claims that it purchased a patent license from
multiple debtors in bankruptcy sales of their estates. Tech Pharmacy Services
argues that RPD does not have rights under the license to Tech Pharm’s
patented invention. Concluding that the patent license was a rejected
executory contract and could not have been transferred by the bankruptcy
sales in question, we agree with Tech Pharm and affirm the decision of the
district court.
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                                   No. 17-11113
                                         I
      This appeal emerges from a series of bankruptcy cases involving
“OnSite.” The entities involved in operating OnSite, the “OnSite parties,”
placed dispensing machines with long-term care facilities, then used
proprietary OnSite software to remotely dispense pharmaceuticals from the
machines to nurses in the facilities. They had a joint corporate parent,
OnSiteRx, but functioned as independent business entities 1—and, when the
time came to file for bankruptcy, filed separate bankruptcy cases.
                                         A
      The story begins before the OnSite parties filed for bankruptcy. Tech
Pharm holds a patent on a system, software, and related methods of remote
pharmaceutical dispensing. 2 In 2010, it sued multiple defendants in the
Eastern District of Texas—including several OnSite parties—for infringing
this patent by using their own remote pharmaceutical dispensing machines. 3
The OnSite parties counterclaimed challenging Tech Pharm’s patent. The
parties agreed to settle the litigation, entering into a “Compromise,
Settlement, Release, and License Agreement” (the “License Agreement”),
granting a “non-exclusive perpetual license” to all but one of the OnSite parties
for “so long as the Patent or Patents are valid and enforceable.” The OnSite
parties agreed to pay a one-time licensing fee of $4,000 for each OnSite
machine placed into operation after the execution of the agreement, and to
provide quarterly reports reflecting all new machines placed in service. All
parties also agreed to release any and all claims they “may have or claim to
have . . . which relate to or could have been claimed in the Litigation, or that


      1  See CERx Pharm. Partners, LP v. RPD Holdings, LLC, No. 13-30678-BJH, 2014 WL
4162870, at *3 (Bankr. N.D. Tex. Aug. 20, 2014).
       2 U.S. Patent No. 7,698,019 (filed Sept. 20, 2004).
       3 Tech Pharm included other, non-OnSite defendants in the same suit, but their

involvement is not relevant to this case.
                                         2
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                                       No. 17-11113
relate to the [Patents] or any alleged infringement [or invalidity] of same,
except for the obligations specifically called for under this Agreement.”
Following the settlement agreement, the district judge in the Eastern District
of Texas dismissed all claims with prejudice.
                                              B
      Beginning in 2012 and continuing into 2013, the six OnSite parties
relevant to this appeal filed separate Chapter 11 bankruptcy cases in the
Northern District of Texas. 4 Each case was later converted to Chapter 7. Five
of the six OnSite debtors were also parties to the Tech Pharm License
Agreement. Despite the bankruptcy requirement that they schedule all assets
and creditors, however, none of the debtors listed the License Agreement or
Tech Pharm on their schedules.
      RPD had a security interest in the OnSite debtors’ collateral. It agreed
to purchase its collateral from three of the bankruptcy estates—ProvideRx of
Grapevine, LLC (“Grapevine”), ProvideRx of Waco, LLC (“Waco”), and W. Pa.
OnSiteRx, LLC (“Western Pennsylvania”)—instead of litigating its liens. RPD
and each estate laid out the terms of each sale in a separate asset purchase
agreement, the APA, and each sale was approved by the bankruptcy court in a
separate sale order. No APA explicitly referenced the License; instead, each
APA covered certain categories of subject property. In turn, the sale orders
approved the sale of the subject property in each APA—providing that to the
extent that any of the subject property was an executory contract, it was
“hereby ASSUMED by the Estate and immediately ASSIGNED to RPD under
the applicable provisions of section 365 of the Bankruptcy Code.” The parties
have stipulated that RPD was not aware of the License until after all three
sale motions and APAs were filed with the bankruptcy court, but that it


      4   There were ten related OnSite debtors in total.
                                              3
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                                 No. 17-11113
became aware of the License before the bankruptcy court entered the last of
the sale orders, the Waco sale order.
      Shortly after the bankruptcy court approved the last of these sales, the
trustees from the other estates—Provider Meds, LP (“Provider Meds”),
OnSiteRx, Inc. (“OnSite”), and ProvideRx of San Antonio, LLC (“San
Antonio”)—entered into a settlement agreement, the “global agreement,” with
RPD and CERx, a competing secured party. The global agreement provided for
RPD and CERx to severally own the OnSite source code, and divided other
assets between them. RPD avers that because it was aware of the License at
this point, it believed that it had purchased the License under the terms of the
Grapevine, Western Pennsylvania, and Waco APAs and sale orders. As a
result, the global agreement provided that the Provider Meds and San Antonio
trustees would transfer their Tech Pharm licenses to CERx, but that “RPD is
entitled to all remaining available Tech Pharm licenses (such as those
otherwise acquired from ProvideRx of Grapevine, LLC; W Pa OnsiteRx, LLC;
and ProvideRx of Waco, LLC).”
                                        C
      Almost a year after the bankruptcy court approved the global agreement,
Tech Pharm filed a petition in Texas state court against several defendants,
including the Waco and San Antonio debtors, alleging that the defendants had
failed to comply with their obligations under the License Agreement to provide
quarterly reports and pay licensing fees for new machines. RPD intervened
and removed the proceeding to the bankruptcy court, arguing that one or more
of the debtor estates had assigned or otherwise transferred the License to RPD.
      The bankruptcy court held that RPD did not have rights under the
License Agreement for either of two reasons: RPD had not purchased the
License under any of the OnSite sales and, regardless of the terms of the sales,
the License Agreement was an executory contract that was rejected by
                                        4
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                                     No. 17-11113
operation of law prior to any alleged transfer. 5 It also determined that RPD
had not gained rights under the License Agreement by purchasing OnSite
machines from the debtors. 6 RPD appealed to the district court, which
concluded that the License was a rejected executory contract and affirmed. 7
       RPD now appeals the decision of the district court affirming the
bankruptcy court. It claims that its rights under the License Agreement were
established by final and non-appealed bankruptcy court orders, so any
determination to the contrary would constitute an impermissible collateral
attack. It also argues that the bankruptcy and district courts erred on the
merits in determining RPD has no rights under the License Agreement.
                                            D
       In reviewing a decision of the district court affirming the bankruptcy
court, we apply “the same standard of review to the bankruptcy court that the
district court applied,” reviewing findings of law de novo and findings of fact
for clear error. 8 We conclude that the License Agreement was an executory
contract that was deemed rejected by operation of law prior to the bankruptcy
sales where RPD allegedly purchased the License. Because the License was
not part of the bankruptcy estates at the time of the relevant sales, the
bankruptcy court’s final orders did not effect a transfer of the License from the
OnSite debtors to RPD.
                                            II
      Section 365 of Title 11 of the United States Code addresses the ability of
bankruptcy trustees to assume or reject executory contracts and unexpired



      5 See Tech Pharm. Servs., Inc. v. RPD Holdings, LLC (In re Provider Meds, LLC), No.
13-30678, 2017 WL 213814, at *10–11, 12–18 (Bankr. N.D. Tex. Jan. 18, 2017).
      6 See id. at *11–12 ¶¶5–11.
      7 Tech Pharm. Servs., Inc. v. RPD Holdings, LLC (In re Provider Meds, LLC), No. 3:17-

CV-0441-D, 2017 WL 3764630 (N.D. Tex. Aug. 31, 2017).
      8 Galaz v. Katona (In re Galaz), 841 F.3d 316, 321 (5th Cir. 2016).

                                            5
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                                       No. 17-11113
leases. This provides a way for “a trustee to relieve the bankruptcy estate of
burdensome agreements which have not been completely performed.” 9 Once a
trustee assumes an executory contract, a trustee may generally also assign the
contract, even where legal or contractual provisions would otherwise prohibit
assignment. 10 An executory contract must be assumed or rejected in its
entirety, 11 and rejection may be treated as a breach of contract. 12
         Under most bankruptcy chapters, the trustee may assume or reject an
executory contract at any point before the plan is confirmed, 13 but the rule is
different for Chapter 7 cases. Section 365(d)(1) provides that in Chapter 7
cases,
              if the trustee does not assume or reject an executory
              contract or unexpired lease of residential real property
              or of personal property of the debtor within 60 days
              after the order for relief, or within such additional time
              as the court, for cause, within such 60-day period,
              fixes, then such contract or lease is deemed rejected. 14

         Here, if the License Agreement was an executory contract, the sixty-day
time period started when the cases were converted to Chapter 7 and would
have expired before the first of the bankruptcy sales. 15 The trustees did not
assume the License Agreement within the required period. RPD contends that
the bankruptcy and district courts erred in concluding that the License



         Phoenix Exploration, Inc. v. Yaquinto (In re Murexco Petroleum, Inc.), 15 F.3d 60, 62
         9

(5th Cir. 1994) (per curiam).
       10 See 11 U.S.C. § 365(f)(1).
       11 See Stewart Title Guar. Co. v. Old Republic Nat’l Title Ins. Co., 83 F.3d 735, 741

(5th Cir. 1996) (per curiam).
       12 11 U.S.C. § 365(g).
       13 See id. § 365(d)(2); Stumpf v. McGee (In re O’Connor), 258 F.3d 392, 400 (5th Cir.

2001).
       14 11 U.S.C. § 365(d)(1).
       15 As the bankruptcy court explained, the latest any of the trustees had to assume the

License Agreement was November 3, 2013, but the earliest sale motion was filed on
November 22, 2013. See In re Provider Meds, 2017 WL 213814, at *6 ¶ 49.
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                                        No. 17-11113
Agreement was an executory contract. It further argues that even if the
License Agreement is an executory contract, section 365(d)(1)’s time limit
should not apply where the debtors failed to schedule the License and the
trustees therefore were unaware of its existence. We disagree.
                                               A
       Our first inquiry is whether the License Agreement was an executory
contract. The Bankruptcy Code does not define the term “executory contract,” 16
but we have concluded that a contract is executory if “performance remains
due to some extent on both sides” and if “at the time of the bankruptcy filing,
the failure of either party to complete performance would constitute a material
breach of the contract, thereby excusing the performance of the other party.” 17
We must therefore determine whether both sides—Tech Pharm and each of the
OnSite parties—owed additional performance under the License Agreement,
and whether any party’s failure to perform would constitute a material breach
excusing the other side’s performance.
       The bankruptcy court held, and the district court affirmed, that Tech
Pharm had an ongoing obligation under the License Agreement to refrain from
suing its counterparties for patent infringement for machines placed into
service after execution of the Agreement. 18 It further concluded that the OnSite


       16  See In re Murexco Petroleum, 15 F.3d at 62.
       17  Id. at 62–63; accord Ocean Marine Servs. P’ship No. 1 v. Digicon, Inc. (In re Digicon,
Inc.), No. 03-20121, 2003 WL 21418127, at *5 (5th Cir. 2003) (per curiam) (approving of
district court language adopting this definition). This follows the “Countryman” definition of
an executory contract, which is widely—though not universally—adopted by our fellow
circuits.
        18 See In re Provider Meds, 2017 WL 3764630, at *2 (district court opinion); In re

Provider Meds, 2017 WL 213814, at *14–15 ¶¶ 22–26 (bankruptcy court opinion).
        As we discuss, Tech Pharm dismissed its claims against the OnSite debtors with
prejudice in the 2010 lawsuit, so it was already precluded from suing for patent infringement
concerning machines in existence at the time of that lawsuit. The License Agreement
separately provided that Tech Pharm would release the OnSite parties from claims “that
relate to the [Patents] or any alleged infringement of same, except for the obligations
specifically called for under this Agreement.” We agree with the bankruptcy and district
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                                       No. 17-11113
licensees had ongoing material obligations because they were required to
provide quarterly reports as to new machines, pay a one-time licensing fee of
$4,000 to Tech Pharm for each new machine, and refrain from making public
statements about the settled lawsuit. 19
                                              1
       RPD does not dispute that these reciprocal requirements would typically
be enough to render the License Agreement executory, but argues instead that
unique features of the License Agreement make it non-executory. RPD’s
principal contention is that because the License Agreement came hand in hand
with a settlement agreement to dismiss Tech Pharm’s patent infringement suit
against the OnSite debtors with prejudice, Tech Pharm’s sole executory
obligation under the License Agreement—to refrain from suing the OnSite
debtors for patent infringement involving future machines—was illusory.
       Claim preclusion “bars the litigation of claims that either have been
litigated or should have been raised in an earlier suit.” 20 Our analysis is most
closely governed by principles of claim preclusion as they apply to patent
infringement suits. 21 The Federal Circuit has held that claim preclusion does



courts that this contemplated an ongoing obligation not to sue the OnSite debtors for future
patent infringement, even when such claims could not have been brought in the initial
litigation. In other words, if Tech Pharm sued the OnSite parties for patent infringement
even though they complied with the terms of the License Agreement, it would breach the
contract.
        19 In re Provider Meds, 2017 WL 213814, at *16 ¶ 27.
        20 Duffie v. United States, 600 F.3d 362, 372 (5th Cir. 2010). “The test for claim

preclusion has four elements: (1) the parties in the subsequent action are identical to, or in
privity with, the parties in the prior action; (2) the judgment in the prior case was rendered
by a court of competent jurisdiction; (3) there has been a final judgment on the merits; and
(4) the same claim or cause of action is involved in both suits.” Id.
        21 Because Federal Circuit law would govern any potential future patent infringement

suit Tech Pharm could bring against the OnSite parties, we look to the Federal Circuit to see
if principles of claim preclusion would bar a particular cause of action in a patent case. The
Federal Circuit applies its own law on issues of claim preclusion specific to patent law. See
Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1298 (Fed. Cir. 2017); see also
SimpleAir, Inc. v. Google LLC, 884 F.3d 1160, 1165–66 (Fed. Cir. 2018) (applying general
                                              8
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                                       No. 17-11113
not bar patent infringement allegations “with respect to accused products that
were not in existence at the time of the [previous actions,] for the simple reason
that [claim preclusion] requires that in order for a particular claim to be
barred, it is necessary that the claim either was asserted, or could have been
asserted, in the prior action.” 22 As a result, claim preclusion solely
encompasses “the particular infringing acts or products that are accused in the
first action or could have been made subject to that action.” 23 This is consistent
with the Supreme Court’s decision in Lawlor v. National Screen Service Corp.,
an antitrust case holding that even where two suits involved “essentially the
same course of wrongful conduct,” the later suit was not barred by claim
preclusion because the prior judgment “[could] not be given the effect of
extinguishing claims which did not even then exist and which could not
possibly have been sued upon in the previous case.” 24
       RPD argues that these general principles apply differently to method
patent claims than to other claims for patent infringement. It contends that
under a method patent, the determinative question is whether a particular
process infringed on the method 25—so once a claim for method patent
infringement is dismissed with prejudice, any future challenge to the use of the
same process is barred by claim preclusion. Under RPD’s view, once Tech
Pharm dismissed with prejudice its claim that the OnSite parties’ process
infringed its method patent, it could never again sue the OnSite parties for




Fifth Circuit principles of claim preclusion, but Federal Circuit law on whether “a particular
cause of action in a patent case is the same as or different from another cause of action”).
       22 Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1342 (Fed. Cir. 2012).
       23 Id. at 1343.
       24 349 U.S. 322, 327–28 (1955); see also Aspex Eyewear, 672 F.3d at 1342–43 (citing

Lawlor).
       25 See Joy Techs., Inc. v. Flakt Inc., 6 F.3d 770, 773 (Fed. Cir. 1993).

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using that same process, even if the OnSite parties used the process after the
termination of the lawsuit to place new machines into operation.
       We disagree, finding recent Federal Circuit case law conclusive on this
point. Mentor Graphics Corp. v. EVE-USA, Inc. is particularly instructive. 26
There, the relevant parties had previously litigated two method and logic
system patents, 27 but—as in this case—the patentholder dismissed its
infringement claims with prejudice and granted a license to the asserted
patents. 28 When another company acquired the licensee, the license
automatically      terminated. 29     The    acquiring     company       then    sued     the
patentholder for a declaratory judgment of non-infringement, and the
patentholder counterclaimed for infringement. 30 The Federal Circuit flatly
held that because the infringement claims were based on acts that occurred
after the initial lawsuit, they were not precluded by the initial suit’s dismissal
with prejudice. 31 Following Lawlor, it emphasized that where infringement
allegations could not have previously been brought in an initial suit because
the alleged infringing act had not yet occurred, claim preclusion would not
apply even where the alleged infringement was “essentially the same” as that
litigated in the prior action. 32 Especially relevant here, the court observed that



       26 Mentor Graphics, 851 F.3d 1275.
       27 See U.S. Patent No. 6,009,531 (filed May 27, 1997); U.S. Patent No. 5,649,176 (filed
Aug. 10, 1995).
       28 Mentor Graphics, 851 F.3d at 1297–98.
       29 Id. at 1298.
       30 Id.
       31 Id. at 1299.
       32 Id. at 1299–1301 (“The present lawsuit is based on post-license conduct, so the

alleged infringement did not exist during the previous action . . . Because the allegations
could not have been brought in the first action, we need not determine whether the newly
accused products are ‘essentially the same’ as the products litigated in the first action.”)
(discussing Lawlor v. Nat’l Screen Serv. Corp., 349 U.S. 322, 328 (1955); Aspex Eyewear, 672
F.3d at 1342; and Brain Life, LLC v. Elekta Inc., 746 F.3d 1045, 1052 (Fed. Cir. 2014)).
       In Mentor Graphics, the Federal Circuit also observed that under the Supreme Court’s
decision in Kessler v. Eldred, 206 U.S. 285 (1907), an adjudicated non-infringer may be
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if such claims were instead barred by claim preclusion, “any licensee holding a
license obtained through litigation could breach that license, yet prevent the
patentee from asserting infringement against new products not covered by the
license.” 33 By holding that future infringement claims were not barred by claim
preclusion, the Mentor Graphics decision avoided that counterintuitive result.
       The Federal Circuit has reached similar results concerning other method
patent claims. Mentor Graphics relied in part on the court’s previous decision
in Brain Life, LLC v. Elekta Inc., which straightforwardly held that claim
preclusion would not bar claims for method patent infringement “relating to
acts of infringement that postdate [the prior] judgment” because the patentee
could not have asserted claims in the first lawsuit for acts of infringement that
occurred after the judgment in that suit. 34 Similarly, in Asetek Danmark A/S
v. CMI USA Inc., the Federal Circuit addressed an injunction predicated on a
jury finding of liability for infringement of two system and method patents. 35
The patentholder dismissed with prejudice its claims against one of the
defendants prior to trial, 36 but after the jury found liability, the district court
enjoined both original defendants—including the dismissed party. 37 The court




shielded from future lawsuits involving the same allegedly infringing activity, even where
such lawsuits would not be barred by claim or issue preclusion. See Mentor Graphics, 851
F.3d at 1301. While the Kessler doctrine may cushion the effect of these claim preclusion
principles where a court conclusively establishes non-infringement, the Mentor Graphics
panel explained that it does not apply where a party received a license to the patent and the
patentholder dismissed its claims with prejudice, as is the case here. See id. at 1297–98, 1301.
       33 Id. at 1300.
       34 Brain Life, 746 F.3d at 1053–54.
       35 852 F.3d 1352, 1355 (Fed. Cir. 2017). Asetek Danmark was initially decided prior to

Mentor Graphics, and Mentor Graphics cited the initial opinion as one of several cases
supporting its conclusion. See Mentor Graphics, 851 F.3d at 1299. The Federal Circuit
subsequently vacated its original Asetek Danmark opinion and issued a new opinion, but its
discussion of claim preclusion remained unchanged. Compare Asetek Danmark A/S v. CMI
USA Inc., 842 F.3d 1350, 1362–63 (Fed. Cir. 2016), with Asetek Danmark, 852 F.3d at 1365.
       36 Asetek Danmark, 852 F.3d at 1355.
       37 Id. at 1358.

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concluded that the injunction against the dismissed party addressing its future
conduct was not barred by claim preclusion, because “[i]t is well established
. . . that the difference in timing means that the two situations do not involve
the same ‘claim’ for claim-preclusion purposes, even if all the conduct is alleged
to be unlawful for the same reason.” 38 Although the court ultimately remanded
for a more thorough determination of whether the injunction was permissible
against the dismissed party, 39 it made clear that principles of claim preclusion
standing alone would not have barred the injunction—even though the system
and method infringement claims had previously been dismissed with
prejudice. 40
       RPD’s reliance on the Federal Circuit’s earlier decision in Hallco
Manufacturing Co. v. Foster is unpersuasive. 41 Hallco held that because a
party had dismissed its patent invalidation claim with prejudice in earlier
litigation, it was potentially barred from suing the patentholder to invalidate
the same patent or from seeking a declaratory judgment that a redesigned
device did not infringe the patent. 42 While Hallco’s language may be read more
broadly, we take the Federal Circuit to have since clarified that the case does
not govern preclusion of infringement claims brought by the patentholder,
which were not at issue in Hallco. 43 The other cases we have discussed are
more representative of whether claim preclusion would prevent Tech Pharm


       38 Id at 1365 (citing, e.g., Aspex Eyewear, 672 F.3d at 1343).
       39 See id. at 1368–69.
       40 See id. at 1370.
       41 256 F.3d 1290 (Fed. Cir. 2001).
       42 Id. at 1293. The court remanded for a determination of whether the devices at issue

were sufficiently different that principles of claim preclusion would not apply. See id. at 1298.
       43 See Mentor Graphics, 851 F.3d at 1299–1300 (“Neither [of the Foster v. Hallco

Manufacturing] cases addressed whether a patentee could bring new infringement allegations
based on conduct occurring after a previous litigation ended. This is the precise issue
addressed in Aspex Eyewear and Brain Life and the precise issue now before us.”). While the
patentholder brought a counterclaim in the Hallco case, it was for breach of the settlement
agreement, not for infringement. See Hallco Mfg., 256 F.3d at 1293.
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                                      No. 17-11113
from suing the OnSite debtors over new machines—and they indicate that it
would not.
       In sum, but for the License Agreement, Tech Pharm would not be barred
from suing the OnSite debtors for patent infringement stemming from their
introduction of new OnSite machines—even if those machines used the same
process at issue in the settled 2010 litigation. Tech Pharm had an ongoing
material obligation under the License Agreement to refrain from suing the
debtors.
                                             2
       The OnSite debtors also had corresponding material obligations under
the License Agreement. The License Agreement straightforwardly obligated
the debtors to take certain ongoing actions, such as filing quarterly reports and
not discussing the settled lawsuit. 44 RPD claims, however, that because the
License Agreement granted a “perpetual” license for so long as the Tech Pharm
patent was valid and enforceable, Tech Pharm would be prohibited from suing
the debtors for patent infringement even if they breached their side of the
agreement—and so any debtor obligations would not be material, as required
by our definition of an executory contract. 45 It points to cases holding that
where a license is both “irrevocable” and “perpetual,” the licensor may not
revoke the license even when the licensee breaches. 46
       But the cases RPD cites do not stand for the proposition that a merely
“perpetual” license is itself irrevocable in the face of material breach. Rather,



       44  We have suggested in an unpublished opinion that “[a] contract is not executory if
the only performance required by one side is the payment of money.” In re Digicon, Inc., 2003
WL 21418127, at *5 (adopting language from district court opinion). Because the OnSite
debtors were required to undertake other performance under the License Agreement, we do
not need to resolve this issue here.
        45 See In re Murexco Peroleum, 15 F.3d at 62–63.
        46 See Nano-Proprietary, Inc. v. Canon, Inc., 537 F.3d 394 (5th Cir. 2008); Timeline,

Inc. v. Proclarity Corp., No. C05-1013-JLR, 2007 WL 1574069 (W.D. Wash. May 29, 2007).
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                                       No. 17-11113
they hold that when a license uses the terms “irrevocable” and “perpetual,”
“irrevocable” must mean something beyond “not revocable at will,” since
otherwise the use of both “irrevocable” and “perpetual” would be superfluous. 47
Both cases explain that the use of “perpetual” indicates that the license may
not be revoked at will; the use of “irrevocable” goes one step further and
indicates that the license may not be revoked for any reason, even a breach by
the other side.
       RPD is arguably correct that because the License granted under the
License Agreement was “perpetual,” under Texas law, it was therefore not
revocable at will. 48 This does not mean, though, that Tech Pharm would not be
excused from its obligations if the OnSite debtors were to materially breach
the License Agreement. RPD has offered no authority holding that a license
that is only “perpetual,” and not “perpetual and irrevocable,” is irrevocable in
the face of material breach—and, indeed, the cases it presents suggest the
opposite.




       47  See Nano-Proprietary, 537 F.3d at 400 (“Based upon the unambiguous meaning of
‘irrevocable,’ we find that the PLA could not be terminated, notwithstanding a material
breach of the agreement. Otherwise, the terms ‘irrevocable’ and ‘perpetual’ would be rendered
superfluous, in contravention of established rules of contract interpretation.”); Timeline, 2007
WL 1574069, at *4 (“Despite the ordinary meaning of the term, Timeline suggests that
‘irrevocable’ is used in the contract to convey that the licenses are not terminable at will and
should not be interpreted to restrict Timeline’s ability to terminate the licenses due to a
material breach. As Microsoft notes, however, the licenses would not have been terminable
at will even if the agreement had excluded the term ‘irrevocable.’ . . . As Microsoft suggests,
the use of the word ‘perpetual’ would also be sufficient to express an intent that the licenses
were not terminable at will.”).
        48 Texas law “disfavors” perpetual contracts, but will typically treat a contract as

perpetual—and therefore not revocable at will—if it offers a definite endpoint for the party’s
obligation. See, e.g., Kirby Lake Dev., Ltd. v. Clear Lake City Water Auth., 320 S.W.3d 829,
842 (Tex. 2010). Here, indexing the License Agreement to the duration of the patent
generated a definite endpoint. As we explain, however, we do not need to determine whether
the License Agreement was in fact perpetual—even if it was perpetual, that still does not
mean that it was irrevocable in the face of a material breach.
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                                        No. 17-11113
       We therefore conclude that both sides had ongoing material obligations
under the terms of the License Agreement, making it an executory contract.
Having established that the License Agreement was executory, we must
address whether it was rejected by operation of law.
                                               B
       As we have explained, 11 U.S.C. section 365(d)(1) imposes a sixty-day
deadline for a bankruptcy trustee to assume an executory contract, starting
here with the cases’ conversion from Chapter 11 to Chapter 7. After that
deadline passes, the contract will be deemed rejected by operation of law.
Because we have concluded that the License Agreement was executory, it
appears that it was deemed rejected when each of the bankruptcy estates failed
to assume it prior to the expiration of the sixty-day period. But RPD urges us
to read an implicit exception into section 365(d)(1) for when a bankruptcy
debtor fails to schedule the executory contract and the trustee was unaware of
the contract within the sixty-day period.
       Like most circuits, we have not spoken directly to this issue. Both parties
point to the sparse array of applicable case law from other courts, though there
appears to be no clear consensus. Some courts have held that a contract will
not be deemed rejected by operation of law where a debtor intentionally
conceals the existence of the contract from a trustee. 49 That is not at issue here,
where the License Agreement was a matter of public record, listed on the
docket of the 2010 patent litigation between Tech Pharm and the OnSite



       49 See Strohbeck v. Zuniga (In re Zuniga), 287 B.R. 201, 206 (Bankr. E.D. Mo. 2001)
(finding an executory contract was not deemed rejected under § 365(d)(1) where the debtor
had engaged in an overt pattern of misrepresentation about her bankruptcy in order to obtain
a loan, and failed to disclose the loan contract to the trustee); see also Texas W. Fin. Corp. v.
McCraw Candies, Inc., 347 F. Supp. 445, 449 (N.D. Tex. 1972) (finding no rejection under an
applicable provision of the Bankruptcy Act where “the transaction had been deleted from [the
debtor’s] business records and was not listed as an asset on the schedule . . . . [so there was
no evidence] that the trustee had knowledge of the claim or could have obtained it”).
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                                       No. 17-11113
debtors. When there is no intentional concealment, several courts have held
that failure to schedule an executory contract will not prevent it from being
deemed rejected, 50 though at least one court appears to have broadly concluded
that failure to schedule the contract should always toll the deadline. 51
       While most of these decisions do not extensively discuss the issue, we
find persuasive analysis in a Ninth Circuit decision addressing a similar
provision under the earlier Bankruptcy Act. 52 That court held that under the
Bankruptcy Act, “a trustee has an affirmative duty to investigate for
unscheduled executory contracts or unexpired leases,” and that “[t]he statutory
presumption of rejection by the trustee’s nonaction within the sixty day period
following his qualification is a conclusive presumption.” 53 The Ninth Circuit’s
decision took place in a different statutory landscape, but its reasoning still
applies. 54 The Bankruptcy Code places an affirmative duty on the trustee to
“investigate the financial affairs of the debtor.” 55 And, more to the point,
section 365(d)(1) does not impose an actual or constructive notice requirement




       50 See Permacel Kansas City, Inc. v. Kohler Co., No. 08-00804-CV-W-FJG, 2010 WL
2516924, at *3-4 (W.D. Mo. June 14, 2010); Carrico v. Tompkins (In re Tompkins), 95 B.R.
722, 724 (B.A.P. 9th Cir. 1989); Hoffman v. Vecchitto (In re Vecchitto), 235 B.R. 231, 236
(Bankr. D. Conn. 1999), aff’d, No. 00-5010, 2000 WL 1508872 (2d Cir. Oct. 11, 2000).
       51 See Medley v. Dish Network, LLC, No. 8:16-CV-2534-T-36TBM, 2018 WL 4092120,

at *5 (M.D. Fla. Aug. 27, 2018).
       52 See Cheadle v. Appleatchee Riders Ass’n (In re Lovitt), 757 F.2d 1035 (9th Cir. 1985)

(discussing 11 U.S.C. § 110(b) (1970)).
       53 Id. at 1040–42.
       54 Cases decided under the modern Bankruptcy Code have looked to In re Lovitt

approvingly. See In re Tompkins, 95 B.R. at 724; Corp. Prop. Investors v. Chandel Enters. (In
re Chandel Enters.), 64 B.R. 607, 610 (Bankr. C.D. Cal. 1986). RPD argues that it is no longer
applicable because it was decided under the Bankruptcy Act’s rule that “executory contracts
and leases—unlike all other assets—do not vest in the trustee as of the date of the filing of
the bankruptcy petition . . . . [, but] only upon the trustee’s timely and affirmative act of
assumption.” In re Lovitt, 757 F.2d at 1041. But we agree with Tech Pharm that the Lovitt
conclusion regarding unscheduled contracts did not hinge on this presumption.
       55 11 U.S.C. § 704(a)(4); see also id. § 704(a)(1) (requiring the trustee to “collect and

reduce to money the property of the estate”).
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                                        No. 17-11113
for when the sixty-day deadline applies. We will not read such a requirement
into the statute when doing so is not supported by the statutory text.
       Nor do we agree with RPD’s other arguments for a narrower application
of section 365(d)(1)’s deadline. There is no conflict with 11 U.S.C. sections
554(c) and (d), which provide that scheduled but non-administered property is
abandoned to the debtor but property of the estate that is neither abandoned
nor administered remains within the estate. The rejection of an executory
contract places that contract outside of the bankruptcy estate 56—so section 554
does not apply. Similarly, we disagree with RPD’s suggestion that even where
a contract has been rejected under section 365, a trustee can sell the contract
pursuant to section 363. Because a rejected contract ceases to be property of
the bankruptcy estate, it cannot be sold under a provision that authorizes a
trustee to sell “property of the estate.” 57 In any event, we cannot approve of the
use of a “sale” under section 363 to avoid the requirement that an executory
contract be assumed and assigned under section 365. 58




       56  See, e.g., Eastover Bank for Savings v. Sowashee Venture (In re Austin Dev. Co.), 19
F.3d 1077, 1081 (5th Cir. 1994) (observing that deemed rejection of a lease under § 365(d)(4)
“did not terminate the lease but merely placed the trustee’s obligation to perform under the
leasehold outside of the bankruptcy administration without destroying the leasehold estate”
(citing Comm. Trading Co. v. Lansburgh (In re Garfinkle), 577 F.2d 901, 904 (5th Cir. 1978));
In re Scharp, 463 B.R. 123, 129 (Bankr. C.D. Ill. 2011) (“The primary effect of rejection is to
abandon the lease from the estate so that it reverts back to the debtor’s control outside of
bankruptcy. Assumption and rejection are bankruptcy concepts that determine whether the
estate will administer the lease; rejection merely removes it from the property of the estate.”
(citations omitted)); cf. Kane v. Nat’l Union Fire Ins. Co., 535 F.3d 380, 384–86 (5th Cir. 2008)
(explaining that a trustee may abandon property of the estate, but may not administer
property that was abandoned to the debtor pursuant to a different provision).
        57 See 11 U.S.C. § 363(b)–(c).
        58 See Cinicola v. Scharffenberger, 248 F.3d 110, 124 (3d Cir. 2001) (“[T]he sale of an

executory contract triggers the protections afforded sales of bankruptcy estate property but
also requires satisfaction of the requirements for assuming and/or assigning the same
executory contract.”); In re Access Beyond Techs., Inc., 237 B.R. 32, 47 (D. Del. Bankr. 1999)
(“A debtor cannot avoid the requirements of section 365 by saying it is ‘selling’ a lease or
executory contract, rather than assuming and assigning it.”).
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                                    No. 17-11113
      We therefore hold that the License Agreement was deemed rejected by
operation of law when each trustee failed to assume it within the sixty-day
period. At a minimum, the statutory presumption of rejection after sixty days
is conclusive where there is no suggestion that the debtor intentionally
concealed a contract from the estate’s trustee. 59
                                          III
      With this groundwork laid, that the bankruptcy court did not engage in
an impermissible collateral attack on its previous orders becomes clear. RPD
argues that two sets of final bankruptcy court orders established that it
purchased the License Agreement from the Grapevine, Waco, and Western
Pennsylvania estates.
      The first were the sale orders from the Grapevine, Waco, and Western
Pennsylvania estates. As we have explained, each of those sale orders ordered
the transfer of the subject property defined in the relevant asset purchase
agreement, and included a provision stating that to the extent that any of the
transferred subject property was an executory contract, “the same [was] hereby
ASSUMED by the Estate and immediately ASSIGNED to RPD under the
applicable provisions of section 365 of the Bankruptcy Code.” RPD argues that
even if these provisions providing for assumption and assignment were
erroneous, they are nonetheless entitled to protection against collateral attack.
      But by the time each of these sale orders was finalized, the sixty-day
deadline had passed for each estate, and the License Agreement had already
been deemed rejected. As we have explained, when an executory contract is
rejected, it exits the bankruptcy estate. It was therefore outside the power of
the bankruptcy trustees to include the License Agreement within the subject



      59 We do not decide here whether this rule might shift if a debtor is shown to have
hidden assets from a trustee.
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                                       No. 17-11113
property, or to attempt to assume and assign it to RPD. We do not read any of
the bankruptcy court’s sale orders as providing for the estates to assume and
assign contracts that were outside the relevant estate at the time of sale. 60 This
is not a matter of collateral attack, but merely an interpretation of the
bankruptcy court’s orders. 61
       RPD also points to the bankruptcy court’s order effectuating the global
agreement. It argues that the sale order explicitly incorporated all terms of the
global agreement, including the portion of that agreement providing that “RPD
is entitled to all remaining available Tech Pharm licenses (such as those
otherwise acquired from ProvideRx of Grapevine, LLC; W Pa OnSiteRx, LLC;
and ProvideRx of Waco, LLC).” 62 Standing alone, however, this could not
conclusively establish that RPD had acquired the License through the
Grapevine, Western Pennsylvania, and Waco sales. RPD did not actually
purchase the License from any of those debtors—as an executory contract
deemed rejected, it had already passed out of their estates—and the
bankruptcy court’s attenuated incorporation of a statement to the contrary
does not establish otherwise. 63
       Ultimately, RPD’s collateral attack argument hinges on the assumption
that the License was still part of the bankruptcy estates at the time of each of



       60  Here, not only did the relevant sale orders not reference the License, but they also
ordered the transfer of the subject property only to the extent that the debtor and estate had
a right, title, or interest in the property. We cannot read the sale orders as ordering the
License assumed and assigned even though it had already passed out of the relevant
bankruptcy estates.
        61 See United States v. 115.27 Acres of Land, 471 F.2d 1287, 1290 (5th Cir. 1973).
        62 The bankruptcy court approved the global agreement in a sale order stating that

“ALL terms of the Agreement are incorporated herein by reference.”
        63 At a minimum, as Tech Pharm observes, only a Chapter 7 trustee may sell an

estate’s property, and so RPD and CERx could not by fiat establish that the Waco, Grapevine,
and Western Pennsylvania trustees had transferred the license to RPD when those trustees
were not parties to the global agreement. See In re Gonzales, No. 10-35766-SGJ-7, 2010 WL
4340936, at *2 (Bankr. N.D. Tex. Oct. 27, 2010).
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                                       No. 17-11113
the Grapevine, Western Pennsylvania, and Waco sales. It was not, and the
bankruptcy court’s sale orders did not hold differently. Our decision today
therefore does not affirm a collateral attack on those sale orders.
                                           * * *
       Because the License Agreement was an executory contract deemed
rejected by operation of law, RPD could not and did not acquire the License
from any of the Grapevine, Western Pennsylvania, and Waco estates—and no
bankruptcy court order held otherwise. This resolves the heart of the dispute,
so we do not need to resolve several other issues raised by the parties, such as
whether RPD actually purchased the License under the terms of the relevant
APAs and sale orders.
                                             IV
       We pause to briefly address a final issue. The parties stipulated before
the bankruptcy court that its scope of decision making would be limited to
“whether [RPD] validly acquired, by way of sale and assignment, all rights and
obligations under [the License Agreement].” At trial, RPD’s counsel argued
that even if RPD had not purchased or been assigned the License, it had a right
to use the OnSite machines it had purchased from two of the debtor estates,
under a provision of the License Agreement granting limited rights to third
parties to operate OnSite machines. 64 When the bankruptcy judge observed
that the issue had not been briefed and was not necessarily encompassed by
the stipulated issues, RPD’s counsel argued that the question was necessarily
connected to whether RPD had acquired rights under the License Agreement.



       64 The relevant portion of the License Agreement provided that “If an Onsite Machine
is used in a long-term care facility (‘LTCF’) as permitted by an Onsite party pursuant to this
License, the Onsite party may sell the Onsite Machine to that LTCF or to a third party
purchaser of the Onsite Machine who is not the LTCF. The LTCF (or a third party purchaser
of the Onsite Machine who is not the LTCF) can continue to operate that Onsite Machine
currently in place at the time of purchase of said Onsite Machine . . . .”
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                                      No. 17-11113
       The bankruptcy court therefore assessed whether RPD had acquired
limited rights under this provision, and concluded that it had not because it
failed to prove that it had purchased specific machines encompassed by the
License Agreement. 65 The court additionally concluded that under the terms
of the License Agreement, RPD could only use any machines covered by the
Agreement in the same long term care facility in which they were used at the
time the Agreement was finalized, and that RPD had not shown that it had
done so. 66 RPD now contends that this issue was not within the scope of the
parties’ stipulation or briefing, and that the bankruptcy court lacked
jurisdiction to address it regardless; Tech Pharm responds that RPD raised the
issue of its own volition, and should suffer the consequences.
       Based on the facts presented to us, we conclude that the bankruptcy
court did not exceed its authority in addressing RPD’s rights through purchase
of the OnSite machines. Nor do we find that the bankruptcy court erred in
reading the License Agreement to require that third parties operate OnSite
machines in the same locations where they were placed at the time of sale.
                                             V
       We affirm the district court’s judgment.




       65In re Provider Meds, 2017 WL 213814, at *11 ¶ 9. Specifically, the court noted that
RPD had “failed to introduce evidence of the serial numbers of the 15 ADS Machines it
purchased under the Grapevine APA and the Grapevine Sale Order,” id., and concluded the
same regarding a machine purchased from the W. Pa. estate, id. at *12 ¶ 10.
      66 Id. at *11 ¶¶ 8–9.

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