Securus Technologies Inc v. Global Tellink Corporation

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SECURUS TECHNOLOGIES INC.,
Plaintiff-Cross-Appellant
v.
GLOBAL TEL*LINK CORPORATION,
Defendant-Appellant
______________________
2016-1470, 2016-1506
______________________
Appeals from the United States District Court for the
Northern District of Texas in No. 3:13-cv-03009-K, Judge
Ed Kinkeade.
______________________
Decided: January 26, 2017
______________________
MARK STRACHAN, Sayles Werbner, P.C., Dallas, TX,
argued for plaintiff-cross-appellant. Also represented by
E. SAWYER NEELY, DARREN PATRICK NICHOLSON, RICHARD
ALAN SAYLES; GRADY MICHAEL GRUBER, ANTHONY MAGEE,
Gruber Hurst Elrod Johansen Hail Shank LLP, Dallas,
TX; BRUCE SOSTEK, RICHARD L. WYNNE, JR., Thompson &
Knight LLP, Dallas, TX.
JOHN CHRISTOPHER ROZENDAAL, Sterne Kessler Gold-
stein & Fox, PLLC, Washington, DC, argued for defend-
1
2 SECURUS TECHNOLOGIES INC v. GLOBAL TEL*LINK CORP.
ant-appellant. Also represented by WILLIAM H. MILLIKEN,
Kellogg, Huber, Hansen, Todd, Evans & Figel, PLLC,
Washington, DC.
______________________
Before DYK, BRYSON, and REYNA, Circuit Judges.
BRYSON, Circuit Judge.
I
Securus Technologies, Inc., owns patents relating to
the delivery of communications services to correctional
facilities. It has sued various entities for infringement of
those patents. One of the entities Securus sued was
Public Communications Services, Inc. (“PCS”). That suit
ended in 2009 with a settlement that included Securus’s
agreement not to sue “PCS or its affiliates” for “infringe-
ment of any Securus Patent” until September 18, 2014.
In 2010, Global Tel*Link Corporation (“GTL”) ac-
quired PCS through a stock purchase, and PCS became a
wholly owned subsidiary of GTL. Three years later,
Securus brought an infringement action against GTL.
GTL invoked Securus’s covenant not to sue PCS or its
affiliates as an affirmative defense, asserting that it was
an “affiliate” of PCS. GTL also filed a counterclaim
charging Securus with breach of contract, alleging that
Securus had violated the covenant by suing GTL for
patent infringement. For relief on the counterclaim, GTL
sought damages in the amount of the attorney fees it
incurred in defending against the infringement claim. 1
1 GTL also sought a fee award for the attorney fees
it incurred in prosecuting its breach of contract counter-
claim. GTL sought those fees under chapter 38 of the
Texas Civil Practice and Remedies Code. That fee request
is not yet ripe for decision and is not part of this appeal.
SECURUS TECHNOLOGIES INC v. GLOBAL TEL*LINK CORP. 3
Based on the covenant not to sue, GTL moved for
summary judgment on Securus’s infringement claim. The
district court granted GTL’s motion. The court agreed
that GTL qualified as an affiliate of PCS and that the
covenant therefore protected GTL from Securus’s suit.
Under Texas law, the court explained, “entities who are a
subsidiary, parent, or sibling corporation . . . are all
encompassed within the plain, ordinary, and generally
accepted meaning of ‘affiliate.’” Because GTL satisfied
that definition, the court held that the covenant not to sue
barred the infringement action against GTL.
For its part, Securus moved for summary judgment on
GTL’s counterclaim for breach of the covenant not to sue.
Securus argued that it was entitled to summary judgment
on GTL’s breach of contract claim because GTL had not
offered competent evidence of damages. In particular,
Securus argued that GTL had not introduced any evi-
dence that the attorney fees GTL incurred in the in-
fringement action were reasonable and necessary.
Securus also argued that under Texas law GTL was
required to present expert testimony in support of its
claim for attorney fees as damages for the breach of the
covenant not to sue. Because GTL had not designated an
expert to testify on the reasonableness and necessity of its
fees, Securus argued that it was entitled to summary
judgment on GTL’s request for attorney fees as damages
on its counterclaim.
The district court granted Securus’s motion for sum-
mary judgment, holding that under Texas law GTL’s
claim for attorney fees as damages required expert testi-
mony, or at least an attorney for GTL testifying as an
expert. Because GTL had not timely designated an
expert, the court held that GTL would not be able to
satisfy that requirement and thus would not be able to
prove attorney fee damages for breach of the covenant not
to sue.
4 SECURUS TECHNOLOGIES INC v. GLOBAL TEL*LINK CORP.
Securus has appealed from the district court’s order
holding that the covenant not to sue barred Securus from
suing GTL for patent infringement. GTL has appealed
from the district court’s order holding that GTL did not
properly support its claim for damages. We affirm both
orders.
II
On Securus’s appeal, we agree with the district court
that the covenant not to sue that Securus entered into as
part of the 2009 settlement agreement was applicable to
GTL and that the covenant barred Securus from bringing
a patent infringement action against GTL before 2014.
Securus acknowledges that GTL can claim the benefit
of the 2009 covenant not to sue if GTL qualifies as an
“affiliate” of PCS. Securus argues, however, that the
district court erred in holding that GTL is an “affiliate” of
PCS within the meaning of the covenant not to sue.
In the covenant, Securus agreed not to sue “on behalf
of itself and its former and present affiliates, subsidiaries
and parent corporations, successors and assigns.” Se-
curus points out that, by contrast with that sweeping
language referring to the parties who were barred from
bringing suit, the portion of the 2009 covenant referring
to the parties that Securus agreed not to sue names only
“PCS or its affiliates.” Because the agreement refers to
Securus’s “affiliates, subsidiaries and parent corpora-
tions” as separate entities, Securus argues that the
agreement’s reference only to PCS’s “affiliates” is a clear
indication that the term “affiliate,” as used in the cove-
nant, does not include a parent corporation of PCS, such
as GTL.
That textual argument is unpersuasive. It is not unu-
sual for legal documents to use overlapping language in
order to ensure against gaps in intended coverage. Over-
lapping terms are frequently found in documents such as
SECURUS TECHNOLOGIES INC v. GLOBAL TEL*LINK CORP. 5
wills (“give, bequeath, and devise”), contracts of sale
(“grant, bargain, sell, and convey”), and releases (“remise,
release, and forever discharge”). That appears to be the
role of the reference in the 2009 contract to Securus’s
covenant not to sue “on behalf of itself and its former and
present affiliates, subsidiaries and parent corporations,
successors and assigns.”
The problem with Securus’s argument is that if those
terms were given non-overlapping meanings, the term
“affiliate” would not include subsidiaries, since the term
“subsidiaries” is separately set forth in the clause on
which Securus relies. Yet Securus acknowledges that a
“subsidiary” is a paradigmatic example of an “affiliate”
under its narrow interpretation of that term. It is clear,
therefore, that even under Securus’s view of the meaning
of “affiliate,” the terms in the clause on which Securus
relies must be regarded as overlapping.
Securus further contends that the plain, ordinary, and
generally accepted meaning of “affiliate” does not include
a corporate parent. According to Securus, the plain
meaning of the term “affiliate,” both in general and under
Texas law, refers to a company “that is either subordinate
to another or dependent on another through ownership or
control,” and that it does not include a parent corporation.
That argument does not stand up against a review of
the authorities pertinent to the 2009 covenant. First, the
term “affiliate” was defined in the contemporaneous
edition of Black’s Law Dictionary to mean “a subsidiary,
parent or sibling corporation,” or a corporation “related to
another corporation by shareholdings or other means of
control,” a definition that clearly includes parent corpora-
tions. Black’s Law Dictionary 67 (9th ed. 2009). When
applying Texas law to interpret a contract, courts have
looked to the definition in Black’s Law Dictionary as
setting forth the ordinary meaning of the term “affiliate.”
Thus, the court in McLane Foodservice, Inc. v. Table Rock
6 SECURUS TECHNOLOGIES INC v. GLOBAL TEL*LINK CORP.
Rests., L.L.C., 736 F.3d 375, 378 (5th Cir. 2013), held that
the ordinary definition of “affiliate” under Texas law
includes a parent corporation; see also id. at 378 n.3
(“Texas courts have cited Black’s Law Dictionary when
interpreting undefined terms in a contract.”).
Texas authorities confirm that Texas law embraces
that broad definition of “affiliate.” The Texas Business
Organizations Code, which GTL accurately describes as
“the state’s central repository of corporate law,” defines
“affiliate” as “a person who controls, is controlled by, or is
under common control with another person.” See Funder-
burk Enters., LLC v. Cavern Disposal, Inc., No. A-09-CA-
327, 2009 WL 3101064, at *5 (W.D. Tex. Sept. 22, 2009)
(citing the Texas Business Organizations Code and
Black’s Law Dictionary as providing the ordinary mean-
ing of “affiliate”). That definition clearly includes parent
corporations such as GTL, which is under common control
with its wholly owned subsidiary, PCS.
Texas state judges have applied that definition as
well. See Eckland Consultants, Inc. v. Ryder, Stilwell
Inc., 176 S.W.3d 80, 88 (Tex. App. 2004) (citing Webster’s
Third New International Dictionary 35 (1971) and defin-
ing “affiliate” to mean “a corporation that is related to
another corporation by shareholdings or other means of
control,” and “a company effectively controlled by another
or associated with others under common ownership or
control”); see also Texas Rice Land Partners, Ltd. v. Den-
bury Green Pipeline-Texas, LLC, 381 S.W.3d 465, 467
(Tex. 2012) (Wainwright, J., concurring) (stating that an
affiliate is “commonly understood” to include a parent
corporation).
Federal courts interpreting Texas law have consist-
ently reached the same conclusion: that under the general
definition of “affiliate” in Texas law, parent corporations
are “affiliates” of their subsidiaries. See McLane Foodser-
vice, 736 F.3d at 378; Texas Molecular Ltd. P’ship v. Am.
SECURUS TECHNOLOGIES INC v. GLOBAL TEL*LINK CORP. 7
Int’l Specialty Lines Ins. Co., 424 F. App’x 354, 357 (5th
Cir. 2011) (holding that all of the entities in question were
affiliates under the applicable common-ownership defini-
tion, including corporate entities that “owned shares of
and controlled the other entities”); In re Heartland Pay-
ment Sys., Inc. v. Customer Data Sec. Breach Litig., C.A.
No. H-10-271, 2011 WL 1232352, at *19 (S.D. Tex. Mar.
31, 2011) (“The ordinary meaning of the term ‘affiliate’ in
this context is ‘a corporation that is related to another
corporation by shareholdings or other means of control’ or
‘a subsidiary, parent or sibling corporation.’”); Funderburk
Enters., 2009 WL 3101064, at *5 (the “important factor”
in determining if entities are affiliates “seems to be the
existence of common ownership or control of the two
entities”); Magicon v. Weatherford Int’l, Inc., C.A. Nos.
4:08-cv-3639, 2009 WL 7868862, at *14 (S.D. Tex. Aug.
14, 2009) (“the ordinary meaning of ‘affiliate’ encompasses
both an understanding of an affiliate as a subsidiary and
as a related corporation regardless of how related”);
Adams v. Dell Computer Corp., No. Civ A C-06-089, 2006
WL 2670969, at *5-6 (S.D. Tex. Sept. 18, 2006) (applying
same definition as “ordinary meaning” of “affiliate” where
contract does not define the term). 2
2 Securus argues (Br. 28) that although the Fifth
Circuit in McLane Foodservice cited the definition of
“affiliate” in Black’s Law Dictionary, the court “did not
adopt that definition as the ‘plain, ordinary, and generally
accepted meaning’ of ‘affiliate’ or apply that definition in
its decision.” In fact, it is plain from the cited passage of
McLane Foodservice that the court did exactly that: It
determined that the “plain and ordinary meaning” of the
term “affiliate” is found in Black’s Law Dictionary, the
place that a Texas state court would look for the defini-
tion of that term in the absence of a definition in the
contract. 736 F.3d at 378 & n.3. As for the decision in
8 SECURUS TECHNOLOGIES INC v. GLOBAL TEL*LINK CORP.
The district court therefore correctly concluded that
under both the general definition of the term “affiliate”
and the applicable principles of Texas law, GTL, as the
parent corporation of PCS, qualified as an “affiliate” of
PCS for purposes of the 2009 covenant not to sue. The
court therefore correctly held that Securus was contractu-
ally barred from bringing suit against GTL at the time it
did.
III
On GTL’s appeal, we uphold the district court’s ruling
that GTL failed to establish an element essential to an
award of attorney fees as damages for Securus’s breach of
the covenant not to sue.
A
The district court held that GTL was entitled to dam-
ages for breach of the covenant not to sue, and that the
damages would be based on the attorney fees incurred in
defending the suit that was barred by the covenant. The
court further held, however, that in order to establish its
right to an award of attorney fees as damages, GTL was
required to offer expert testimony, or at least testimony
from an attorney designated as an expert, to prove that
the fees incurred by GTL in defending against the patent
infringement claim were reasonable and necessary.
Texas Molecular, Securus argues (Br. 26) that the Fifth
Circuit’s definition of “affiliate” as a company “effectively
controlled or associated with others under common own-
ership or control” excludes parents. It does not. Both
parents and subsidiaries are “associated” with one anoth-
er “under common ownership or control.” 424 F. App’x at
357. Securus’s effort to distinguish Magicon (Br. 33-34),
in which the court applied the same definition, fails on
the same ground.
SECURUS TECHNOLOGIES INC v. GLOBAL TEL*LINK CORP. 9
GTL argued to the district court that it was not neces-
sary to use an expert to prove its entitlement to an award
of attorney fees as damages. Rather, GTL argued, all that
was required to prove attorney fees as damages in a case
involving the breach of a covenant not to sue was to show
that the attorney fees were the natural and foreseeable
consequences of the breach. GTL argued that it did not
need to prove that the fees were reasonable and neces-
sary; it only needed to introduce the records of the fees
incurred.
The district court disagreed. Under Texas law, the
court held that when attorney fees are sought as actual
damages in an action such as one for breach of a covenant
not to sue, the claimant must show that the fees were
reasonable and necessary. The court further held that
expert testimony is needed to show that the fees are
reasonable and necessary, because such knowledge is
“outside the normal understanding of a lay person.”
Because GTL failed to designate an expert (or an attorney
testifying as an expert) by the deadline for designating
experts and making expert disclosures, the court granted
summary judgment on that issue to Securus.
B
In this court, GTL is no longer pressing the argument
that it is not required to prove that its attorney fees were
reasonable and necessary. Nor is it arguing, as it did in
the district court, that it could establish its right to an
award of attorney fees simply by presenting the fee docu-
ments and calling a GTL representative to testify that
GTL paid the fees. Instead, GTL appears to accept that
under Texas law it was required to offer testimony from
an attorney regarding the reasonableness and necessity of
the fees it incurred in defending against Securus’s in-
10 SECURUS TECHNOLOGIES INC v. GLOBAL TEL*LINK CORP.
fringement claims. 3 GTL’s claim on appeal is that Texas
law does not require that the attorney who testifies as to
the reasonableness and necessity of the fees sought as
damages be designated as an expert. For that reason,
GTL argues that it was not required to make the appro-
priate expert witness disclosures by the deadline for
designating expert witnesses. GTL’s appeal thus turns on
whether Texas law requires expert testimony—either
from an attorney or otherwise—on the issue of the rea-
sonableness and necessity of the fees incurred by the
party seeking a fee award as damages. 4
Texas law on the issue before the district court is
clear: When a party seeks an award of attorney fees as
damages, it is required to introduce expert testimony,
from an attorney or otherwise, to establish that the fees
3 In a footnote (Br. 19 n.35), GTL hedges its posi-
tion on this point, stating that even though the Fifth
Circuit has “assumed” that fees sought to be recovered as
actual damages must be reasonable and necessary, “it is
not in fact clear that the Texas Supreme Court would find
that a party seeking attorneys’ fees as actual damages is
required to establish that the fees were ‘reasonable and
necessary’ as opposed to merely foreseeable.” GTL, how-
ever, cites no authority from the Texas Supreme Court
supporting that contention, and the Texas and Fifth
Circuit cases cited infra are clearly to the contrary.
4 At oral argument, GTL’s counsel suggested that
even if Texas law required the testimony of an attorney
designated as an expert to prove attorney fees as damag-
es, that requirement would not necessarily apply in a
federal court proceeding, even though the claim for fees is
a state law claim brought under the federal court’s sup-
plemental jurisdiction. GTL, however, did not make or
develop that argument in its briefs in this court, so we do
not address it here.
SECURUS TECHNOLOGIES INC v. GLOBAL TEL*LINK CORP. 11
were reasonable and necessary. The Texas cases are
unambiguous on the point.
First, contrary to GTL’s argument below, the Texas
courts that have recognized a right to seek attorney fees
as damages in appropriate cases have required proof that
the fees were reasonable and necessary. See Turner v.
Turner, 385 S.W.2d 230, 234 (Tex. 1964); Dixon Fin.
Servs., Ltd. v. Chang, 325 S.W.3d 668, 678 (Tex. App.
2010); Lesikar v. Rappeport, 33 S.W.3d 282, 307 (Tex.
App. 2000); Powell v. Narried, 463 S.W.2d 43, 46 (Tex.
App. 1971); see also Am. Home Assurance Co. v. United
Space Alliance, LLC, 378 F.3d 482, 490 (5th Cir. 2004).
Second, Texas courts have ordinarily required expert
testimony to prove attorney fees, and when an attorney
testifies that the attorney fees are reasonable and neces-
sary, the Texas courts have held that the attorney testi-
fies as an expert. See E.F. Hutton & Co. v. Youngblood,
741 S.W.2d 363, 364 (Tex. 1987); Gulf Paving Co. v.
Lofstedt, 188 S.W.2d 155, 160-61 (Tex. 1945) (“estimates
of . . . value made by attorneys who testified” is “opinion
evidence of expert witnesses”); Woodhaven Partners, Ltd.
v. Shamoun & Norman, L.L.P., 422 S.W.3d 821, 830 (Tex.
App. 2014) (“Texas law is clear that ‘[t]he issue of reason-
ableness and necessity of attorney’s fees requires expert
testimony.’”); Phillips v. Phillips, 296 S.W.3d 656, 671
(Tex. App. 2009) (“Expert testimony as to the reasonable-
ness of the attorney’s fees is required to support an award
of attorney’s fees.”); Twin City Fire Ins. Co. v. Vega-
Garcia, 223 S.W.3d 762, 770 (Tex. App. 2007) (“The issue
of reasonableness and necessity of attorney’s fees requires
expert testimony.”); Lesikar, 33 S.W.3d at 308 (“General-
ly, the issue of reasonableness and necessity of attorneys’
fees requires expert testimony; an attorney testifies as to
reasonableness, and the testifying attorney must be
designated as an expert before he testifies.”); Cantu v.
Moore, 90 S.W.3d 821, 826 (Tex. App. 2002) (“Expert
testimony is required to support an award of attorneys’
12 SECURUS TECHNOLOGIES INC v. GLOBAL TEL*LINK CORP.
fees.”); Woolett v. Matyastik, 23 S.W.3d 48, 52 (Tex. App.
2000) (same); Nguyen Ngoc Giao v. Smith & Lamm, P.C.,
714 S.W.2d 144, 148 (Tex. App. 1986) (An affidavit from
an attorney representing a party “is admissible in a
summary judgment proceeding and is considered expert
testimony.”).
Third, the Texas cases that have addressed the issue
have consistently held that a party who uses an expert—
or an attorney testifying as an expert—to establish the
reasonableness and necessity of attorney fees must identi-
fy the expert at the time required for designating experts
generally. See E.F. Hutton & Co., 741 S.W.2d at 364;
Woodhaven Partners, 422 S.W.3d at 830 (“An attorney
testifies as to reasonableness; the testifying attorney
must be designated as an expert before he or she testi-
fies.”); Lesikar, 33 S.W.3d at 308 (same); see also 15625
Fort Bend Ltd. v. Sentry Select Ins. Co., 991 F. Supp. 2d
932, 946 (S.D. Tex. 2014) (“the failure to properly and
timely designate an expert witness on a fee award bars
recovery of such fees under Texas law”).
The last two points are dispositive of GTL’s position
before this court: GTL was required to designate an
expert to testify in support of its claim for attorney fees as
damages, and when it failed to timely designate an ex-
pert, it forfeited its right to an award of fees.
C
GTL does not seriously engage the Texas cases that
stand for those three points. Instead, GTL principally
relies on two federal cases that apply Texas law—a case
from this court, Taurus IP, LLC v. DaimlerChrysler Corp.,
726 F.3d 1306 (Fed. Cir. 2013), and a case from the Fifth
Circuit, American Home Assurance Co. v. United Space
Alliance, LLC, 378 F.3d 482 (5th Cir. 2004). GTL argues
that those cases support its view of Texas law, and that
they are binding authority on this court regardless of
what the Texas state court decisions might say.
SECURUS TECHNOLOGIES INC v. GLOBAL TEL*LINK CORP. 13
When exercising either diversity or supplemental ju-
risdiction, both the Fifth Circuit and this court must defer
to authoritative state court decisions interpreting state
law. Felder v. Casey, 487 U.S. 131, 151 (1988). For the
reasons set forth below, we are persuaded that the Feder-
al Circuit’s decision in Taurus and the Fifth Circuit’s
decision in American Home do not conflict with the Texas
state courts’ interpretation of the relevant provisions of
Texas law. We are therefore free to apply Texas law as
announced by the Texas state courts. 5
Taurus presented two discrete issues involving attor-
ney fees and damages. First, the district court awarded
attorney fees incurred in prosecuting a breach of warran-
ty suit. That fee award was predicated on section 38.001
of the Texas Civil Practice and Remedies Code. Second,
the court awarded damages in the amount of the attorney
fees that the defendants had incurred in defending
against a patent infringement action.
One of the issues in Taurus was whether expert tes-
timony was necessary to support either of the two awards.
As to the first award, the court concluded that expert
testimony was not necessary to support the award under
section 38.001 for the breach of contract action. As to the
second award, the court found it unnecessary to decide
5 Because we reject GTL’s interpretation of Taurus
and American Home, we do not have to address the ques-
tion whether those cases correctly construe Texas law, as
expressed in the state court decisions cited above, includ-
ing several intermediate state appellate court decisions
that post-date Taurus and American Home. See Brous-
sard v. S. Pac. Transp. Co., 665 F.2d 1387, 1389 (5th Cir.
1982) (one panel of a federal appellate court should follow
a prior panel’s interpretation of state law “absent a sub-
sequent state court decision or statutory amendment
which makes this Court’s (prior) decision clearly wrong”).
14 SECURUS TECHNOLOGIES INC v. GLOBAL TEL*LINK CORP.
whether expert testimony was required to support the
award of attorney fees as damages for the defense of the
patent infringement action. 726 F.3d at 1342. Thus,
while Taurus ruled on the need for expert testimony in a
proceeding brought under Tex. Civ. Prac. & Rem. Code
§ 38.001, it did not address the issue before this court at
all. 6
American Home has some parallels with this case, but
like Taurus it does not address the key questions at issue
here. In particular, American Home does not address or
decide whether, under Texas law, an expert or an attor-
ney designated as an expert is needed to testify as to the
necessity and reasonableness of attorney fees when those
fees are sought as damages in a breach of contract action.
In American Home, a liability insurer, American
Home Assurance Company (“AHAC”), declined coverage of
its insured, United Space Alliance, LLC, (“United Space”)
and refused to defend United Space in a liability action
brought by a third party. United Space sued AHAC for
breach of the duty to defend under its liability policy. The
jury held that AHAC had breached its duty to defend and
awarded United Space (1) attorney fees as damages to
compensate United Space for the cost of defending the
third-party lawsuit and (2) an award of attorney fees
6 Securus argues that Taurus is pertinent because,
by treating fee awards under section 38.001 separately
from damages awards for the cost of unjustified proceed-
ings, the court departed from the rationale of the district
court in this case, which ruled that expert testimony was
required in both instances. Regardless of whether the
district court was correct in its analysis of cases applying
section 38.001, however, its holding as to Texas law
regarding the proof of attorney fees as damages is con-
sistent with the Texas authorities cited above and is not
at odds with anything decided by this court in Taurus.
SECURUS TECHNOLOGIES INC v. GLOBAL TEL*LINK CORP. 15
incurred in the coverage action that United Space brought
to enforce AHAC’s duty to defend. AHAC appealed,
arguing that United Space’s evidence did not support
either verdict under Texas law.
As GTL did below in this case, United Space took the
position that under Texas law it was not required to prove
that the fees it incurred in the third-party action were
reasonable and necessary; all that was required, accord-
ing to United Space, was to show that the fees were the
natural and foreseeable consequences of AHAC’s actions.
In light of AHAC’s position, the district court granted
United Space’s motion in limine to prevent AHAC from
raising the issue of the reasonableness of United Space’s
attorney fees. Accordingly, United Space did not offer
expert testimony on the reasonableness and necessity of
the fees and did not designate its attorney as an expert
for that purpose. 378 F.3d at 490.
On appeal, the Fifth Circuit reversed. In the portion
of the court’s opinion that addressed the coverage action,
the court analyzed the fee request under section 38.001.
On that issue, the court remanded for further proceed-
ings. The court noted that another provision of the same
statute, Tex. Civ. Prac. & Rem. Code § 38.003, creates a
rebuttable presumption that fees requested under section
38.001 are reasonable as long as those fees are shown to
be “usual and customary.” 378 F.3d at 492. The court
held that because of the presumption of reasonableness in
section 38.003, expert testimony was not required to
support a claim for attorney’s fees under section 38.001,
since “[t]he requirement of a designated expert goes to the
reasonableness of the fees requested.” 378 F.3d at 493.
Nonetheless, the court reversed because United Space’s
evidence did not even show that the fees were “usual and
customary,” the threshold necessary to trigger the pre-
sumption of reasonableness.
16 SECURUS TECHNOLOGIES INC v. GLOBAL TEL*LINK CORP.
As in Taurus, the court in American Home dealt sepa-
rately with the claim for attorney fees as damages. It
held that under Texas law, “attorney’s fees sought to be
recovered as damages must be reasonable and necessary.”
378 F.3d at 490. Because the jury had not been required
to make such a finding, the court remanded for further
proceedings on the damages issue. 7
In a passage that GTL relies on, the court said the fol-
lowing:
To show the reasonableness and necessity of at-
torney’s fees incurred, Texas courts have general-
ly held that a party seeking such fees must offer
the testimony of a witness who has been designat-
ed as an expert, See E.F. Hutton & Co. v.
Youngblood, 741 S.W.2d 363, 364 (Tex. 1987); Le-
sikar, 33 S.W.3d at 307, or at the very least, some
testimony by the claimant’s attorney that the fees
being sought as damages are reasonable. Gulf
Paving Co. v. Lofstedt, 144 Tex. 17, 188 S.W.2d
155, 161 (1945); Nguyen Ngoc Giao v. Smith &
Lamm, P.C., 714 S.W.2d 144, 149 (Tex. App.-
Houston [1st Dist.] 1986, no writ).
7 GTL conflates the discussion of attorney fees as
damages and attorney fees sought under section 38.001.
See Reply Br. 9 (“The American Home court explicitly
rejected the argument that expert testimony of any kind
was required to support an award of attorneys’ fees under
§ 38.001.”); Reply Br. 11 (citing Budd v. Gay, 846 S.W.2d
521, 524 (Tex. App. 1993), for the proposition that an
attorney need not be designated as an expert to testify as
to the reasonableness and necessity of fees, even though
that case was brought under section 38.001). The deci-
sions in Taurus and American Home, however, make clear
that the two sources of recovery are doctrinally distinct,
and the opinions treat them as such.
SECURUS TECHNOLOGIES INC v. GLOBAL TEL*LINK CORP. 17
378 F.3d at 490. 8
Based on that passage, GTL argues that Texas law
does not require expert testimony on the issue of the
reasonableness and necessity of a party’s attorney fees, as
long as it offers competent testimony from an attorney
with regard to that issue. GTL argues that the American
Home court must have intended to say that an attorney’s
testimony on reasonableness and necessity does not have
to be that of an expert, since the court referred to the
option of either presenting evidence from an expert, or “at
the very least, some testimony by the claimant’s attorney
that the fees being sought as damages are reasonable.”
American Home, 378 F.3d at 490. Therefore, GTL argues,
the district court in this case committed reversible error
by holding that Securus was entitled to summary judg-
ment on the attorney fee issue when GTL failed to desig-
nate an expert witness before the deadline for designating
expert witnesses in the scheduling order.
In fact, neither that passage nor anything else in
American Home stands for the proposition that Texas law
does not require expert testimony to support a claim for
attorney fees as damages in a breach of contract case. All
that American Home decided with respect to the damages
issue was that there was insufficient evidence that the
attorney fees incurred by United Space were reasonable
and necessary, and that the damages award had to be
reversed as a result. The question whether the testimony
of the claimant’s attorney had to be treated as expert
8 GTL also relies on a similar statement by the
court later in the opinion in which it states that on re-
mand the district court should require that United Space
“either offer the testimony of a designated expert, or
testimony by its attorneys, as to why the attorney’s fees
requested are reasonable and necessary.” 378 F.3d at
491.
18 SECURUS TECHNOLOGIES INC v. GLOBAL TEL*LINK CORP.
testimony under Texas law was not before the court and
was not decided. 9 The court’s silence on whether the
attorney’s testimony had to be treated as expert testimo-
ny cannot be considered a holding that under Texas law
an attorney who testifies as to the reasonableness and
necessity of particular attorney fees need not be designat-
ed as an expert. 10
9 GTL argues that American Home stands for the
proposition that an attorney need not be designated as an
expert because no such designation occurred in that case;
if the court had regarded such a designation as necessary,
GTL argues, the court would simply have reversed the
award of damages rather than remanding for further
proceedings. The court, however, reversed the damages
award because there was no evidence as to the reasona-
bleness and necessity of United Space’s attorney fees.
The court did not discuss the question whether United
Space should have designated its attorney as an expert or
how the district court should address that issue if it arose
on remand.
10 There are two further indications that the Ameri-
can Home court did not intend to suggest that an attorney
who testifies as to the reasonableness and necessity of
attorney fees sought as damages does not need to be
designated as an expert. First, the cases cited by the
American Home court for the proposition that an attorney
can provide such evidence, Gulf Paving Co. v. Lofstedt,
188 S.W.2d 155 (Tex. 1945), and Nguyen Ngoc Giao v.
Smith & Lamm, P.C., 714 S.W.2d 144 (Tex. App. 1986),
both expressly state that the testimony of an attorney on
such an issue is considered expert testimony.
Second, as noted above, the American Home court
stated that “[t]he requirement of a designated expert goes
to the reasonableness of the fees requested.” 378 F.3d at
493. Because the court held that a showing of reasona-
SECURUS TECHNOLOGIES INC v. GLOBAL TEL*LINK CORP. 19
Thus, the Fifth Circuit’s decision in American Home
does not conflict with the consistent line of Texas cases
(reinforced by Texas cases decided after American Home,
such as Woodhaven, Phillips, and Twin City) holding that
an attorney who testifies as to the reasonableness and
necessity of attorney fees in a case in which fees are
sought as damages testifies as an expert. For that reason,
we conclude that the district court in this case correctly
held that GTL was required to disclose its expert wit-
ness—whether an attorney or otherwise—at the time for
expert witness disclosures according to the scheduling
order. Because GTL failed to do so, the district court
permissibly concluded that GTL failed to satisfy the
requirement of showing that the fees it sought were
reasonable and necessary. We therefore uphold the
district court’s decision granting summary judgment to
Securus on GTL’s counterclaim for attorney fees as dam-
ages.
AFFIRMED
Each party shall bear its own costs for this appeal.
bleness is required to prove attorney fees as damages (but
not to establish entitlement to a fee award under section
38.001), that statement indicates that the court consid-
ered expert testimony to be needed under Texas law to
prove the reasonableness of attorney fees as damages in a
breach of contract action, where the presumption of
reasonableness set forth in Tex. Civ. Prac. & Rem. Code
§ 38.003 is inapplicable.