Massachusetts Eye & Ear Infirmary v. QLT Phototherapeutics, Inc.

United States Court of Appeals
For the First Circuit

Nos. 07-2615, 07-2616

MASSACHUSETTS EYE AND EAR INFIRMARY,

Plaintiff/Counterclaim Defendant-Appellee/Cross-Appellant,

v.

QLT PHOTOTHERAPEUTICS, INC.,

Defendant.

QLT, INC.,

Counterclaim Plaintiff, Appellant/Cross-Appellee,

v.

MASSACHUSETTS EYE AND EAR INFIRMARY;
EVANGELOS S. GRAGOUDAS, M.D.; JOAN W. MILLER, M.D.,

Counterclaim Defendants, Appellees/Cross-Appellants.

APPEALS FROM THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MASSACHUSETTS

[Hon. William G. Young, U.S. District Judge]

Before

Howard, Baldock* and Selya, Circuit Judges.

Richard G. Taranto, with whom Farr & Taranto, Donald R. Ware,

*
Of the Tenth Circuit, sitting by designation.
Sarah Cooleybeck, Jeff Bone, Foley Hoag LLP, Aaron M. Panner,
Kellogg, Huber, Hansen, Todd, Evans & Figel, PLLC, were on brief
for appellant/cross-appellees.
Kenneth B. Herman, with whom James F. Haley, Jr., Christopher
J. Harnett, Karen Mangasarian, John D. Donovan, Jr., F. Turner
Buford and Ropes & Gray, LLP, were on brief for appellee/cross-
appellant.

January 12, 2009
 HOWARD, Circuit Judge. These appeals require us to

grapple with the metes and bounds of Massachusetts unjust

enrichment and restitution law. Like many such cases, the present

case involves one party's conferral of a valuable benefit during

ongoing contract negotiations, followed by an irreparable breach in

the bargaining process. What makes this case unusual is that its

subject matter -- the development of a blockbuster pharmaceutical

-- poses challenges in valuing the benefit conferred, and

potentially implicates federal patent law. Defendant QLT

Phototherapeutics, Inc. ("QLT") appeals a jury finding that it was

unjustly enriched because plaintiff Massachusetts Eye and Ear

Infirmary ("MEEI") conferred on QLT several benefits during the

course of the development of Visudyne, a successful (and highly

profitable) treatment for age-related macular degeneration (“AMD”),

a leading cause of adult blindness.

In a prior opinion, we concluded that MEEI was entitled

to a trial on two theories supporting its unjust enrichment claim,

as well as a misappropriation of trade secrets claim and claims

arising under the Massachusetts Unfair Trade Practices statute,

Mass. General Laws ch. 93A §§ 2, 11 (“Chapter 93A”). Mass. Eye &

Ear Infirm. v. QLT Phototh., Inc., 412 F.3d 215 (1st Cir.

2005)("MEEI-II"). After trial, a jury found that QLT was unjustly

enriched, and that it had committed unfair trade practices in

violation of Chapter 93A. The jury awarded MEEI a running royalty

-3-
of 3.01% of global net Visudyne sales as damages. QLT prosecutes

its ensuing appeal with great vigor. For the sake of simplicity,

we group QLT's assignments of error into five clusters relating to

(1) the imposition of unjust enrichment liability, (2) the measure

of unjust enrichment damages, (3) the unfair trade practices claim,

(4) the conduct of the trial, and (5) the post-trial attorneys' fee

award. MEEI has cross-appealed. This cross-appeal is largely

protective; in all events, with two exceptions, we need not discuss

the cross-appeal.

As to most of the grounds of MEEI's cross-appeal and

QLT's appeal, including MEEI's claim that it is entitled to

exemplary damages under Chapter 93A, we detect no error or

infirmity in the proceedings below. The other issue raised in both

the cross-appeal and QLT's appeal that bears discussion is the

parties' query about the size of MEEI's attorneys' fee award. We

are unable meaningfully to evaluate this claim of error, because

the record is incomplete. We therefore affirm the district court

judgment except for the fee award, which we vacate and remand to

give the district court an opportunity to construct a more complete

record.

I. Background

The proceedings in this dispute over the rights to the

income stream of Visudyne have spanned nearly a decade. Although

our prior decision described the background of the dispute, QLT

-4-
argues that the jury verdict is not supported by sufficient

evidence. Consequently, we adumbrate the conflict between the

parties and some of the evidence developed at trial.1 We augment

this discussion as necessary to complete our analysis.2

Visudyne traces its ancestry to a field of cow parsley

located on a remote island north of Vancouver, Canada. Dr. Julia

Levy,3 an immunologist at the University of British Columbia,

learned by happenstance that her children's burn-like lesions

resulted from contact with a photosensitizer chemical found in cow

parsley that, when activated by light, literally burned them. This

led Dr. Levy to orient her research to photodynamic therapy

("PDT"), which uses light to activate photosensitizer compounds.

Photodynamic therapy works by shining light on the photosensitizer,

which energizes the photosensitizer and transforms it into a toxic

chemical.

Successful exploitation of this light-induced toxicity

for therapeutic purposes requires "targeting" the photosensitizer

1
We evaluate the verdict with customary deference, and present the
facts in the light most favorable to the verdict. See Azimi v.
Jordan’s Meats, Inc., 456 F.3d 228, 232 (1st Cir. 2006).
2
We also note that the trial court has made contemporaneous and
independent findings of fact on which we rely for the narrative
that follows. See Mass. Eye & Ear Infirm. v. QLT Inc., 495 F.
Supp.2d 188, 199, n.5 ("MEEI-III").
3
Dr. Julia Levy was a founder of QLT, and served in several senior
management positions within the company.

-5-
so that it kills only unwanted cells. Dr. Levy eventually helped

develop a proprietary photosensitizer called benzoporphyrin

derivative monoacid ("BPD"), which had a unique ability to deliver

itself to new blood vessels immediately upon injection. BPD proved

to be a compound with several other attributes that made it a

promising candidate for photodynamic therapy: BPD could absorb

light at a wavelength that penetrates animal tissue, and in a

liposomal formulation, it could be absorbed by certain blood cells,

allowing for the possibility of destroying such unwanted blood

cells. QLT eventually acquired the sole right to license BPD from

the University of British Columbia. In exchange for this patent

right, QLT agreed to pay a royalty of 2% of net sales.

Although BPD held promise, it was, for a time, a drug in

search of a disease. Dr. Levy initially hoped to develop the drug

as a cancer treatment. This was the state of affairs when Dr. Levy

first made contact with researchers at Massachusetts General

Hospital ("MGH"), and later, MEEI.

Dr. Levy's contacts at MGH, Drs. Tayyaba Hassan, Reginald

Birngruber and Ursula Schmidt-Erfurth, collaborated on using

photodynamic therapy to close blood vessels initially in chick

embryos, and later, in rabbit eyes. In due course, this group

experimented with a variety of compounds for this purpose,

including BPD, which was obtained from QLT.

-6-
 Eventually, Dr. Schmidt-Erfurth brought the BPD compound

to the attention of MEEI. Dr. Schmidt-Erfurth proposed studying

the use of BPD to treat intraocular tumors and, at the suggestion

of Dr. Evangelos Gragoudas, to close normal choroidal blood vessels

without damaging the retina.

Independently, Dr. Gragoudas hired Dr. Joan Miller, a

former MEEI fellow, to investigate whether BPD could be used to

treat AMD -- an ocular disease that is the predominant cause of

blindness in individuals over age fifty. The condition takes two

forms: "dry" and "wet." Although the wet form accounts for only

10% of all occurrences of AMD, it leads to the condition known as

either choroidal neovasculature ("CNV") or neovasculature, which

causes 90% of AMD-related vision loss. CNV is the result of the

proliferation of unwanted blood vessels in the choroid. Thus,

closing such vessels would effectively palliate AMD.

Dr. Miller conducted her experiments using primate eyes,

which, like human eyes, have retinas and retinal vessels. The

rabbit eyes that Dr. Schmidt-Erfurth used to conduct her

experiments lacked retinal vessels. This was a consequential

distinction: in the early 1990s, the prevailing view held that the

most cogent way to prove that PDT could be used to treat AMD was to

show that PDT could close the abnormal choroidal vessels that cause

CNV without damaging the underlying, healthy retinal vessels. This

demonstration was important because damage to normal retinal

-7-
vessels would lead to a loss of vision. Consequently, Dr. Schmidt-

Erfurth's experiments on rabbit eyes, which lack such normal

vessels, could not predict PDT's suitability for use in treating

AMD.

Dr. Miller obtained access to BPD pursuant to material

transfer agreements with QLT. QLT did not provide any funding for

Dr. Miller's initial research. Dr. Miller's BPD-based experiments

proved successful. She showed that BPD was a promising

photodynamic agent for the treatment of age-related macular

degeneration. Armed with more BPD (but still no QLT funding), Dr.

Miller conducted additional experiments designed to determine the

maximum irradiance level with which a laser could be used to

activate BPD without damaging the eye. The significance of higher

irradiance levels was their ability to reduce treatment times,

thereby making treatments using BPD a substantially more practical

therapy for AMD. As a result of these experiments, a QLT

representative observed that BPD had finally found its disease: it

could be used to treat age-related macular degeneration.

Energized by Dr. Miller's findings, QLT executed a

preclinical agreement, in which it agreed to fund Dr. Miller's

further investigations of BPD. In addition, QLT and Dr. Miller

-8-
signed confidential disclosure agreements and additional material

transfer agreements.4

Dr. Miller's additional experiments were successful, and

her preclinical report subsequently formed the basis of the federal

Food and Drug Administration's ("FDA") permission to initiate

clinical trials in humans. In the year 2000, after several years

of clinical trials in relation to which Dr. Miller drafted the

clinical protocols and served as principal investigator, the FDA

approved the BPD-based process for treating age-related macular

degeneration. This treatment is marketed as Visudyne.

A. QLT's Distribution Partnership with CIBA Vision

Long before final FDA approval, the parties recognized

the potential for Visudyne's commercial exploitation. In November

1993, Dr. Ed Levy approached CIBA Vision (sometimes "CIBA"),5 a

Swiss company, about a partnership for manufacturing and

distributing what became Visudyne. To entice CIBA Vision, Dr. Ed

Levy provided it with a some of Dr. Miller's confidential

4
The June 1994 Material Transfer Agreement as presented to Dr.
Miller purported to grant QLT a "worldwide royalty free non-
exclusive license." But Dr. Miller crossed out this clause before
signing the agreement, QLT did not object, and continued to supply
Dr. Miller with BPD.
5
CIBA Vision is now known as Novartis Opthalmics, Inc., but for the
sake of simplicity we continue to refer to CIBA Vision as a
separate entity.

-9-
research.6 This disclosure violated the material transfer and

confidentiality agreements between Dr. Miller and QLT, which

permitted QLT access to Dr. Miller's research results but

explicitly prohibited QLT from disclosing those results to third

parties.7 Dr. Ed Levy made several other unauthorized disclosures.

For example, in a January 1994 meeting with CIBA, QLT disclosed

additional treatment parameters gleaned from Dr. Miller's work.

Such disclosures served their intended purpose: they whetted CIBA's

appetite.

After it was informed that Dr. Miller was planning to

disclose much of her research at an ophthalmology conference in the

spring of 1994, CIBA Vision requested prompt access to Dr. Miller's

work. Realizing that CIBA Vision was developing its own

photosensitizer agent, QLT promised to share all of Dr. Miller's

experimental data even though QLT was precluded from making such a

disclosure without Dr. Miller's consent.

QLT further determined that it would be advantageous to

have Dr. Miller present her research to CIBA Vision. Consequently,

6
Dr. Ed Levy, the husband of Dr. Julia Levy, was another senior
officer of QLT.
7
As part of the Confidential Disclosure Agreement, QLT promised
"not to use the Confidential Information for any purpose other than
the evaluation of Products under the terms of the Agreement" and
"to maintain Confidential Information in confidence." The parties
further agreed that "misuse or improper disclosure of Confidential
Information would irreparably harm the business of the disclosing
party or that party's affiliates." See MEEI-II, 412 F.3d at 222.

-10-
QLT approached Dr. Miller and requested that she make such a

presentation. Dr. Miller was reticent about disclosing her results

because QLT and MEEI had not yet negotiated a licensing arrangement

for her treatment, but Dr. Ed Levy promised Dr. Miller that QLT

would enter into a licensing agreement with MEEI. In early March

of 1994, QLT confirmed in writing its promise to license Dr.

Miller's treatment from MEEI. Armed with these assurances, Dr.

Miller agreed to make a presentation of her confidential work to

CIBA Vision. Still, as late as the car ride to the meeting, Dr.

Miller expressed concerns to the Levys about discussing her

confidential work without a formal, written licensing agreement in

place. The Levys again assured her that QLT would protect the

information that she was about to present to CIBA Vision, that QLT

would license the treatment from MEEI, and that QLT would treat

MEEI fairly.

Pleased with Dr. Miller's presentation, CIBA Vision

expressed a desire to enter into a partnership with QLT. CIBA

Vision executed a Letter of Understanding in which it wrote:

Dr. J Miller's (Harvard University)
presentation has impressed and convinced us
that Photodynamic Dynamic Therapy will be the
treatment of Age-related macular degeneration
of the future. We would therefore appreciate
a joint development . . . under the CIBA-
umbrella agreement.

This letter was followed by a more detailed Letter of Intent

between CIBA Vision and QLT in May of 1994.

-11-
 Around the time that this Letter of Intent was signed,

Dr. Miller made portions of her research findings public at an

ophthalmology conference, as both QLT and CIBA Vision anticipated.

Indeed, Dr. Miller made additional presentations to a CIBA Vision

representative at the same conference.

Thereafter, CIBA Vision continued to press QLT for

additional information from Dr. Miller's research, as well as for

her personal involvement in briefings. CIBA wrote that it was

"essential that Dr. Miller share[] all the information and

statistics with us" (emphasis in original). In addition, CIBA

wrote that it was "essential" that Dr. Miller "does give a

demonstration" directly to CIBA representatives.

After further promises of a license and fair

compensation, Dr. Miller acceded to CIBA Vision and QLT's requests.

Subsequently, in February 1995, QLT signed a definitive agreement

with CIBA Vision.

B. The Patent Application Process

We come now to the patent application process, another

major strand of the dispute between the parties. Because Dr.

Miller disclosed important facets of her research results in

abstracts published on March 15, 1993, a patent application had to

be filed by March 15, 1994. See 35 U.S.C. § 102(b). In late

February and early March of 1994, MEEI informed QLT that it wanted

to patent the process that Drs. Miller's and Gragoudas' research

-12-
had spawned. QLT suggested the use of its patent attorney but

indicated that it did not see itself as an inventor of the process.

Moreover, QLT reiterated its desire to license the treatment from

MEEI. QLT memorialized these comments in several letters. In

addition, although QLT noted the possibility that non-QLT employees

might claim co-inventorship status, QLT promised to compensate MEEI

based on MEEI’s sole ownership of the contemplated patent.

Based primarily on her discussions with Dr. Miller, QLT's

patent attorney drafted patent application 08/209,473 ("the '473

application").8 The '473 application named only three inventors,

all affiliated with MEEI: Drs. Miller, Gragoudas, and Lucy Young

(another MEEI researcher). Soon after the '473 application was

filed, Dr. Hassan learned that she had not been named an inventor,

and she objected.

Further complicating matters, QLT argued that the portion

of the '473 application dealing with age-related macular

degeneration had to be refocused in light of the prior art. In a

contemporaneous letter to CIBA, however, QLT clarified that its

concern went beyond determining the proper scope and inventorship

of a potential Visudyne patent; QLT wanted to maintain control of

the application process. Dr. Ed Levy wrote:

8
The '473 application described several claims. Claim 1 described
a "method to treat conditions of the eye characterized by unwanted
neovasculature," while claim 2 was directed specifically to
choroidal neovasculature.

-13-
 At one point we verbally conveyed to MEEI a
more negative view of the prospects [of the
'473 application] and our willingness to
continue funding the application. Their
response was roughly "send us the file." We
chose to soften our position so that we could
maintain control of the process. . . .

Dr. Levy further explained that QLT was not yet in a propitious

position to challenge Dr. Miller or MEEI because the '473

application listed only MEEI inventors:

What all this amounts to is that there will be
additional negotiations with Joan [Dr. Miller]
and MEEI over these matters, so even though we
hold almost all of the cards, we do not want
to muddy the waters. For all I know there may
be other reasons not to get into a pissing
match with Joan (excuse the technical
language)–e.g. she made important
contributions to the preclinical proof of
principle and she could be an extremely
valuable clinical investigator--but it seems
to me that the patent negotiations alone are a
sufficient reason for all of us to proceed
carefully with Joan and her colleagues.

Having retained control of the patent application

process, QLT suggested amending the application to cover narrower

claims involving liposomal preparations of BPD. (The original

application involved LDL-based BPD). Such a limitation would

permit Dr. Julia Levy to be added to the patent application as a

co-inventor. Initially, QLT's patent attorney rejected this

limitation. The parties remained unable to reach agreement on the

proper scope of the Visudyne patent application.

-14-
 Stymied, Dr. Murashige, QLT’s patent attorney, suggested

that all concerned parties -- MGH, MEEI, and QLT -- meet in

December 1994 to resolve the inventorship dispute. Prior to the

meeting, MEEI researchers were resistant to broadening the

inventorship of Visudyne because of concerns that added inventors

would reduce the amount of future royalties that MEEI could expect.

To counter these concerns, QLT assured MEEI that a fair business

arrangement would be made regardless of how inventorship was sorted

out.

At the meeting, all those claiming potential co-inventor

status, each with the guidance of independent counsel, explained

their claimed roles in the process. Rather than argue about who

did what, Dr. Murashige suggested that the parties file a broader

patent application that would include additional inventors. It was

understood that this broadened patent application would be jointly

assigned to MEEI, MGH, and QLT because personnel from all three

institutions were co-inventors under this broadened application.

MEEI and its researchers remained wary of this prospect.

Following the meeting, Dr. Miller continued to express her concerns

about dropping the '473 application and filing a broader

application listing additional inventors. But the Levys again

reassured her that QLT would compensate MEEI as the sole inventor,

regardless of how the patent application was ultimately drafted.

-15-
 As a result of these assurances, MEEI, Drs. Miller, and

Gragoudas acquiesced to QLT's preferred approach. Consequently,

QLT's patent attorney filed continuations-in-part canceling the

'473 application and reworked the canceled claims, which she filed

as part of a broader patent application, the "'591 application."

Thus, based on QLT's promise that MEEI would be treated as the sole

owner of the treatment method for age-related macular degeneration,

MEEI agreed to merge its patent claims into two dependent claims

(numbers 7 and 14) of the '591 application, with the consequent

addition of researchers from MGH and Dr. Julia Levy of QLT as co-

inventors.

C. Licensing Negotiations

Dr. Miller and MEEI consistently pressed QLT to negotiate

a license agreement, which QLT delayed.9 In the interim, QLT

consistently obtained Dr. Miller's cooperation with promises of a

fair licensing agreement while deferring the actual negotiations of

the agreement until it held "almost all of the cards." But the

parties did eventually begin negotiations. Once the parties began

negotiating a license, it became clear that they entertained

9
QLT wrote in a letter to MEEI that it was "actively prosecuting
[the '591 application] in a number of jurisdictions around the
world." QLT further stated its intention "to negotiate in good
faith" with the other assignees "when it is clear patents will be
issued and feasibility of the [i]nvention is proven."

-16-
diametrically opposed notions of what constituted a "fair business

arrangement."

In late 1995, Dr. Miller handed Dr. Julia Levy a draft

license agreement, which contained a royalty rate of 5% of net

sales in jurisdictions covered by an MEEI patent. On receiving the

draft, Dr. Levy reassured Dr. Miller that QLT wanted to license

Visudyne from MEEI. QLT followed this conversation with a letter

stating that it considered itself free, "as a co-assignee to

practice the invention [Visudyne] independently." Nevertheless,

QLT wrote that it intended to negotiate in good faith with MEEI and

MGH to "come to an agreement on reasonable terms and royalty rates

which will be consistent with industry standards under similar

circumstances."

The U.S. Patent and Trademark office allowed the claims

of the '591 application, which issued as the '349 patent.

Immediately thereafter, at MEEI's urging, license negotiations

resumed in earnest. QLT's initial position was that it didn't need

a license to sell Visudyne, but wished to recognize the

contributions that MGH and MEEI had made to Visudyne's development.

Consequently, QLT offered MEEI a one-time $200,000 research grant,

and made a similar offer to MGH. About a month later, QLT advanced

another proposal, offering MEEI a royalty of 0.2% of sales in

jurisdictions covered by patents. MGH eventually proposed and QLT

agreed to a royalty rate of 0.5% of sales in the U.S. and Canada,

-17-
along with a "most favored nation" clause obligating QLT to make

any more advantageous license terms it negotiated with MEEI

available to MGH.10 QLT offered similar terms to MEEI. But MEEI

continued to press for better terms on the theory that QLT should

not be a co-assignee, and therefore QLT should -– consistent with

its prior promises –- compensate MEEI as though MEEI was the sole

inventor of Visudyne. Around the same time, MEEI indicated to MGH

that, in the interest of reaching a deal, it was willing to accept

a 3% royalty, which it would split with MGH. In its proposal to

QLT, MEEI demanded an up-front payment of $2,000,000 and a 3%

royalty on net sales of any product intended for treatment of

unwanted neovasculature of the eye using BPD. Further negotiations

broke down, and this suit followed.11

10
The evidence at trial suggested that MGH accepted this proposal
because it felt it had no other leverage, and because it did not
want to disrupt its ongoing arrangement with QLT. Furthermore, the
jury considered the fact that one of the MGH researchers involved
in the licensing discussions was on QLT's scientific advisory
board.
11
MEEI later applied for and obtained a separate patent, No.
6,225,303 ("the '303 patent"), which contained claims similar to
the '349 patent but included an irradiance range not contained in
the '349 patent. MEEI then sued CIBA and QLT for infringement of
the '303 patent.
The district court granted summary judgment to QLT. See Mass.
Eye & Ear Infirm. v. Novartis Opthal., Inc., 353 F. Supp.2d 170 (D.
Mass. 2005). MEEI appealed, and the Federal Circuit found that the
question of inventorship presented a triable issue of material
fact. See Mass. Eye & Ear Infirm. v. Novartis Opthal., Inc., 199
Fed. App'x 960 (Fed Cir. 2006). This litigation eventually settled
and the present suit represents the only vehicle through which MEEI

-18-
 D. Proceedings Below

MEEI brought the present suit in the United States

District Court for the District of Massachusetts, alleging a number

of claims, including breach of express contract, breach of implied

contract, breach of the covenant of fair dealing, conversion,

misrepresentation, unjust enrichment based on the disclosure of

MEEI’s confidential information, unjust enrichment based on the

joinder of MEEI’s claims to the ‘591 application, misappropriation

of trade secrets, and unfair and deceptive trade practices. The

trial court granted QLT summary judgment on all claims. On appeal,

we affirmed in part but remanded the case for trial on two theories

of unjust enrichment: (disclosure of confidential information and

the patent application theory), as well as on the claim for trade

secrets misappropriation, and the Chapter 93A claim. See

generally, MEEI-II.

The parties conducted a spirited trial, which lasted

thirteen days. At the close of MEEI’s evidence, the trial court

granted QLT’s motion for judgment as a matter of law on the

misappropriation of trade secrets claim. In addition, the court

granted QLT judgment with respect to the Chapter 93A claim, to the

extent it relied on the trade secrets claim. The trial continued

with respect to the unjust enrichment claims and the remainder of

the Chapter 93A claim.

is seeking damages arising out of the development of Visudyne.

-19-
 After extensive wrangling about jury instructions, the

remaining claims went to the jury. The jury found QLT liable for

unjust enrichment and a violation of Chapter 93A, and it ordered

QLT to pay MEEI a running royalty of 3.01% of Visudyne’s gross

sales as damages. The jury, however, did not find that QLT’s

Chapter 93A violation was knowing or willful, and therefore did not

award enhanced damages as allowed by the statute. The trial court

denied QLT’s post-trial motion for judgment as a matter of law,

entered judgment on the jury verdict, and awarded MEEI pre-judgment

interest. It also awarded MEEI $14,093,855.42 in attorneys' fee.

This appeal and cross-appeal timely followed.

II. Discussion

We review the district court's denial of a motion for

judgment as a matter of law, including legal decisions made

therein, de novo. Ramos v. City of Mayaguez, 467 F.3d 16, 22 (1st

Cir. 2006). But a jury’s verdict and factual findings "must be

upheld unless the facts and inferences viewed in the light most

favorable to the verdict point so strongly and overwhelmingly in

favor of the movant that a reasonable jury could not have returned

the verdict.” Borges Colon v. Roman Abreu, 438 F.3d 1, 14 (1st

Cir. 2006)(quoting Acevedo Diaz v. Aponte, 1 F.3d 62, 66 (1st Cir.

1993))(internal quotation, alternations, and citations omitted);

see also Crowley v. L. L. Bean, Inc., 303 F.3d 387, 393 (1st Cir.

2002) ("Our review is weighted toward preservation of the jury

-20-
verdict, for we affirm unless the evidence was so strongly and

overwhelmingly inconsistent with the verdicts that no reasonable

jury could have returned them.") (quoting Rodowicz v. Mass. Mut.

Life Ins. Co., 279 F.3d 36, 41-42 (1st Cir. 2002)).

A. Unjust Enrichment Liability

With these standards in mind, we examine the jury verdict

in favor of MEEI, beginning with unjust enrichment liability. In

Massachusetts, a claim for unjust enrichment does not require

consideration, but there must be "unjust enrichment of one party

and unjust detriment to another party." MEEI-II, 412 F.3d at 234

n.7 (internal quotation marks and citations omitted); see also 26

Samuel Williston & Richard A. Lord, A Treatise on the Law of

Contracts § 68:5 (4th ed. 1993) (establishing that unjust

enrichment requires: (1) a benefit conferred upon the defendant by

the plaintiff; (2) an appreciation or knowledge by the defendant of

the benefit; and (3) acceptance or retention by the defendant of

the benefit under the circumstances would be inequitable without

payment for its value); Stevens v. Thacker, 550 F. Supp.2d 161, 165

(D. Mass. 2008). Massachusetts courts emphasize the primacy of

equitable concerns in a finding of unjust enrichment or quasi-

contract: "[C]onsidertions of equity and morality play a large

part in constructing a quasi contract." Salmon v. Terra, 477

N.E.2d 1029, 1031 (Mass. 1985).

-21-
 Furthermore, Massachusetts courts have recognized that

misuse of confidential information may lead to unjust enrichment.

Under Massachusetts law, "a constructive trust is . . . imposed to

avoid unjust enrichment of one party at the expense of the other

where information confidentially given or acquired was used to the

advantage of the recipient at the expense of the one who disclosed

the information." MEEI-II, 412 F.3d at 238 (internal quotations

and citations omitted). In short, we previously have found that in

order for MEEI to show unjust enrichment based on unauthorized

disclosure of confidential information, MEEI had to prove that QLT

used MEEI's confidential information at MEEI's expense. Id.

Against this backdrop, QLT argues that it was entitled to

judgment because MEEI failed to produce proof of a legally

cognizable benefit under either of its theories of unjust

enrichment. QLT contends that neither its disclosure of MEEI's

confidential information, nor MEEI's cooperation on the '591

application were compensable benefits as a matter of law.

Consequently, QLT argues that it has not been unjustly enriched

and, therefore, MEEI is due no compensation under any equitable

doctrine, whether styled as unjust enrichment, quasi-contract,

disgorgement, or restitution.

MEEI counters that both the disclosure of its

confidential information and its assent to the '591 application

-22-
separately constituted a legally cognizable benefit to QLT for

which MEEI deserves compensation. We consider each theory in turn.

1. Confidential Information

We begin by tackling QLT’s challenge to the sufficiency

of the evidence undergirding the confidential information theory of

unjust enrichment. We then address QLT’s legal challenges to this

theory.

Over the course of the trial, the parties introduced

copious evidence. For example, it is undisputed that QLT agreed

not to disclose MEEI's confidential information "to any person or

entity other than its corporate counsel and employees."12

Nevertheless, there was evidence that QLT contacted CIBA Vision

suggesting a "strategic partnership," and specifically proposed Dr.

Miller's work as "an interesting possibility" that QLT and CIBA

Vision should jointly pursue. Believing the use of Dr. Miller's

name would bolster QLT's credibility with CIBA Vision, Dr. Ed Levy

used her name in further marketing materials. And in December of

1993, without Dr. Miller's permission, Dr. Ed Levy sent CIBA Vision

portions of Dr. Miller's research results -– results that QLT had

12
QLT claims that it was not unjustly enriched because material
transfer agreements gave it the right to access Dr. Miller's
research. But those agreements did not give QLT the right to
disclose Dr. Miller's findings, which was an essential step in the
courtship of CIBA Vision. We further note that the jury was
instructed regarding the material transfer agreements, and we
presume that a jury understands and follows a court's instructions.
United States v. Griffin, 524 F.3d 71, 78 (1st Cir. 2008).

-23-
agreed to keep confidential. The information disclosed included

Dr. Miller's findings pegging the optimal irradiance level at 600

mW/cm², which formed the basis for the FDA approved irradiance

level for Visudyne. When CIBA expressed an interest in

collaboration, but requested additional information, QLT promised

to provide it, even though it needed Dr. Miller's permission to

provide such information.

QLT had an incentive to provide additional information.

Although CIBA Vision had expressed an interest in QLT's BPD

product, it was concurrently developing its own compound for eye

treatments. It was therefore unsurprising that Dr. Ed Levy asked

Dr. Miller to present her work directly to CIBA Vision in

Switzerland, and offered to compensate MEEI fairly for its

invention if Dr. Miller made such a presentation. Indeed, Dr. Levy

confirmed his oral promise with written assurances that QLT would

contact MEEI regarding a licensing agreement.

There was further evidence at trial that Dr. Miller's

presentation was a salient consideration in CIBA Vision's decision

to pursue its partnership with QLT. In its Letter of Understanding

with QLT, CIBA Vision wrote that "Dr. J. Miller's (Harvard

University) presentation has impressed and convinced us that

Photodynamic Therapy will be the treatment of Age-related macular

degeneration of the future." CIBA Vision went on to propose a

"joint-development" of Visudyne under the CIBA-umbrella agreement.

-24-
In June 1994, QLT and CIBA executed the Letter of Intent, which

suggested that CIBA's decision to partner with QLT resulted from

the disclosure of MEEI's research. Even after these initial steps

toward collaboration, CIBA Vision pressed QLT for additional

information about MEEI's work. In June 1994, CIBA wrote that it

was "essential that Dr. Miller shares all the information and

statistics with us” (emphasis in original). Moreover, CIBA Vision

explained that it was equally "essential" that Dr. Miller

personally give a demonstration directly to CIBA Vision

representatives. Faced with these requests, QLT again solicited

Dr. Miller's cooperation, and once again promised to license the

technology from MEEI. Dr. Miller obliged by providing additional

confidential information, some of which was not included in

previously published work or in her presentation to an

opthalmological conference. Moreover, the QLT-CIBA Vision

partnership agreement required the disclosure of any of Dr.

Miller's preclinical work not previously disclosed (a disclosure

that would also have required Dr. Miller's assent). In a familiar

pattern, QLT obtained Dr. Miller's cooperation with the promise of

a licensing deal.

Finally, there was evidence at trial suggesting that by

1992-1993, QLT was in serious need of a financial partnership. By

1992, QLT had been in business for nearly ten years, but had failed

-25-
to post a profit. There was also evidence suggesting that QLT

required additional funding for product development.

The evidence was sufficient for the jury to find that

each element of unjust enrichment was satisfied. QLT promised Dr.

Miller that it would pay MEEI fair compensation for the right to

disclose her confidential research. QLT made similar promises to

secure Dr. Miller’s active cooperation at times when such

cooperation was critical to the courting of CIBA Vision. This

evidence supported the jury’s finding that Dr. Miller's efforts

constituted a benefit to QLT (which QLT sought and appreciated).

The jury could rationally infer that, if QLT did not value either

the ability to disclose Dr. Miller's confidential research results

or the credibility that Dr. Miller (and MEEI) gave QLT in its

overtures to CIBA Vision, QLT would not have made so many promises

to pay fair compensation to MEEI. Accordingly, the jury concluded

that QLT obtained a significant benefit from the early disclosure

of Dr. Miller's confidential information and from Dr. Miller's

active involvement in the courtship of CIBA Vision, without which

QLT's collaboration with CIBA Vision may not have borne fruit.

Finally, the evidence permitted a finding that the benefit and

detriment were incurred in a context in which MEEI expected

compensation.

Despite QLT’s arguments to the contrary, we find no legal

impediment to this conclusion. See 41 C.J.S. Implied Contracts §

-26-
9 ("A 'benefit' for purposes of an unjust enrichment claim is any

form of advantage that has a measurable value, including the

advantage of being saved from an expense or loss."); Asigard v.

Bray, 419 N.E.2d 315, 318 (Mass. App. Ct. 1981) (finding the

conferral of a benefit (and ultimately unjust enrichment) where

plaintiff contributed substantially to a venture and, after

inconclusive contract negotiations, defendants used plaintiff's

contributions without compensation); see also Mass. v. Mylan Lab.,

347 F. Supp.2d 314, 323-24 (D. Mass. 2005) (noting that inflation

of average drug wholesale price may constitute benefit where such

inflation resulted in higher payments from other providers).

Moreover, given Dr. Miller's repeated requests for compensation and

QLT’s repeated assurances that it would pay such compensation in

the form of a licensing agreement, we see little reason to disturb

the jury's conclusion that QLT's retention of the benefits it

received would be unjust under the circumstances.

QLT argues that the evidence adduced at trial was legally

insufficient to permit the jury to find any causal relationship

between the disclosure of confidential information and QLT's

eventual Visudyne sales. To support this proposition, QLT

primarily relies on Demoulas v. Demoulas Super Mkts., 667 N.E.2d

159, 196 (Mass. 1997). That case is inapposite.13 Demoulas

13
QLT also suggests that the jury's finding that the disclosure of
confidential MEEI information was a causal factor in the QLT-CIBA
partnership runs afoul of the holding in Hartford Cas. Ins. Co. v.

-27-
involved the usurpation of corporate opportunities, breach of

fiduciary duty, and restitution. The court held as a matter of law

that one who is unjustly enriched due to the diversion of corporate

opportunities and/or the breach of a fiduciary duty is entitled to

a credit for amounts that she personally invests. Id. at 195. The

court explained that

[t]he purpose of this credit is to prevent an
injured plaintiff from receiving more than the
amount by which the defendant has benefitted
from the wrongful transaction. Determining
the amounts to be credited . . . is a factual
issue . . . The burden of proof is on the
defendants to show how much of any entity's
assets are not the direct or indirect results
of the violations of fiduciary duty.

Id. at 196. (citation omitted, emphasis added). Thus, the most

that Demoulas can stand for here is that QLT should have had the

opportunity to prove that its Visudyne profits did not derive

entirely or even partially from the disclosure of MEEI's

confidential information. QLT presented a vigorous defense.

New Hampshire Ins. Co., 628 N.E.2d 14, 20 (Mass. 1994), but this
claim is equally unavailing. In Hartford, the plaintiff urged
rejection of a trial court's finding that there was no evidence
that an insurance company's arguably negligent investigation
resulted in the insurance company's failure to settle a claim,
thereby causing liability for an excess insurer. Id.
In the present case, as described above, there was evidence
that CIBA Vision considered the prompt disclosure of all of Dr.
Miller's research, and indeed her personal participation
"essential." Similarly, there was evidence that QLT was in
relatively difficult financial circumstances. The jury was
entitled from these facts to infer that disclosure of Dr. Miller's
confidential information was a causal factor in the QLT-CIBA
venture.

-28-
During the course of this defense, QLT's position was that its

partnership with CIBA Vision was not dependent on the disclosure of

MEEI's confidential information. QLT further urged that it was

entitled to a Demoulas-type credit through its damages expert. As

we explore in our later discussion of damages, the jury and the

trial court rejected QLT's first argument but partially credited

the second; the jury awarded MEEI only a portion of the damages

that it sought, properly leaving the remainder of the profits for

QLT. Demoulas does not require a contrary result.

QLT's remaining arguments that it was not unjustly

enriched are equally unavailing. First, QLT argues that MEEI was

not entitled to prevail on a theory of unjust enrichment based on

the disclosure of confidential information because the trial court

granted QLT judgment as a matter of law with respect to MEEI's

related trade secrets claim.14 The trial court granted judgment to

QLT on the trade secret claim because (1) MEEI failed to identify

specific trade secrets and prove that QLT's disclosure of such

secrets directly resulted in commercial advantage, (2) MEEI did

not demonstrate that any of its trade secrets were actually

incorporated into Visudyne, and (3) that to the extent any trade

secrets were used in Visudyne or to entice CIBA Vision, Dr. Miller

14
MEEI cross appeals from this order. But in light of our
conclusion that MEEI is entitled to judgment on its unjust
enrichment and Chapter 93A claims, this aspect of MEEI's cross-
appeal is moot.

-29-
voluntarily disclosed them in advance of the launch of Visudyne.

MEEI-III, 495 F. Supp.2d at 211. QLT argues that MEEI's unjust

enrichment claim suffers from the same infirmities, so that to the

extent that it relies on disclosure of confidential information,

the unjust enrichment claim must also fall.15

In rejecting this argument, the trial court relied on

long-standing Massachusetts case law differentiating between an

action for the misappropriation of trade secrets and one for unjust

enrichment based on the improper use of confidential information.

Id. Based on this distinction, the trial court found that although

the evidence was insufficient to support a claim for

misappropriation of trade secrets, the evidence was sufficient to

support a finding of unjust enrichment based on the improper use of

confidential information. Id. ("The misappropriation of trade

secrets claim . . . required MEEI to show that it had taken steps

to keep secret confidential information and that QLT had breached

its duty not to disclose that information . . . . By contrast,

unjust enrichment requires MEEI to show only that QLT used MEEI's

confidential information at MEEI's expense.") (citations omitted).

QLT argues that the trial court drew an impermissible

distinction between these claims. We disagree. In our prior

opinion, as QLT points out, we recognized a limited linkage between

15
We address QLT's argument that the trial court actually excised
this unjust enrichment claim from the case in II. D, infra.

-30-
the trade-secret claim and the confidential information theory of

unjust enrichment. See MEEI-II, 412 F.3d at 238. What QLT

overlooks is that we specifically held that, although MEEI could

not recover separately under each theory, it "should have the

opportunity to prove the distinct elements of its unjust enrichment

and trade secrets claims." Id. at 238 n.13 (emphasis added).

Massachusetts law provides two distinct theories of recovery based

on the improper use of confidential information: misappropriation

of trade secrets and unjust enrichment. Compare Jet Spray Cooler,

Inc. v. Crampton, 282 N.E.2d 921 (Mass. 1972)(requiring proof of

"proper and reasonable" steps to protect secrecy of information and

proof with particularity of trade secrets used by defendants), with

USM Corp. v. Marson Fastener Corp., 393 N.E.2d 895, 903 (Mass.

1979) (noting that confidential business information not rising to

the level of trade secret is nevertheless entitled to protection);

Barry v. Covitch, 124 N.E.2d. 921, 924 (Mass. 1955) (noting that

constructive trust is available to prevent unjust enrichment based

on wrongful use of information confidentially given), and Warsofsky

v. Sherman, 93 N.E.2d 612, 616 (Mass. 1950) (finding information

regarding proposed re-purchase of assets given to bank officer was

confidential information and imposing equitable relief where bank

officer misused such information).16 The fact that in our prior

16
A finding that disclosure of confidential information can be used
to support a claim for unjust enrichment even when such information
does not constitute a trade secret is hardly anomalous. We have

-31-
decision we framed our analysis of a statute of limitations defense

by using a single factual summary for both claims, see MEEI-II, 412

F.3d at 238, obviously does not change this bedrock principle of

Massachusetts law. Thus, the entry of judgment with respect to the

trade secrets claim did not legally compel the same result with

respect to the unjust enrichment claim.

Finally, QLT argues that there was insufficient evidence

to support unjust enrichment based on use of confidential

information because the information at issue was not confidential.

QLT advances this claim by noting (1) the publication of some of

Dr. Miller's work on March 15, 1994, and (2) her subsequent

presentation to an opthalmological conference. There was evidence

that both QLT and CIBA were aware of the imminent public disclosure

of Dr. Miller's work. Despite this knowledge, CIBA felt that

expeditious access to all of Dr. Miller's work (including research

that was scheduled for publication and material that was not slated

for disclosure) was "essential." Similarly, the jury could have

found that QLT saw value in acceding to CIBA's demands for

information while it was still competing with CIBA's internally

developed BPD compound. Based on this and other evidence, the jury

reasonably could have concluded that much of the information shared

previously approved such a result under a different state's law.
See APG, Inc. v. MCI Telecom. Corp., 436 F.3d 294, 307 (1st Cir.
2006) (applying Rhode Island Law)(finding use of confidential
information was not a trade secret as a matter of law, but could be
used to support unjust enrichment claim).

-32-
with CIBA Vision was confidential because it was disclosed before

publication, and that this prompt disclosure was valuable to QLT

despite the imminent publication of many aspects of this research.17

Accordingly the jury could find that QLT was unjustly enriched when

it did not pay any compensation for the disclosure of Dr. Miller's

confidential research and her cooperation in the courtship of CIBA

Vision.

2. Patent Application/Inventorship Dispute

QLT also challenges the jury’s finding of unjust

enrichment based on the patent application theory. QLT’s primary

quarrel with this theory relates to its legal underpinnings. We

considered and rejected most of these arguments in our prior

opinion, and QLT’s new arguments fare no better.

The patent application theory centers on the joinder of

the MEEI-only '473 patent application with the combined '591

application. MEEI claimed that QLT, by promising compensation

commensurate with sole-ownership, induced MEEI's cession of the

'473 application, in which its researchers were the only listed co-

inventors, in favor of the '591 application, which included co-

17
QLT's argument that information disclosed subsequent to the
publication and conference was valueless is a difficult one to
make, in view of the fact that QLT made repeated offers of
compensation to obtain such information. Although those promises
are not enforceable, the very fact that the promises were made is
demonstrative of the value that QLT placed on receiving Dr.
Miller's cooperation in disclosing this additional information.

-33-
inventors from MGH and QLT. At its heart, this claim represents a

straightforward request for compensation for a benefit conferred

and appreciated in a non-gratuitous context. But the benefit at

issue in this case falls near the penumbra of federal patent law.

Consequently, the parties have partially succumbed to the

gravitational pull of patent law and have raised several arguments

that directly implicate patent law. As a consequence, we review at

the outset those issues that we left open in our prior opinion and

which were therefore available for exploration at trial. Doing so

will serve to sharpen our focus on the parties' contentions

deserving closer attention.

We previously noted that although the proper inventorship

of the patent applications at issue is a non-negotiable question of

federal patent law, the question of which application to prosecute

was a choice available to the parties. MEEI-II, 412 F.3d at 232.

Consequently, we explained that if QLT induced MEEI to abandon a

more limited claim (embodied in the '473 application or a similar

MEEI-only application that did not raise prior art issues) in favor

of the broader '591 claim by promising compensation, and then did

not pay such compensation, QLT would be unjustly enriched. Id. at

234 n.7. In reaching this conclusion, we explicitly rejected QLT's

invitation to find that it had not been enriched because MEEI

retained the right to obtain (and in fact did obtain) an MEEI-only

patent in its own name. Id. Rather we emphasized that the proper

-34-
inquiry was whether, as a result of unjust conduct (i.e., making a

promise and then failing to keep it), QLT retained royalties that

it would have had to forgo had it not committed such unjust

conduct.18 Id.

The parties have vigorously disagreed as to how to

interpret our mandate. The trial court found that MEEI had to

prove two key points: (1) the existence of an agreement whereby

MEEI would abandon prosecution of the '473 application in exchange

for fair compensation; and (2) that QLT's failure to honor this

agreement resulted in unjust enrichment. QLT objects to this

framework.

Instead, QLT strenuously argues that our prior decision

and other precedent required MEEI to prove that it specifically

conferred a patent benefit. The authority that QLT advances to

support this proposition is Incase, Inc. v. Timex, Corp., 488 F.3d

46 (1st Cir. 2007). Incase, however, merely held that a party

claiming unjust enrichment in Massachusetts must present evidence

as to the amount of the unjust enrichment. Id. at 54-55.19 We did

18
We note that in our prior decision, we opined that should MEEI
prove such allegations, "the elements of a quasi-contract claim
might be established." Although we used the word "might," without
any explanation, we believe the parties and the trial court had no
choice but to proceed on the assumption that upon proof of the
elements we described, the elements of a quasi contract claim would
be established.
19
We take up the question of valuing any benefit conferred and the
teachings of Incase with respect to this question infra.

-35-
not there state that some benefits were compensable and others were

not. Rather, Incase largely involved consideration of the proof of

the amount of unjust enrichment, without commenting on the nature

of the benefit supporting a claim. Indeed, the fact that a patent

application is the breeding ground of an unjust enrichment claim,

such as the present one, does not require proof of a patent

benefit. See Thompson v. Microsoft, Corp., 471 F.3d 1288, 1291-92

(Fed. Cir. 2006)(finding that state law claim of unjust enrichment

did not present a question of patent law).20 Accordingly, we reject

QLT’s contention that MEEI was required to prove a patent benefit.

QLT's next prong of attack relies on the fact that the

summary judgment posture of our prior decision obliged us to assume

that both the '473 and '591 applications were valid. MEEI-II, 412

F.3d at 233 n.5. QLT argues that after a trial on the merits, this

presumption should fall away. Additionally, QLT argues that the

20
Indeed, another claim that QLT has pressed is the question of
preemption. We disposed of this claim in our prior decision,
holding under the conflict preemption standard, that 35 U.S.C. §
262 permits suits like the present one. MEEI-II, 412 F.3d at 234-
35. We reached this conclusion because we determined that the
preemption exception in § 262 was not limited to written, legally
enforceable contracts. Id. Rather, we concluded that Congress
intended § 262 to reach non-written agreements, and remanded for a
factual determination as to whether such an agreement was present
in the present case. Id. at 235. We note that our holding was
consistent with the Federal Circuit's decision in Thompson. 471
F.3d at 1291-92. The trial court's resolution of this issue was
therefore proper.

-36-
evidence at trial cannot support a conclusion that any MEEI-only

patent was in fact valid.

Even if QLT's position potentially has merit, it is

beside the point. The central thrust of our prior decision was

that it was possible that QLT benefitted from MEEI's assent to the

amendment of the '473 application regardless of the validity of any

MEEI-only application. The trial court found that MEEI had

presented "overwhelming evidence that MEEI agreed to drop

prosecution of the '473 application in exchange for fair

compensation." MEEI-III, 495 F. Supp.2d at 213. The jury and the

trial court credited the evidence that QLT initially softened its

position regarding inventorship and eventually agreed to compensate

MEEI for its consent to broaden the patent application. See id. at

214. We see no reason to disturb these findings.

Moreover, QLT misses the legal significance of these

findings. MEEI's cooperation in the patent application provided an

important benefit at a vital time. Without MEEI's consent to the

broadened '591 application, QLT would have faced significant

challenges regarding its ownership of essential rights at a time

when its relationship with CIBA was in its nascent stages.21 Had

21
In arguing that MEEI's confidential information did not
substantially assist it in its courtship of CIBA, one of QLT's
arguments was that the relationship had not been finalized until
later. To our minds, for the reasons described supra, the
confidential information was an important element in the courtship.
But QLT's concession only substantiates an inference that
demonstrating control over its intellectual property portfolio was

-37-
MEEI declined to consent to the co-mingling of claims 7 and 14 of

the '591 application, QLT and/or MGH would have had to engage in

elaborate and lengthy proceedings to establish their co-

inventorship rights, if in fact they had rights that could be

vindicated. To challenge inventorship without MEEI's consent, QLT

would have had to file its own, separate patent application

covering the same claims, which would result in the Patent and

Trademark Office declaring and adjudicating an interference

proceeding, or issuing a separate patent. See Sagoma Plastics,

Inc. v. Gelardi, 366 F. Supp.2d 185, 188 & n.1 (D. Me. 2005)(noting

that 35 U.S.C. § 116 permits the Patent and Trademark Office to

correct inventorship in a patent application only with the consent

of all parties)(citing 37 C.F.R. § 1.48); 35 U.S.C. § 256

(permitting the Patent and Trademark Office to correct inventorship

of an issued patent with the consent of all parties); 35 U.S.C. §

135 (describing interference proceedings). Had QLT provoked an

interference, as the junior applicant, it would have borne the

burden of proving that its claimed inventors met the standard of

inventorship (or its earlier invention of the patent) by a

preponderance of the evidence. See Environ Products, Inc. v.

Furon, Co., 215 F.3d 1261, 1265 (Fed. Cir. 2000).

an important requirement in finalizing QLT's relationship with
CIBA.

-38-
 Alternatively, QLT could have waited until MEEI's patent

issued, and pursued a legal challenge against the patent in an

infringement suit, or pursuant to 35 U.S.C. § 256, which permits

the courts to hear actions for correction of inventorship. See,

e.g., Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1356 n.1,

(Fed. Cir. 2004) (noting that § 256 creates a cause of action to

correct inventorship). But if QLT had proceeded along this path,

it would have faced the decidedly difficult challenge of proving

non-joinder of inventors by clear and convincing evidence. Id. at

1364-65 (citing Hess v. Advanced Cardiovascular Sys., Inc., 106

F.3d 976, 980 (Fed. Cir. 1997)).

Thus, MEEI's joinder of its claims into a single patent

application spared QLT what would have, or at least could have,

otherwise been an arduous task of seeking the joinder of its

favored inventors. This was a cognizable benefit, and we see no

reason why QLT should be able to avoid paying compensation for this

benefit. In fact, even QLT recognized that this was a valuable

benefit. QLT's patent attorney advised QLT that MEEI could

"unilaterally file a divisional application [from the joint '591

application] based on the parent or (CIP) containing claims to

neovasculature and naming MEEI inventors." A finder of fact could

conclude that this was undoubtedly one more reason that QLT

postponed discussion of licensing and avoided "getting into a

pissing match" with Dr. Miller.

-39-
 Moreover, given the fact that QLT's relationship with

CIBA Vision was in its nascent stages and the fact that Visudyne's

potential in the marketplace was subject to great uncertainty, the

patent application benefit could likely support a substantial

valuation. In fact, the jury and the trial court appear to have

credited QLT's promises to compensate MEEI as though it was the

sole inventor of the claims at issue. In light of the foregoing,

we believe QLT may have used more business sense in making this

offer than the trial court has suggested. See MEEI-III, 495 F.

Supp.2d at 214. Ultimately, however, the wisdom of QLT's promises

is also beside the point; there was sufficient evidence that

MEEI's cooperation in the patent application process constituted a

detriment to MEEI and conferred a benefit on QLT in a non-

gratuitous context. In light of QLT's vast profits and repeated

promises, it would be manifestly unjust to permit QLT to retain

such benefits.

Against this backdrop, QLT's remaining challenges to the

finding of a patent benefit are easily dismissed. Since QLT

received a benefit immediately upon the broadening of the patent

application, we need not analyze the impact of MEEI's later patent

application or its conferral of any patent benefits during the

trial. Similarly, since QLT had already benefitted from the

broadening of the patent application, we need not join the parties'

vigorous debate as to whether QLT actually received freedom from a

-40-
blocking patent.22 The only matter remaining in the unjust

enrichment claim is the propriety of the damage award.

B. Unjust Enrichment Damages

The parties agree that a royalty rate based on the net

sales of Visudyne is the appropriate measure of QLT's unjust

enrichment. MEEI-III, 495 F. Supp.2d at 216. Unfortunately, the

parties agree on little else. Consequently, we return to the

basics of unjust enrichment.

In this case, the appropriate measure of damages should

be an approximation of the value of the benefit MEEI conferred on

QLT. Such an approach is in harmony with our prior decision, see

MEEI-II, 412 F.3d at 234, and Massachusetts case law, see J.A.

Sullivan Corp. v. Massachusetts, 494 N.E.2d 374, 379 (Mass. 1986);

see also Fox v. F & J Gattozzi Corp., 672 N.E.2d 547, 552 (Mass.

App. Ct. 1996)(quoting Restatement of Restitution § 1 (1937)).

When a defendant has received a benefit that is significantly

greater than the plaintiff's loss and justice so requires, "the

defendant may be under a duty to give the plaintiff the amount by

22
At trial and in its briefs to this court, QLT made much of the
fact that MEEI retained its right to pursue a patent infringement
claim based on the '303 patent. Although MEEI did retain this
patent right, it does not follow that QLT realized a benefit only
after MEEI ceded those rights at the district court's urging. The
mid-trial cession of patent rights ensured that MEEI would not
enjoy a double recovery. But MEEI did in fact confer a patent-
related benefit on QLT in 1994-95, and has every right to recover
for the full value of that benefit.

-41-
which he has been enriched." Restatement of Restitution § 1 cmt.

e. The passage of time has not dulled this conception; the

tentative draft of the Restatement (Third) of Restitution advocates

the same result: a party's recovery based on an indefinite

agreement is "measured solely by the value of the claimant's

performance to the defendant." Restatement (Third) of Restitution

and Unjust Enrichment § 31 cmt. h (T.D. No. 3, 2004).

QLT argues that MEEI failed to prove such damages and

consequently QLT should be entitled to a judgment. QLT primarily

relies on Incase to support this position. 488 F.3d at 54-55. In

Incase, the plaintiff claimed that the defendant was unjustly

enriched when it commissioned the plaintiff to design watch

displays with removable flags (for which plaintiff did not charge

separately) on the understanding that the defendant would then

purchase the design from plaintiff. The defendant instead

contracted with a foreign firm to produce plaintiff's design. Id.

at 55. To prove unjust enrichment, the plaintiff introduced

evidence of the amount of profits it would have earned had the

defendant purchased the designed product from plaintiff. Id.

Giving credit to this evidence, the jury awarded damages in that

amount.

On appeal, we reviewed Massachusetts case law on the

measure of unjust enrichment damages -- a body of law that is

equally applicable to the present case. We begin with the basic

-42-
proposition that the determination of the value of the benefit

conferred on the defendant is a question of fact. Id. at 54

(quoting Guenard v. Burke, 443 N.E.2d 892, 896 (Mass. 1983)).

Moreover, Massachusetts has made clear that a jury's unjust

enrichment award "need not be susceptible of calculation with

mathematical exactness, provided there is a sufficient foundation

for a rational conclusion." Lowrie v. Castle, 113 N.E. 206, 210

(Mass. 1916); see also Kitner v. CTW Transp., Inc., 762 N.E.2d 867,

873 (Mass. App. Ct. 2002). In a case where the jury cannot

estimate the value of a benefit from common knowledge, the

plaintiff must present evidence of the reasonable value of the

benefit in order to receive anything more than nominal damages.

Incase, 488 F.3d at 54 (citing Hurwitz v. Parkway Country Club,

Inc., 180 N.E.2d 94, 97 (Mass. 1962)). Finally, we note here, as

we did in Incase, that unjust enrichment damages "may not be based

only upon [the plaintiff's] lost profits." Id. at 46 (citing J.A.

Sullivan Corp., 494 N.E.2d at 379). After reviewing this case law,

in Incase, we found the plaintiff's sole reliance on evidence of

his own lost profits insufficient to sustain a claim for unjust

enrichment damages. Id. at 55 ("Instead of presenting evidence of

the value of its labor and materials and other costs . . . or of

the value of the benefit conferred to Timex . . . Incase presented

evidence only of the profit it would have had.").

-43-
 Withal, it is important to note the questions left open

in Incase. We made clear that a plaintiff may not recover her own

lost profits through an unjust enrichment claim, but we did not

determine whether unjust enrichment doctrine could force the

defendant to disgorge any profit it made as the result of unjust or

wrongful conduct. Thus, Incase could not recover its 6.9 cent per

unit profit margin in an unjust enrichment action. Id. at 54-55.

But we did not decide whether Incase could have forced Timex to

disgorge the profits Timex earned as the result of its actions.

Indeed, we could not have reached such a conclusion because Incase

failed to provide evidence of the value of any benefit to Timex,

much less the extent to which Timex profited as the result of its

unjust conduct.

Courts that have considered the issue have permitted

disgorgement of the malefactor's profits as a remedy for unjust

enrichment in patent disputes. See, e.g., Univ. of Colo. Found.,

Inc. v. Am. Cyanamid Co., 342 F.3d 1298, 1311-13 (Fed. Cir. 2003)

(applying Colorado law).23 Although Massachusetts courts have not

squarely considered the availability of profit disgorgement in an

unjust enrichment action, we think it likely that they would

approve of a disgorgement remedy in the present unjust enrichment

23
Professor Laycock, the reporter for the aborted Restatement
(Second) of Restitution, has identified a trend among courts to
permit disgorgement of profits in unjust enrichment cases. See
Douglas Laycock, The Scope and Significance of Restitution, 67 Tex.
L. Rev. 1277, 1288-89 (1989).

-44-
context. See Demoulas, 677 N.E.2d at 196 (noting that disgorgement

is necessary to prevent unjust enrichment in breach of fiduciary

duty context).

With this case law in mind, we evaluate the jury’s damage

award. The jury heard all of the evidence supporting the conferral

of both the confidential information and the patent application

benefits. In addition, each side presented damages experts to help

the jury understand how to express the benefits conferred as an

ongoing royalty. MEEI's expert provided important background

evidence showing reasonable royalties in the pharmaceutical

industry, and further described other QLT and Novartis licenses to

give the jury a background as to the outer limits of a license that

MEEI could have negotiated from QLT.24 In addition, MEEI's damages

expert testified that a reasonable royalty could be as high as

13.5%, which would constitute approximately 50% of QLT's net

profits from the sale of Visudyne. In reaching this conclusion,

the expert explained that he discounted QLT's royalty agreement

with MGH because it had a "most favored nation" clause and because

he understood MEEI to have conferred a larger benefit to QLT than

MGH.25

24
MEEI's damages expert noted that QLT had negotiated licenses with
royalty rates of as high as 15-22% of net sales, and that CIBA had
negotiated licenses with royalties as high as 25% of net sales.
25
The latter assumption is amply supported in the record: QLT's
patent attorney herself wrote that "[a]lthough the MGH inventors
are properly included, one could argue that the contributions to

-45-
 QLT also presented evidence from its own damages expert.

QLT's expert attempted to discredit the surveys upon which MEEI's

expert relied. Similarly, QLT's expert opined that a fair royalty

to MEEI could not exceed the royalty paid for the use of BPD, which

was 2%. Furthermore, QLT's expert posited that the jury should

consider the fact that Dr. Julia Levy was a co-inventor and had the

right to practice the invention independently. QLT's expert

therefore believed that QLT did not have to pay any royalties, and

in these circumstances, the 0.5% royalty offered to MGH constituted

a royalty that was not only fair, but munificent.

From this competing testimony, the jury had enough

information to establish an approximate valuation of the benefit

MEEI conferred on QLT. The damages experts ensured that the jury

engaged in an effort to determine a reasonable approximation of the

value of the benefits MEEI conferred on QLT. It is true that

MEEI's expert referred to QLT's profits from the sale of Visudyne,

but this was in no way inconsistent with our holding in Incase.

After all, QLT's profits served as a reasonable approximation of

the value of the benefit conferred at a particularly critical time

in the life cycle of a nascent biotechnology company with a product

(BPD) in search of an application. We further note –- as the

parties agreed at trial –- that royalty rates based on sales are

the invention are uneven. I actually think that is true." She
then proposed offering MEEI a higher royalty rate than MGH.

-46-
the preferred method to express the value conferred in the

pharmaceutical context.26 Given these considerations, we cannot

conclude that the damages evidence was insufficient as a matter of

law to permit a reasonable approximation of the value of the

benefit conferred on QLT.

Nor do we fault the amount of the award. The jury

grappled with highly complex, voluminous evidence and reached a

reasonable conclusion. It rejected MEEI's out-sized valuation of

its own contributions to Visudyne, while simultaneously rejecting

QLT's cramped view. The trial court agreed, noting that it would

have awarded a slightly higher royalty rate, but also noting its

belief that the jury's rate was within the realm of reasonability.

MEEI-III, 495 F. Supp.2d at 217-18. We see no reason to disturb

the jury's findings.

QLT raises a number of other challenges to the damage

award, which we now address. First, QLT argues that the scope of

the royalty should have been limited to the U.S. and Canada. But

because we have concluded that MEEI proved its unjust enrichment

26
The fair market value of a requested benefit is a well accepted
measure of unjust enrichment. See, e.g., Dines v. Liberty Mut.
Ins. Co., 448 N.E.2d 1268, 1271 (Mass. App. Ct. 1990) (citing 1
Corbin, Contracts § 19A at 53 (Supp. 1989); Hill v. Waxberg, 237
F.3d 936, 939-40 (9th Cir. 1956)); Restatement (Third) of
Restitution and Unjust Enrichment, § 31 cmt. h (Tentative Draft 3,
2004) ("Where the parties' contract does not directly fix the rate
of compensation recovery under this Section follows the familiar
rule by which a requested performance is ordinarily deemed to yield
a benefit to the defendant equivalent to its market value.").

-47-
claim under a confidential information theory, QLT's objections

lack force. Similarly, because we have determined that there was

sufficient evidence that QLT acquired benefits as early as the

spring of 1994, QLT's complaints about the timing of the accrual of

the obligation to pay also lack force.

C. The Chapter 93A Claim

Having found that MEEI properly proved unjust enrichment,

we turn to the question of liability under the Massachusetts unfair

and deceptive trade practices statute. A covered party is liable

under this statute if it engages in any "unfair or deceptive act or

practice." Mass. Gen. Laws. c. 93A §§ 2, 11. To prove such a

claim, it is neither necessary nor sufficient that a particular act

or practice violate common or statutory law. Kattar v. Demoulas,

739 N.E.2d 246, 257 (Mass. 2000)(to violate Chapter 93A, acts

needn't violate common law or statutory law); see also Renovators

Supply Inc. v. Sovereign Bank, 892 N.E.2d 777, 787 (Mass. App. Ct.

2008) (common law wrong does not automatically amount to a

violation of Chapter 93A). Because "[t]here is no limit to human

inventiveness in this field," Massachusetts courts evaluate unfair

and deceptive trade practice claims based on the circumstances of

each case. Kattar, 739 N.E.2d at 257 (citations omitted). In so

doing, Massachusetts leaves the determination of what constitutes

an unfair trade practice to the finder of fact, subject to the

court's performance of a legal gate-keeping function. Milliken &

-48-
Co. v. Duro Textiles, LLC, 887 N.E.2d 244, 259 (Mass. 2008). As is

true in other jurisdictions, Massachusetts courts, in considering

whether a particular act or practice violates the unfairness prong

of Chapter 93A: "look to (1) whether the practice . . . is within

at least the penumbra of some common-law, statutory or other

established concept of unfairness; (2) whether it is immoral,

unethical, oppressive, or unscrupulous; [and] (3) whether it causes

substantial injury to consumers (or competitors or other

businessmen)." MEEI-II, 412 F.3d at 243 (quoting PMP Assocs., Inc.

v. Globe Newspaper Co., 312 N.E.2d 915, 917 (Mass. 1975)).

Against this backdrop, we briefly review the relevant

facts. QLT drew from MEEI all of its bargaining leverage in the

form of, inter alia, its confidential information and its

cooperation in the patent application. Having obtained all of

MEEI's chips, QLT refused to tender compensation commensurate with

its prior representations. These MEEI concessions were invaluable

to QLT because they were made at a time when QLT was actively

courting CIBA, and CIBA placed a high value on them.

We already have described the manifest unfairness of

QLT's actions in great detail, and there is no need to replough

that ground. Suffice it to say that under the circumstances, QLT's

initial position that it did not have to pay a royalty to MEEI was

obviously unfair and unscrupulous (or, at least, a reasonable fact

finder could so conclude). After all, QLT was able to take such a

-49-
position only because MEEI agreed to join the '591 application. It

is worth noting that QLT's own patent attorney asserted that QLT's

initial royalty payment figures were unfair. We agree with the

trial court that the combination of extracting highly valuable

leverage (in a misleading manner) and then avoiding payment in

accordance with prior promises was unscrupulous and dishonest.

Thus, not only was QLT's conduct within the penumbra of common-law

unjust enrichment, but it was also oppressive and unfair within the

meaning of Chapter 93A. Consequently, the facts found by the jury

and the trial court state a claim for relief that is cognizable

under the statute.

Neverthless, QLT asserts that the imposition of Chapter

93A liability is unwarranted, contending that Massachusetts courts

have held that Chapter 93A does not regulate, and therefore cannot

punish, most instances of incomplete or imperfect contract

negotiations. See, e.g., Lambert v. Fleet Nat’l Bank, 865 N.E.2d

1091, 1098 (Mass. 2007).27 Consequently, QLT argues that "[e]very

deal that goes sour does not give rise to a c. 93A claim." Id.

(quoting Pappas Indus. Parks, Inc. v. Psarros, 511 N.E.2d 621, 623

(Mass. App. Ct. 1987).

27
The Lambert court concluded that the Chapter 93A claim at issue
in that case was barred on limitations grounds. Lambert, 865
N.E.2d at 1097. The remainder of the opinion therefore is not
essential to the holding, and although we consider it, we note that
it is not binding.

-50-
 Other Massachusetts cases, however, recognize a need to

police negotiations -– even those among relatively sophisticated

parties –- to ensure that they are not unfair or deceptive.

Indeed, the court in Lambert reaffirmed Greenstein v. Flately,

which held that "stringing along" a counterparty to induce

detrimental reliance can constitute a Chapter 93A violation.

Lambert, 865 N.E.2d at 1098 (citing Greenstein v. Flately, 474

N.E.2d 1130, 1133 (Mass App. Ct. 1985)). It is a legitimate point

of inquiry whether the present case more closely resembles those

cases in which Massachusetts courts would leave the parties to the

rough and tumble of the marketplace, or whether the present dispute

carries the indicia of detrimental reliance that would lead

Massachusetts courts to invoke Chapter 93A.

In Lambert, the court found that the imposition of

Chapter 93A liability was inappropriate when a bank failed to renew

a loan, despite ambiguous oral assurances that the bank would "roll

over" the loan in due course. Id. at 1094-95. In declining to

ascribe liability, the court emphasized the ephemeral, non-specific

nature of a bank officer's isolated promise of "cooperation" in the

roll-over of a delinquent loan of over $500,000 in exchange for the

plaintiff's forbearance of a (potentially dubious) claim worth

approximately $28,000. Id. at 1097 & n.9. By contrast, here, QLT

made repeated promises of fair compensation, and even specified

that it intended to compensate MEEI as if it were the sole inventor

-51-
on claims 7 and 14. Moreover, unlike the bank in Lambert, QLT

extracted considerable value in exchange for its promises to MEEI.28

This case is more like Greenstein. In that case, the

plaintiff submitted a signed, written lease agreement to the

defendant, and in reliance on repeated assurances that only a

bureaucratic formality remained for their agreement to take effect,

they terminated their own lease and made arrangements to customize

their space. Greenstein, 474 N.E.2d at 1132, 1134. But when the

defendant landlord had the opportunity to strike a more

advantageous bargain with different tenants, he did so, leaving the

plaintiff without space on short notice. Id. at 1132. Despite the

sophistication of the plaintiff (an accounting firm), the court

found the case cognizable under Chapter 93A. In at least one

pertinent way, QLT's conduct was more egregious than that of the

Greenstein defendant: here, without the benefits it extracted from

MEEI, QLT either would not have had a successful product, or would

have had to expend considerably greater sweat and treasure to bring

Visudyne to market. Consequently, we conclude that the imposition

of Chapter 93A liability in the present case fits comfortably

28
The present case is significantly more egregious than Parks, Inc.
v. Psarros, 511 N.E.2d 621 (Mass App. Ct. 1987), another case cited
by QLT. In Parks, the court found no breach of contract and no 93A
liability where the parties had expressed a general intent to
engage in a tax-free trade of land. Id. at 622. Furthermore, in
Parks, the plaintiff had not in fact taken material steps in
reliance of a supposed agreement. Id. at 623. This is far removed
from the case at hand.

-52-
within the Greenstein framework.

Having determined that Chapter 93A liability properly

attaches to the present case, we address two questions regarding

the scope of such liability. First, QLT argues that Chapter 93A

cannot support liability for foreign royalties. In making this

argument, QLT asserts that in its Chapter 93A discussion, the

district court relied solely on the patent negotiations. We do not

agree with either the argument or the assertion. The trial court

explicitly mentioned Dr. Miller's presentation to CIBA as an

example of MEEI's powerful bargaining position. MEEI-III, 495 F.

Supp.2d at 215. Thus, for the reasons described above, the

confidential information theory of unjust enrichment supports

Chapter 93A liability. It follows that the trial court correctly

concluded that this liability was global in scope.29

At this point, we pause to consider MEEI's cross-appeal

challenge to the jury's finding that QLT's Chapter 93A violation

was not knowing and willful (and, therefore, that MEEI was not

entitled to punitive damages). Although the jury found that QLT's

conduct violated the norms of even aggressive negotiation, its

rejection of punitive damages was nevertheless supportable.

Massachusetts courts have not precisely defined what

29
The parties also trade jousts as to whether a 1998 patent
licensing proposal precludes the award of worldwide Chapter 93A
damages. But the 1998 licensing proposal was not accepted; thus it
could not preclude the possibility of foreign royalties.

-53-
constitutes a knowing and willful violation of Chapter 93A. But

such violations usually embody outrageous conduct, often involving

(1) coercion or extortion, or (2) fraud or similar forms of

misrepresentations. See, e.g., Incase, 488 F.3d at 58 (citing

cases). On this standard, we cannot say that an award of punitive

damages was required in the present case. Given the fact that QLT

agreed to negotiate and eventually offered MEEI a running royalty,

a reasonable fact finder might think that QLT's conduct, though

unscrupulous, did not sink to the level of a knowing and willful

violation.

D. QLT's Objections to the Conduct of the Trial

We turn now to the next group of QLT's objections, all of

which claim prejudicial error in the conduct of the trial. We

evaluate each in turn.

First, QLT asserts procedural defects in the misuse of

confidential information theory of unjust enrichment. QLT argues

that it was under the impression that the trial court disposed of

this theory at the close of MEEI's evidence when it granted

judgment as a matter of law to QLT, pursuant to Rule 50(a), with

respect to MEEI's misappropriation of trade secrets claim, only to

find the theory revived in the trial court's post-trial opinion.

-54-
Consequently, QLT argues that it was precluded from presenting

evidence relating to this theory, warranting a new trial.

In its ruling on QLT's post-trial Rule 50(b) motion, the

trial court, relying on our previous ruling, noted that

Massachusetts law treats unjust enrichment through the misuse of

confidential information differently from claims of

misappropriation of trade secrets. MEEI-III, 495 F. Supp.2d at

210-11. Therefore, the trial court explained that it always

understood that its grant of judgment as a matter of law on the

trade secrets claim left the confidential information claim

undisturbed.

We agree with the trial court's assessment of events, and

conclude that the court's Rule 50(a) ruling was clear enough to put

QLT on notice that the confidential information claim was not

dismissed. We begin with the basic principle that the purpose of

a Rule 50 motion to dispose of claims or issues, not legal

theories. See Hammong v. T.J. Little & Co., 82 F.3d 1166, 1172

(1st Cir. 1996). This basic norm should have put QLT on notice

that in conformity with the general principle, the trial court's

Rule 50(a) decision on one legal claim did nothing to disturb

separate legal claims that relied on similar evidence. In the

present case, the trial court made clear that it was granting

judgment with respect to the trade secrets claim. And after

explaining its four separate and independent rationales for doing

-55-
so, the trial court immediately noted that the Chapter 93A claim

"insofar as it depends upon an alleged misappropriation of trade

secret[s] fails."

This statement is instructive because it demonstrates

that, in addition to excising the trade secret claim from the case,

the trial court was willing and able to limit the manner in which

the parties could pursue other claims. The trial court's failure

similarly to limit the unjust enrichment claim should have put QLT

on notice that this claim survived. In addition, the fact that

MEEI requested a jury instruction regarding confidential

information enhanced QLT's notice. Finally, the fact that QLT

requested instructions limiting MEEI's theory of unjust enrichment

to the patent benefit theory suggests that QLT was aware that the

confidential information theory remained alive and well.

In these circumstances, we cannot credit QLT's ipse dixit

that it was precluded from offering evidence regarding confidential

information.

QLT next argues that the trial court erroneously failed

to admit a document that purportedly corroborates MGH researchers

conceived of using photodynamic therapy to treat before MEEI

researchers did. We review a trial court's decision to exclude

evidence under an abuse of discretion standard. Livick v. Gillette

Co., 524 F.3d 24, 28 (1st Cir. 2008); Hoffman v. Applicators Sales

& Serv., Inc., 439 F.3d 9, 13 (1st Cir. 2006).

-56-
 The document at issue was one about which an MGH witness

testified and which did not rely on BPD, the photodynamic agent

found in Visudyne. This document was only marginally relevant, if

relevant at all, especially since we already have determined that

establishing the precise inventorship of each claim of the ‘591

application was not necessary to MEEI's patent benefit theory of

unjust enrichment. QLT was not prejudiced by the exclusion of the

document, and there was no abuse of discretion in its exclusion.

Finally, QLT raises a number of challenges relating to

the jury instructions. An error in jury instructions warrants

reversal only if the error is determined to have been prejudicial

based on a review of the record as a whole. Davet v. Maccarone,

973 F.2d 22, 26 (1st Cir. 1992); Connors v. McNulty, 697 F.2d 18,

21 (1st Cir. 1983).

First, QLT asseverates that the instructions allowed the

jury impermissibly to rely on the theory that QLT had to pay more

for use of MEEI's confidential research than contract-specified

amounts. The record in the case belies QLT's characterization. At

QLT's request, the trial court specifically instructed the jury

that any unjust enrichment had to be found "outside of whatever

contracts MEEI had or Dr. Miller or Dr. Gragoudas personally had."

The trial court further noted that all such contracts "have been

performed. [MEEI, Miller and Gragoudas] did what they were

supposed to do; QLT did what it was supposed to do. This is not a

-57-
contract case." We believe that the trial court explained the law

as well as can be expected. Davet, 973 F.2d at 22 (citing Brown v.

Trustees of Boston Univ., 891 F.2d 337, 353 (1st Cir. 1989)).

Therefore, we find no error in this instruction, which was directly

responsive to QLT's concerns.

Next, QLT challenges the trial court's unjust enrichment

instruction.30 Specifically, QLT maintains that the trial court's

general unjust enrichment instruction was overly broad and

therefore created a risk that the jury would find unjust enrichment

based on theories other than the two theories actually submitted.

It appears in large part that QLT's concerns were that the jury

would reward MEEI for its general contribution to Visudyne.

Even if we assume arguendo that QLT properly preserved

these objections and that they might have some merit, they are

unavailing. It is true that in civil cases, "a new trial is

usually warranted if evidence is insufficient with respect to any

one of multiple claims covered by a general verdict." Gillespie v.

Sears, Roebuck & Co., 386 F.3d 21, 29 (1st Cir. 2004) (quoting

Kerkhof v. MCI Worldcom, Inc., 282 F.3d 44, 52 (1st Cir. 2002)).

Moreover, this rule applies not only to general verdicts

encompassing multiple causes of action, but also to special

30
The trial court instructed that MEEI had to prove that it
"conferred an uncompensated benefit on QLT in circumstances where
both parties, MEEI and QLT, expected that there would be
compensation."

-58-
verdicts where a verdict question encompasses multiple theories,

one of which is defective. Id. at 29-30 (citing Lattimore v.

Polaroid Corp., 99 F.3d 456, 468 (1st Cir. 1996)). Nevertheless,

this approach is by no means rigid. On the contrary, we have

consistently recognized that a jury is "likely to prefer a better

supported theory to one less supported," and consequently, we apply

a generous harmless error analysis in order to determine whether it

is reasonably likely that the jury in fact relied on a theory with

adequate evidentiary support. Gillespie, 386 F.3d at 30 (citing

Davis v. Rennie, 264 F.3d 86, 106 (1st Cir. 2001)). The litmus

test of such a harmless error review is whether the appellant was

"unjustly prejudiced." Davis, 264 F.3d at 106 (quoting Asbil v.

Hous. Auth. of Choctaw Nation, 726 F.2d 1499, 1504 (10th Cir.

1984)).

In this case the jury was presented with substantial

evidence regarding both of the theories of unjust enrichment that

we specifically approved in our prior decision. Moreover, QLT does

not (and cannot) contend that the trial court's charge regarding

unjust enrichment was legally incorrect. See MEEI-II, 412 F.3d at

234 n.7. Where, as here, the jury heard a legally adequate

instruction, which was supported by competent evidence, we will not

assume jury confusion or verdict taint. See Davis, 264 F.3d at 109

(discussing analogous situation in which general verdict was based

on two different claims rather than similar theories supporting the

-59-
same legal claim). Because it is highly likely that the jury

grounded its unjust enrichment award on either or both of the two

submitted theories, we conclude that QLT was not unfairly

prejudiced.

We need go no further. We have considered the parties'

remaining arguments and find them unavailing. After a careful

review, we find no error in the conduct of the trial that was

sufficiently prejudicial -- if it was error at all -- to warrant

either reversal or a new trial.

E. Attorneys' Fee

As a coda to this protracted struggle, the parties have

asked us to review the fee award.31 Here, in what was otherwise a

harmonious opinion, we find a discordant note in the trial court's

decision.

The trial court awarded MEEI attorneys' fee and costs

totaling $14,093,855.42. MEEI-III, 495 F. Supp.2d at 218. MEEI

31
Where there has been a transgression of Chapter 93A, "the
petitioner shall . . . be awarded reasonable attorneys' fee and
costs incurred in such action." See Peckham v. Continental Cas.
Ins. Co., 895 F.2d 830, 841 (1st Cir. 1990) (citing Mass. Gen. Laws
ch. 93A, § 11). Neither party challenges the propriety of the
attorneys' fee award; the quarrel is entirely over the amount of
the award.

-60-
did not specifically request this amount, nor is it evident that

this amount was the result of some mathematical reduction requested

by QLT.

In announcing its fee award, the trial court noted that

MEEI submitted an application for more than $36,000,000 in fees and

costs.32 Id. The trial court next listed a number of relevant

factors derived from Linthicum v. Archambault, 398 N.E.2d 482

(Mass. 1979), abrogated on other grounds by Knapp Shoes, Inc. v.

Sylvania Shoe M'fg. Corp., 640 N.E.2d 1101 (Mass. 1994). After

reciting these factors, the trial court summarily announced its

award. In so doing, the court provided no explanation of its

evaluation of this case under the Linthicum factors.33 Following

a painstaking review of the record, we are unable to determine how

the trial court arrived at its award.

We normally uphold attorneys' fee awards unless they

constitute an abuse of discretion. French v. Corporate

32
The trial court made no mention that MEEI arrived at this princely
sum based on the contingency fee arrangement that MEEI had
concluded with its attorneys, rather than the customary calculation
of attorneys' fees based on hours productively worked multiplied by
appropriate hourly rates.
33
The Linthicum court identified a number of factors that a court
should consider in arriving at a fee award, including: "the nature
of the case and the issues presented, the time and labor required,
the amount of damages involved, the result obtained, the
experience, reputation and ability of the attorney, the usual price
charged for similar services by other attorneys in the same area,
and the amount of awards in similar cases." Linthicum, 398 N.E.2d
at 488.

-61-
Receivables, Inc., 489 F.3d 402, 403 (1st Cir. 2007). In order to

evaluate the trial court's exercise of its discretion, however, we

must have some basis for understanding its reasoning. See

Peckham, 895 F.2d at 842 ("Appellate review of fee awards

ordinarily requires that concrete findings be made and that the

court below supply a clear explanation of the reasons undergirding

a particular fee award."). In other words, to evaluate a fee

award, we must have some "indication" of the court's "thought

processes and how he structured the award." Id. Cf. United States

v. One Star Class Sloop Sailboat ("Flash II"), 546 F.3d 26, 42 (1st

Cir. 2008)(explaining in context of federal fee-shifting statute

that district court's attorneys' fee findings need not be "precise

to the point of pedantry" and "need not be infinitely precise,

deluged with details, or even fully articulated") (quoting Foley v.

City of Lowell, 948 F.2d 10, 20 (1st Cir. 1991)) (additional

citations omitted). Thus, for us to evaluate the trial court's fee

award, we must, at a minimum, have insight, typically in the form

of guidance from the trial court itself, that permits divination of

the basis for the award. In the present case, the trial court has

provided neither codex nor oracle to allow us to understand the

award.

Therefore, we have no principled choice but to vacate the

fee award and remand this case to the trial court so that it can

reconsider the issue, fix an amount (whether the same or different

-62-
than its original award) and provide a record supporting its

decision.

In ordering this remand, we are mindful of the need to

prevent ancillary fee litigation from transforming into the tail

that wags the dog. See Flash II, 546 F.3d at 42 (citing City of

Burlington v. Dague, 505 U.S. 557, 566 (1992)). Nevertheless, it

would be helpful for the trial court to consider and resolve (to

the extent necessary) what we see as the parties' three primary

contentions with respect to fees: (1) whether MEEI is entitled to

any enhancement of its fees as a result of its contingency fee

arrangement, see Fontaine v. Ebtec Corp., 613 N.E.2d 881, 890-91

(Mass. 1993); Siegel v. Berkshire Life Ins. Co., 835 N.E.2d 288,

294 (Mass. App. Ct. 2005); (2) what portion (if any) of the fees

from related patent litigation MEEI is entitled to recover in the

present case; and (3) whether any portion of the fees that MEEI

claims to have incurred in the present case should be excluded as

unsuccessful, unproductive and/or insufficiently related to the

Chapter 93A claim. In highlighting these open questions, we

intimate no view as to how they should be answered, nor do we

suggest that they are the only open questions. We do note however,

that resolution of these issues is committed, in the first

instance, to the sound discretion of the trial court. We stress

that nothing in our opinion should be construed as undermining the

-63-
trial court's "extremely broad" discretion to set fee awards. See

French, 489 F.3d at 403.

III. Conclusion

For the reasons described above, the district court

judgment as to liability and damages is affirmed in all respects.

The attorneys’ fee award is vacated and remanded for further

proceedings consistent with this opinion. Two-thirds costs on

appeal are awarded to MEEI.

So Ordered.

-64-