## Facts

- Humetrix, a U.S. health-care consulting and technology company led by Dr. Bettina Experton, sought to deliver Smart Card-based portable patient data solutions to the U.S. market.
- Humetrix pursued the project with Gemplus S.C.A., a French Smart Card manufacturer, and alleged Gemplus made two enforceable oral commitments to support Humetrix’s U.S. efforts.
- Humetrix raised financing, expanded sales efforts, and developed customers, including securing contracts with two California counties for an immunization-record Smart Card product marketed as “Vaccicard.”
- Gemplus’s cooperation later stopped after (1) a dispute surfaced concerning Humetrix’s U.S. “Vaccicard” trademark registration and Inovaction’s French “Vaccicarte/Vaccicard” trademarks, and (2) Gemplus acquired a U.S. subsidiary capable of performing functions contemplated in the relationship.
- As county performance deadlines approached, Gemplus allegedly ceased communications and support, and Humetrix cancelled its county contracts and claimed substantial lost profits.
- Humetrix sued Gemplus for breach of contract and breach of fiduciary duty, sued a Gemplus manager (Guistini) for intentional interference, and sought declaratory relief against Inovaction regarding U.S. ownership and priority of the “Vaccicard” mark.
- A jury awarded Humetrix $15 million in lost profits, and the district court entered declaratory judgment that Humetrix owned the “Vaccicard” trademark in the United States.

## Issues

1. Whether substantial evidence supported the jury’s findings that Humetrix and Gemplus formed and breached two enforceable oral agreements independent of a written agency agreement.
2. Whether equitable estoppel could bar Gemplus’s statute-of-frauds defense and, if so, whether it limited Humetrix to reliance damages rather than lost profits.
3. Whether the district court abused its discretion in admitting Humetrix’s lost-profits expert testimony and excluding evidence that Humetrix could have used an alternative Smart Card supplier.
4. Whether the $15 million damages verdict was unsupported, excessive, or the result of improper jury motives.
5. Whether Humetrix’s trademark application satisfied Lanham Act procedural requirements such that its filing date established priority over Inovaction’s competing U.S. application.

## Decision

- The Ninth Circuit affirmed the judgment for Humetrix and Dr. Experton.
- The court held that substantial evidence supported the jury’s findings that two oral agreements existed between Humetrix and Gemplus and that Gemplus breached them.
- The court held the written agency agreement did not foreclose the oral-contract claims because Gemplus was not a party to that writing.
- The court held equitable estoppel barred Gemplus from invoking the statute of frauds and did not preclude recovery of lost profits otherwise proved under ordinary contract standards.
- The court found no abuse of discretion in admitting Humetrix’s lost-profits expert testimony and no abuse of discretion in excluding alternative-supplier evidence as overly speculative and potentially confusing.
- The court upheld the $15 million verdict as supported by substantial evidence and not the product of passion or prejudice.
- The court affirmed declaratory relief that Humetrix had U.S. priority and ownership in the “Vaccicard” mark because its application satisfied the amended Lanham Act’s procedural requirements and secured the controlling filing date.

## Legal Principles

- Oral contracts may be found and enforced when the record supports mutual assent and obligations, even where related written agreements exist, particularly when the defendant is not a party to the writing invoked to negate oral commitments.
- Equitable estoppel may prevent a party from asserting the statute of frauds after inducing reliance; once the defense is barred, the contract is enforced under ordinary remedies, including expectancy damages such as lost profits when proved with reasonable certainty.
- Expert lost-profits testimony is admissible when it rests on sufficient data and methodology; attacks on weaknesses generally go to weight and are for cross-examination rather than exclusion.
- Trial courts have broad discretion to exclude mitigation or alternative-transaction evidence when its probative value is low and it would invite speculation or confusion.
- Under the Lanham Act, trademark application priority can turn on which applicant satisfied procedural requirements first, because a compliant filing date confers priority over later-filed competing applications, notwithstanding foreign trademark holdings.

## Conclusion

The Ninth Circuit affirmed a jury verdict awarding Humetrix $15 million in lost profits for Gemplus’s breach of two oral agreements, rejected statute-of-frauds defenses via equitable estoppel without restricting damages to reliance, upheld key evidentiary rulings on expert proof and mitigation, and confirmed Humetrix’s U.S. trademark priority in “Vaccicard” based on its procedurally valid filing date under the Lanham Act.


Humetrix, Inc. v. Gemplus S.C.A., 268 F.3d 910 (9th Cir. 2001)