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February 10, 1982


The opinion of the court was delivered by: Bua, District Judge.


Presently before the court is defendant's motion for summary judgment dismissing Count II of plaintiff's action. An introduction of sorts is necessary before the merits of defendant's motion can be addressed.

This lawsuit represents the most recent stage of a dispute between the named parties that has been in the process of litigation since 1976. Although the cause now before the court is an action separate from the initial lawsuit, the present suit is intimately related to the former, and therefore, the history of the earlier action must be related here. The background of that case, which appeared twice before the district court, and twice before the Seventh Circuit Court of Appeals, is summarized below. Much of the following is borrowed from the appellate court's second decision, Roberts v. Sears, Roebuck & Co., 617 F.2d 460 (7th Cir. 1980) ("Roberts II").

The plaintiff inventor sued the defendant retail store chain*fn1 for breach of confidential relation, fraud, and negligent misrepresentation in the context of an agreement entered into by the parties assigning to the defendant patent rights held by the plaintiff in the plaintiff's invention of a quick release socket wrench. The plaintiff prayed for rescission of the agreement, an injunction against further use by the defendant, imposition of a constructive trust upon the defendant, an equitable accounting by the defendant and "such further equitable relief as may be appropriate."*fn2 Included among those equitable prayers was a plea "that damages be awarded to plaintiff."

By the time of trial, the issues tried to the jury had been limited to three separate claims: breach of a confidential relation, fraudulent misrepresentations and negligent misrepresentations. The court, in part, instructed the jury as follows in regard to money damages:

The court further instructed the jury that "as a matter of law, any damages you may award under each claim will not be cumulative, and the plaintiff will not be permitted to collect damages under more than one claim." Separate verdict forms were supplied for each of the claims. The jury found for the plaintiff on all three claims and awarded damages of $1,000,000 on each. The total amount of the verdict was represented by that figure. The judgment has been satisfied.

In a post-trial motion, the plaintiff sought equitable rescission and restitution. The district court held that when the plaintiff permitted the case to go to the jury he had elected his legal remedy under Illinois law and could not later also seek equitable relief. Plaintiff appealed, seeking the right to full equitable relief over and beyond the one million dollar legal relief. The defendant cross appealed to set aside the money judgment against it.

In Roberts v. Sears, Roebuck & Co., 573 F.2d 976 (7th Cir. 1978), cert. denied, 439 U.S. 860, 99 S.Ct. 179, 58 L.Ed.2d 168 (1978) ("Roberts I"), the Seventh Circuit affirmed the district court's judgment against defendant on all three claims in plaintiff's complaint and the court's decision not to alter plaintiff's monetary award, but reversed the court's determination that it lacked the power to award rescission and remanded to the district court for a determination of whether rescission was appropriate under the facts of the case.

Subsequent to the Seventh Circuit's decision in Roberts I, the case went through the trial court and a second round in the Seventh Circuit, ultimately resulting in reassignment of the patent rights to the plaintiff. In order to "avoid if possible any future misunderstanding" the appellate court detailed the implementation of its second order as follows:

  [T]he effect of these two assignments will be that
  defendant owned all of the patent rights from June
  15, 1965 to January 20, 1977, and the plaintiff
  shall be considered the owner from January 20,
  1977 on.

617 F.2d at 465.

In its holding in Roberts II, the Seventh Circuit also expressed, in strong language, its opinion on the subject of reconsideration on remand (or presumably in an additional lawsuit) of the damage award in the initial trial. The Court stated:

  "In our prior opinion, we repeatedly referred to
  the `return of plaintiff's patent' and when we
  used the word rescission, we used it in the
  context of returning the plaintiff's patent. We
  did not say that the plaintiff could under any
  theory upon remand be entitled to restitution or
  additional damages or profits. In fact we
  expressly said that the plaintiff did
  elect his remedy as to past damages or
  profits up to the jury verdict and that return of

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