Glenayre Elecs., Inc. v. Jackson, No. 02 C 0256, 2007 WL 2492105 (N.D. Ill. Aug. 30, 2007) (Leinenweber, J.).

Judge Leinenweber denied a motion for an injunction against declaratory judgment defendant Jackson (“Jackson”) making arguments in a related malpractice case against Jackson’s prior counsel Niro Scavone (“Niro”). In the original case, the jury returned a verdict for Jackson finding direct infringement and awarding him $12.1M. Jackson accepted a remittitur of $2.65M which the Court ruled prevented Jackson from pursuing further indirect infringement claims against declaratory judgment plaintiff Glenayre Electronics (“Glenayre”). Jackson appealed the issue to the Federal Circuit which upheld the Court’s decision. Jackson then sued his Niro in Illinois state court for, among other things, malpractice. Niro brought the instant motion in this case seeking to prevent Jackson from taking any position that contradicts the principle that the $2.65M remittitur represented all possible damages in the case. Because Niro had already moved the state court to prevent the arguments at issue, the Court had to determine whether the relitigation exception applied to allow the Court to reconsider the decision rendered by the state court. The Court held that the exception did not apply for two reasons. First, Counsel showed no “equitable entitlement” to the relitigation exception. Counsel may still appeal the state court decision through the state appellate system. And the costs of litigation are not a sufficient equitable consideration. Second, the characterization of the Court’s ruling was incorrect. The Court held only that once he accepted the remittitur, Jackson was not entitled to any further damages for the infringement. The Court did not hold that Jackson had never been entitled to more than the $2.65M remittitur.