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00-2049 Nilssen v. Motorola, Inc.

By: dmc-admin//July 2, 2001//

00-2049 Nilssen v. Motorola, Inc.

By: dmc-admin//July 2, 2001//

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“By splitting the patent and trade-secret theories into two suits, the district court … directed the eventual appeals to two different courts. If things remain as they are, we will hear the state-law theories, and the Federal Circuit the patent theories. This would be bad enough if it required two appellate courts to master the intricacies of electronic ballasts, the Nilssen-Motorola negotiations, and the differences between the Nilssen and Stevens proposals for ballast design. The joint appendix in this appeal exceeds 4,000 pages, the record is very much longer, and we do not doubt that the patent appeal to the Federal Circuit will sacrifice additional reams of paper. Squandering judicial resources by requiring six appellate judges (at least two panels of two circuits) to master this material should be avoided. Moreover, as the district judge himself recognized when dismissing the suit (at least, the state-law fragment that the judge had created), Nilssen has only one ‘claim for relief.’ He does not have a patent claim based on one set of events and a trade secret claim based on different events. There is only one series of negotiations, disclosures, and product-design decisions. Nilssen contends that what Motorola did violates several statutes and common-law doctrines, but there is only one nucleus of operative facts, and thus only one ‘claim.’ See NAACP v. American Family Mutual Insurance Co., 978 F.2d 287, 291-92 (7th Cir. 1992). That is why the state-law theories came within the supplemental jurisdiction, which depends on such a tight link among state and federal theories that they form part of a single controversy. 28 U.S.C. sec. 1367(a). It makes no sense to send patent-law theories to the Federal Circuit and state-law theories to the regional circuit, when only one ‘claim’ is involved, and one circuit’s decision may have preclusive effect on issues within the scope of the other’s jurisdiction.”

Vacated and remanded.

Appeal from the United States District Court for the Northern District of Illinois, Shadur, J., Easterbrook, J.

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