Claim construction order vacated in connection with settlement retains "nonbinding persuasive value"

A vacated claim construction order "may be used for whatever authority this court or another court may deem appropriate" and has "the same nonbinding persuasive value any non-vacated opinion has in a case where no final judgment is ever entered."

Cisco Systems, Inc. v. Telcordia Technologies, Inc., 9-06-cv-00160 (TXED November 7, 2008, Order)

"Mere doubt" does not trigger patent attorney's duty to investigate truthfulness of patent application

"A patent attorney has no duty to investigate the circumstances of the patent application when he does not have notice of the likely existence of material information. That is, the attorney must know of specific information, the materiality of which may be ascertained with reasonable inquiry, before he has a duty to inquire. . . . Mere doubt in the attorney’s mind raised by the circumstances does not appear to be sufficient; rather, the counsel must know of specific information that must be disclosed."

DESA IP, LLC v. EML Technologies LLC, 3-04-cv-00160 (TNMD November 6, 2008, Memorandum)

Declaratory judgment plaintiff cannot create substantial controversy via covert telephone calls with non-decision-making employees

"[A] potential infringer should not be able to create subject matter jurisdiction [for a declaratory relief claim] sub rosa (in this case, by initiating telephone conversations to employees of the patentee who were not in decision-making positions and who were not informed of the real purpose behind the conversations)."

Innovative Therapies Inc. v. Kinetic Concepts Inc., 1-07-cv-00589 (DED November 5, 2008, Memorandum Order)

Failure of plaintiff's expert to opine as to infringement of certain accused products rendered the case exceptional as to those products

"[W]hen [plaintiff's] own expert declined to state that the twenty products contained phase change materials that would infringe the [patent-in-suit], [plaintiff's] claims against those products ceased to be colorable, and it was vexatious for [plaintiff] not to withdraw the infringement claims then as to those products."

Baychar Inc. v. Salomon / North America, Inc., 1-04-cv-00136 (MED November 4, 2008, Decision and Order)

Jury called on to calculate ongoing royalty

"Without minimizing the importance of intellectual property rights, it seems that if we can submit death penalty cases to juries, we should also be able to trust them to determine a royalty rate that will be paid by a corporation if it chooses to make sales of an infringing product."

Cummins-Allison Corp v. Shinwoo Information & Telecomm. Co., Ltd., 9-07-cv-00196 (TXED November 3, 2008, Order)

Production of defense counsel's "non-discoverable work product" ordered as a sanction for "poor judgment" in interviewing plaintiff's former Canadian

Defense counsel was ordered to produce interview notes of meetings with plaintiff's former Canadian attorney as a sanction for "the poor judgment exercised by [defendant's] attorneys in eliciting [the information reflected in the notes]." "It was [defense] counsel’s duty not to solicit, either directly or indirectly, privileged information from [plaintiffs' former counsel] . . . " Thus, although the notes were "properly classified as non-discoverable work product," production of the notes was "warranted as a sanction" because of "the conduct of [defendant's] counsel in dealing with [the plaintiff's] former-now-adverse attorney."

Mass Engineered Design, Inc., v. Ergotron, Inc., 2-06-cv-00272 (TXED October 31, 2008, Memorandum and Opinion and Order)

Damages accrued during plaintiff's delay, even if easily avoided, do not qualify as economic prejudice for laches defense

"[Defendant] . . . argues . . . that "[plaintiff] should not be allowed to wait silently while $5.3 million in alleged damages accrue where [defendant], upon notice of infringement, quickly and easily changed to a non-infringing [device]. . . . The accrued liability from the infringement is not economic prejudice for purposes of [a] laches defense."

The GSI Group Inc v. Sukup Manufacturing Co., 3-05-cv-03011 (ILCD October 29, 2008, Opinion).