No Double Recover for Patent and Trademark Damges for the Same Infringing Product

Aero v. Intex and Wal-Mart (Fed. Cir. 2006) the Federal Circuit affirmed the judgment that a patent on the valve for an air mattress was not invalid and was infringed, and that the trademark was infringed, but reversed the damage award for both patent and trademark damages.
SIGNIFICANCE: The owner of a patent and a trademark both of which are infringed by the same product, may not be able to recover on both properties.
BRIEF: The words of a claim "‘are generally given their ordinary and customary meaning.’" The ordinary and customary meaning of a claim term is "the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." The claims themselves provide "substantial" guidance as to the meaning of claim terms. The claims must be read in light of the specification, the "‘single best guide to the meaning of a disputed term.’" A court should also consider the patent’s prosecution history, the prosecution history "can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be."
The Federal Circuit reiterated the test of indefiniteness: If a claim is not amenable to construction, the claim is invalid as indefinite under 35 U.S.C. § 112, ¶ 2. If a claim is amenable to construction, "even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree," the claim is not indefinite. The Federal Circuit went above and beyond to salvage the "less-than-perfect" wording of the claim. The claim recited "a
a one-way valve . . . providing a substantially hermetic seal" with structures that upon inflation "provide a complete hermetic seal when the valve is in the closed position". To construe "complete heremetic seal" to mean complete, where the claim also said the seal was a "substantially hermetic seal" would render the term substanially "illusory". The Federal Circuit contrived an explanation of how its construction did not similarly render "complete" illusory.
Regarding the duplication of damages, the Federal Circuit said that Aero was fully compensated for defendants’ patent infringement when it was awarded a reasonable royalty for patent infringement based on sales of the infringing mattresses. It could not also be awarded defendants’ profits for trademark infringement based on the same sales of the same accused devices. To the extent that the Federal Circuit was saying that the reasonable royalty for the product should be deducted from profits before the award, this make sense. The award for patent infringement exceeded the defendant's profits, there were no profits left to award. Had plaintiff sought damages based on something other than the profits from the infringement, it might have been able to recover for the infringement of its trademark. However the Federal Circuits appears to be applying a broader preclusion: that when the claims arise out of the same set of operative facts there may be only one recovery.
COMMENT: What would be the result if the patent and the trademark were owned by two different parties?
CANON: A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so. Thus a construction that makes one of the claim terms illusory is not correct.