Damages: Jury's Award of Both Patent And Trademark Damages Was Impermissible Double Recovery

Aero v. Intex and Wal-Mart (Fed. Cir. 2006)

Aero has patented an air mattress inflation control system that it advertises using the registered mark “ONE TOUCH.”  A jury found that Intex (and Wal-Mart) were infringing both the patent and the trademark. The judge awarded $5.80 million for willful patent infringement ($2.95 in compensation, doubled for willfulness) and $1 million for the trademark infringement.

On appeal, the CAFC looked at the damage award and found some double-counting.

This case presents the question of whether Aero’s recovery of both patent and trademark infringement damages represents an impermissible double recovery.

Under Federal Circuit, double recovery for the “same injury” is inappropriate.

At trial, Aero had used similar evidence of Intex sales to show damages for both the patent and trademark claims. Because Aero did not show any other harm to its trademark apart from the sales of the patented product, the CAFC found that the injury was identical, and thus cancelled the trademark recovery.

The case is remanded to the district court for entry of judgment in Aero’s favor in the principal amount of $5.9 million. [Still enough for a good night’s sleep]

Comments

[Fred Stezney]

I guess it's like stabbing someone and then punching them in the face. It's all the same injury to the body and since the doctors put it all on one bill and that's what you can recover.

[Scott R.]

On the other hand, if someone converted two separate items of personal property, you would want to recover damages for both. So why not get damages for both the trademark and the patent? Or do your property rights in a trademark count for nothing when your patent has been infringed?

[Randy the 1L]

I admit that as a 1L I'm new to this "remedy" concept, but it seems to be that there are three distinct ways Intex could have infringed. They could conceivably have (1) infringed the patent and not infringed the trademark; (2)infringed the trademark but not the patent; or, (3) infringed both.

Why should the proper remedy be for only one of the two infringing acts? It seems unjust from a policy standpoint to allow Intex to get away with the "free punch to the face" as in Fred's example. This would seem to have the unwanted effect of encouraging someone knowingly infringing a patent to just go right ahead and market it under the patent holder's brand, too.

[S.Athma]

i believe that the appellate court was right in directing the lower court to revive its order as the suit itself was for damages and as the court cannot award the damage in excess of the damage suffered by the party eventhough the party had suffered under two different head.

[Aara]

It depends on how "same injury" is defined as. The objectives behind protecting rights under patents and trademarks are different. Isn't then injuries suffered are different too?

[Earl Baugher]

Isn't this really an evidence holding, not an IP holding?

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