Error: Bad annotation destination
 United States Court of Appeals for the Federal Circuit

                                         05-1283


                       AERO PRODUCTS INTERNATIONAL, INC.
                             and ROBERT B. CHAFFEE,

                                                        Plaintiffs-Appellees,

                                             v.


                         INTEX RECREATION CORP.,
              QUALITY TRADING, INC., and WAL-MART STORES, INC.,

                                                        Defendants-Appellants.



        Michael P. Chu, Brinks Hofer Gilson & Lione, of Chicago, Illinois, argued for
plaintiffs-appellees. With him on the brief were William H. Frankel, Meredith Martin
Addy, Mark H. Remus, and David H. Bluestone.

       Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of
Washington, DC, argued for defendants-appellants. With him on the brief were Kara F.
Stoll and Edward J. Naidich.

Appealed from: United States District Court for the Northern District of Illinois

Judge John W. Darrah
    United States Court of Appeals for the Federal Circuit


                                         05-1283

                      AERO PRODUCTS INTERNATIONAL, INC.
                            and ROBERT B. CHAFFEE,

                                                        Plaintiffs-Appellees,


                                             v.


                         INTEX RECREATION CORP.,
              QUALITY TRADING, INC., and WAL-MART STORES, INC.,

                                                        Defendants-Appellants.


                            __________________________

                            DECIDED: October 2, 2006
                            __________________________


Before RADER, SCHALL, and DYK, Circuit Judges.

Opinion for the court filed by Circuit Judge SCHALL. Concurring opinion filed by Circuit
Judge DYK.

SCHALL, Circuit Judge.


       Aero Products International, Inc. (“Aero Products”) and Robert B. Chaffee

(collectively “Aero”) sued Intex Recreation Corp. (“Intex”), Quality Trading, Inc. (“Quality

Trading”), and Wal-Mart Stores, Inc. (“Wal-Mart”) (collectively “defendants”) in the

United States District Court for the Northern District of Illinois for infringement of U.S.

Patent No. 5,367,726 (“the ’726 patent”) and for infringement of Aero’s registered

trademark “ONE TOUCH.” Following a jury trial, the district court entered judgment of
infringement and non-invalidity in favor of Aero with respect to the asserted claims of

the ’726 patent and with respect to Aero’s trademark claim. Based upon that judgment,

the court awarded Aero damages in the total amount of $6.9 million. See Aero Prods.

Int’l, Inc. v. Intex Rec. Corp., No. 02 C 2590, 2004 U.S. Dist. LEXIS 25941 (N.D. Ill. Dec.

15, 2004) (“Order Denying New Damages Trial”). The total damages award was based

on the jury’s finding that Aero was entitled to recover $2.95 million as patent

infringement damages, which the district court doubled based upon the jury’s finding of

willful infringement, Aero Prods. Int’l, Inc. v. Intex Rec. Corp., No. 02 C 2590, 2004 U.S.

Dist. LEXIS 13453, at *13 (N.D. Ill. July 15, 2004) (“Order Awarding Enhanced

Damages”), and $1 million as trademark infringement damages. See Order Denying

New Damages Trial, 2004 U.S. Dist. LEXIS 25941, at *2-3. In addition, the district court

entered a permanent injunction in favor of Aero. Aero Prods. Int’l, Inc. v. Intex Rec.

Corp., No. 02 C 2590, 2004 U.S. Dist. LEXIS 28131 (N.D. Ill. Sept. 15, 2004); Aero

Prods. Int’l, Inc. v. Intex Rec. Corp., No. 02 C 2590, 2004 U.S. Dist. LEXIS 18648 (N.D.

Ill. Sept. 15, 2004).

       Defendants now appeal from the court’s judgment.             We see no error in the

judgment of infringement and non-invalidity in favor of Aero. We do conclude, however,

that, in the circumstances of this case, the award of both patent infringement and

trademark infringement damages in favor of Aero represents an impermissible double

recovery. Accordingly, we vacate the award of $1 million in trademark infringement

damages in favor of Aero. We thus affirm-in-part, vacate-in-part, and remand to the

district court for entry of a final judgment in favor of Aero consistent with this opinion.




05-1283                                       2
                                         BACKGROUND

                                                 I.

       The invention claimed in the ’726 patent “relates to inflatable support systems,

which may include air mattresses, and inflation and control thereof.”1 ’726 patent col.1,

ll.14-16. The aspect of the invention that is the focus of this appeal is the claimed valve

assembly. It is by means of the valve assembly that the air mattress is inflated and

remains inflated. Id., col.3, l.68, to col.4, l.2.

       Figure 3 of the ’726 patent shows a cross-section of the valve assembly.




Id., fig. 3.   Describing the operation of the valve assembly shown in Figure 3, the

specification states that “[i]nflation is provided to the mattress 10 by means of the

inflation input 322 having exterior threads 321 . . . .” Id., col.3, l.68, to col.4, l.2. The

specification further states that “[a]ir pressure at the inflation input 322 causes the

downward displacement of diaphragm 34 away from its valve seat 36, thereby

permitting air flow through the first cylinder 32 via the triangular passageways 37.” Id.,

col.4, ll.8-12.     After the mattress has been inflated to the desired extent “and air

pressure is removed from inflation input 322, the pressure of air in the mattress 10



       1
                  For simplicity, we refer to the invention as being directed to inflatable air
mattresses.


05-1283                                          3
urges the diaphragm 34 against valve seat 36 and produces a positive seal against the

exit of air from the mattress.” Id., col.4, ll.14-18. Thus, the valve assembly is described

as “dual,” id., col.3, l.65, because it (i) controls the flow of air into the mattress and (ii)

operates to keep air in the mattress once the mattress is inflated.

       Figure 15 of the ’726 patent shows a cross-section of an alternative embodiment

of the valve assembly. Id., fig.15. It includes a coupling labeled 1541 and an inflation

input labeled 1542.




Id., fig.15 & col.9, ll.34-35. The specification states that, in this embodiment, “[a] circular

coupling 1541 includes an open end that constitutes the inflation input 1542. It also has

a flared end that provides the valve seat 1543 in the form of a circular lip.” Id., col.9,

ll.34-37. The specification further states that “[i]t can be seen that the diaphragm [1544]

can be accessed by an individual directly from the inflation input 1542 and can be

pushed axially into an open position.” Id., col.9, ll.41-43. Figure 17 below shows a top

view of the embodiment in Figure 15, with the cover assembly in a closed position. Id.,

fig.17. The figure shows an inflation input labeled 1542:



05-1283                                       4
Id., fig.17. The specification explains that, as shown in Figure 17, “the inflation input

1542 may be provided with a bayonette mount or other means for affixing an inflation

device.” Id., col.9, ll.52-55.

       Five claims of the ’726 patent are at issue: claim 9 and claims 12 through 15.

Claims 9 and 12 are independent claims. Independent claim 9 states:

       An inflatable support system, comprising:
               an inflatable body having an interior, an exterior, and inflation input
       for transfer of air between the interior and exterior; and
               a one-way valve, disposed between the interior and the inflation
       input, for controlling the transfer of air, providing a substantially hermetic
       seal under low pressure conditions, such valve including:
               a passageway having a general circular cross section and a first
       end in communication with the interior and a second end in
       communication with the inflation input;
               a circular lip, disposed peripherally in the passageway and
       protruding radially inward, having a first surface generally facing the
       interior, defining a valve seat;
               a flexible circular diaphragm, having an interior surface generally
       facing the interior and an outer surface facing away from the interior
       mounted for axial movement in the passageway away from and against
       the valve seat in respectively open and closed positions of the valve, so
       that an outer annular region of the outer surface of the diaphragm
       engages against the valve seat in the closed position; and
               a generally circular coupling defining the passageway, the coupling
       having an open end defining the inflation input and a flared end,


05-1283                                      5
       contiguous therewith, providing the circular lip, so that the (i) the coupling
       at the open end has a smaller internal diameter than at the flared end and
       (ii) the diaphragm can be pushed axially to open the valve by reaching into
       the open end of the coupling.

Id., col.10, l.47, to col.11, l.11. Independent claim 12 of the ’726 patent states:

       An inflatable body comprising:
               an inflatable bladder having an interior and an inflation input;
               a one-way valve disposed between the interior and the inflation
       input providing a substantially hermetic seal under low pressure
       conditions, such valve including:
               a passageway having a generally circular cross section and a first
       end in communication with the interior and a second end in
       communication with the inflation input;
               a circular lip, disposed peripherally in the passageway and
       protruding radially inward, having a first surface generally facing the
       interior, defining a valve seat;
               a flexible circular diaphragm, having an inner surface generally
       facing the interior and an outer surface facing away from the interior,
       mounted for axial movement in the passageway away from and against
       the valve seat in the respectively open and closed positions of the valve,
       so that (i) the act of inflation of the bladder under low pressure is sufficient
       to cause axial motion of the valve into the open position to permit the large
       influx of air and (ii) following inflation of the bladder, air pressure created in
       the interior [of] the bladder by inflation thereof causes an outer annular
       region of the outer surface of the diaphragm to be urged into engagement
       against the valve seat to provide a complete hermetic seal when the valve
       is in the closed position; and
               stiffening means for reducing flexing of the diaphragm except in its
       outer annular region.

Id., col.11, ll.27-59. Dependent claims 13-15 depend on independent claim 12. Id.,

col.12, ll.1-9.

                                              II.

       Aero Products sells inflatable air mattresses. In 1991, Mr. Chaffee licensed his

technology to Aero Products. The ’726 patent number is marked on the mattress Aero

Products sells, as well as on the product packaging, related documentation in the form

of “sell sheets,” and instructions. To help market its products, Aero Products coined the




05-1283                                        6
term “ONE TOUCH.” Aero first used “ONE TOUCH” in November of 1991. It registered

the trademark with the United States Patent and Trademark Office in June of 1994.

U.S. Trademark Reg. No. 1,839,444. The mark “ONE TOUCH” appears on commercial

embodiments of the invention of the ’726 patent.

         Intex also sells inflatable air mattresses.   Intex introduced its accused air

mattresses in 2000 and sold them to retailers such as Quality Trading and Wal-Mart,

who in turn sold them to the public. Intex used the term “One Touch” on its website,

and “One Touch” was also used on Quality Trading’s website.

                                            III.

                                            A.

         On April 10, 2002, Aero sued defendants.       Aero claimed that the Intex air

mattress infringed the ’726 patent and that Wal-Mart and Quality Trading sold the

infringing air mattresses.   It also claimed that defendants infringed Aero Products’s

trademark “ONE TOUCH.” After Aero filed suit, Intex sought an opinion of counsel

regarding    infringement.     Mr.   Rod   Berman, the opining attorney, issued a

noninfringement opinion on August 22, 2002.

         As far as the alleged patent infringement was concerned, the dispute between

the parties focused on whether Intex’s air mattress met the limitations of claims 9 and

12 of the ’726 patent relating to the inflation and sealing of the claimed mattress. The

part of the accused device that relates to inflation of the Intex mattress is depicted

below:




05-1283                                      7
                                                                           Pump




                                                                   Cylinder
 Exterior of mattress
                                                                Valve
              Lip
                                                                “Short inner cylinder”
 Interior of mattress
                                                                Diaphragm

The relevant parts of the accused device are (1) the pump, (2) the cylinder, (3) the

exterior of the mattress, (4) the interior of the mattress, (5) the valve, (6) the “short inner

cylinder,” and (7) the diaphragm. In the accused device, air enters the valve through

the pump, which is on the exterior of the mattress.

       On November 3, 2003, a Markman hearing was held on the disputed meanings

of “inflation input” in claim 92 and “complete hermetic seal” in claim 12. Aero Prods. Int’l,

Inc. v. Intex Rec. Corp., No. 02 C 2590, 2004 U.S. Dist. LEXIS 1202 (N.D. Ill. Jan. 27,

2004) (“Markman Order”). Aero argued that “inflation input” meant the point at which air

enters the passageway.       According to Aero, as used in claims 9 and 12, the term

“passageway” refers to “a way that allows a passage of air to and from the interior of the

bed.” Defendants’ position was that “inflation input” should be construed as “the end of

the coupling or passageway most distal from the interior” of the air mattress.              In




       2
              The term “inflation input” appears in both claims 9 and 12. However, for
Markman purposes, the district court focused on it in the setting of claim 9. Neither
party suggests the term has one meaning in claim 9 but a different meaning in claim 12.


05-1283                                       8
advancing this construction, defendants argued that, as used in claims 9 and 12, the

term “passageway” refers to “a path that runs along the entire length of the coupling.”

       Aero argued that the “complete hermetic seal” in claim 12 of the ’726 patent is “a

seal that does not require any additional parts to retain ‘nearly’ or ‘largely’ all of the air in

the bed such that the bed maintains its desired firmness for the expected duration of

use.” Defendants argued that the term “complete hermetic seal” should be construed to

mean “a seal that is ‘impervious to air.’” Defendants reasoned that because the parties

agreed that a “substantially hermetic seal” is “nearly or largely impervious to air,” then a

“complete hermetic seal” would be “impervious to air.”

       On January 27, 2004, the district court rendered its claim construction.               Id.

Agreeing with Aero’s construction of the term “passageway,” the court interpreted the

term “inflation input” in claim 9 to refer to “where air enters the passageway.” Id. at *12,

17. The court reasoned that based on the text of claim 9, the inflation input must be

placed where the open end exists. Id. at *11. The district court interpreted the term

“complete hermetic seal” in claim 12 to mean “a seal that does not require any

additional parts to retain nearly or largely all of the air in the bed.” Id. at *18. The

district court reasoned that there was only one “seal” used in claim 12: “[t]hat seal

cannot be substantially hermetic, or allowing some air to leak through, while at the same

time being complete, or allowing no air to leak through. This construction would be

absurd and would render the construction of the term substantially hermetic seal

illusory.” Id. at *16.

       On February 18, 2004, the district court presided over a jury trial on the issues of

patent and trademark infringement, patent validity, and patent and trademark damages.




05-1283                                        9
At trial, Aero sought reasonable royalty damages of $3.4 million for infringement of the

’726 patent based on sales of the accused Intex air mattresses.           For the alleged

infringement of the “ONE TOUCH” trademark, Aero sought to recover damages in the

amount of $2.2 million, asserting that this figure represented Intex’s profits based on

sales of the accused Intex air mattresses.

       On February 25, 2004, the jury found Intex liable for willful infringement of claim 9

and claims 12 through 15 of the ’726 patent and Intex and Quality Trading liable for

trademark infringement of the “ONE TOUCH” trademark. The jury found that claim 9

and claims 12 through 15 of the ’726 patent were not invalid and awarded Aero $2.95

million for patent infringement damages and $1 million as disgorgement of Intex’s and

Quality Trading’s profits for trademark infringement damages.3

       The district court then considered Aero’s motion for enhanced patent damages

and attorney fees.    The court reviewed the details of defendants’ infringement and

alleged litigation misconduct and doubled the patent damages pursuant to 35 U.S.C.

§ 284. Order Awarding Enhanced Damages, 2004 U.S. Dist. LEXIS 13453, at *14. The

district court also found that the case was exceptional pursuant to 35 U.S.C. § 285 and

ordered Intex to pay Aero’s attorney fees. Id. at *13-14. The court based its decision to

enhance damages and to award attorney fees on its findings that the case was not

close, that Intex copied Aero’s commercial embodiment, that Intex did not rely in good

faith on the opinion of counsel noted above, that Intex misbehaved during discovery and

at trial, and that Intex concealed its misconduct. Id. at *5-13. Thus, the district court

       3
               Although the record is not entirely clear, it appears that Wal-Mart was held
liable for patent infringement but was not held liable for trademark infringement. In any
event, Wal-Mart was not dismissed from the case and is subject to the permanent
injunction.


05-1283                                      10
added $2.95 million in enhanced damages and awarded attorney’s fees, resulting in a

total award in favor of Aero of $6.9 million. See id. at *14.

       The district court also found that claim 12 of the ’726 patent was not invalid by

reason of indefiniteness. Aero Prods. Int’l, Inc. v. Intex Rec. Corp., No. 02 C 2590,

2004 U.S. Dist. LEXIS 12894 (N.D. Ill. July 7, 2004) (“Indefiniteness Opinion”). Prior to

trial, the court granted Aero’s motion in limine to exclude argument and evidence from

the jury relating to indefiniteness.      After trial, on March 11, 2004, Aero moved for

judgment that claim 9 and claims 12 through 15 of the ’726 patent were not indefinite.

Defendants responded that the use of both “substantially hermetic seal” and “complete

hermetic seal” in claim 12 rendered the claim indefinite because the terms were

ambiguous and inconsistent.         Aero countered that the requirement of both a

“substantially hermetic seal” and a “complete hermetic seal” did not render the claim

indefinite, as the second description of the seal addressed the mechanical

completeness of the seal as opposed to the quality of the seal. The court noted that

“the issue of whether Defendants’ defense of indefiniteness applies is a question of law

reserved for the Court’s determination.” Id. at *2. The court pointed to the testimony of

Dr. Albert Karvelis, Aero’s technical expert. Id. at *7. Dr. Karvelis testified that the

terms “substantially hermetic seal” and “complete hermetic seal” would be

understandable to a person of ordinary skill in the art.        Id.   In view of its claim

construction noted above, the court concluded that “complete hermetic seal” did not

contradict “substantially hermetic seal” and thus rejected defendants’ argument that

claim 12 was indefinite. Id. at *10-11.




05-1283                                       11
       Defendants also moved for judgment as a matter of law (“jmol”), for remittitur,

and for a new trial on damages. See Order Denying New Damages Trial, 2004 U.S.

Dist. LEXIS 25941. Defendants argued that Aero had improperly recovered double

damages because the exact same devices were accused of both trademark and patent

infringement. They argued that, for this reason, they were entitled to either a new trial

on damages or remittitur. In opposing defendants’ motion, Aero argued that awarding

patent and trademark damages did not constitute an impermissible double recovery

because “Intex committed two distinct wrongful acts that were completely independent

of each other.”    The district court agreed with Aero, concluding that a “patentee is

entitled to recover the loss it suffered without regard to whether the infringer profited,”

whereas “trademark infringement damages are premised on unjust enrichment and

compensation theories.” Id. at *12. The court therefore denied defendants’ motions.

Id. Based upon the jury’s verdict and its own rulings, the court entered judgment in

favor of Aero as outlined above. Id.

       The court then entered a permanent injunction against defendants precluding

them from making, using, selling, or offering to sell in the United States or importing into

the United States inflatable devices that infringe claim 9 and claims 12 through 15 of the

’726 patent. Aero Prods. Int’l, Inc. v. Intex Rec. Corp., No. 02 C 2590, slip op. (N.D. Ill.

Sept. 14, 2004).

       Defendants timely appealed the judgments against them. We have jurisdiction

pursuant to 28 U.S.C. § 1295(a)(1).




05-1283                                     12
                                       DISCUSSION

                                             I.

       The first issue we consider is infringement. Defendants argue that the jury’s

verdict of infringement was based upon an incorrect claim construction and that, under

the correct construction, the accused Intex air mattress does not infringe. Defendants

do not argue that the mattress does not infringe under the district court’s claim

construction.

       Claim construction is a question of law that we review de novo. Cybor Corp. v.

FAS Techs., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc). The words of a claim

“‘are generally given their ordinary and customary meaning.’” Phillips v. AWH Corp.,

415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v.

Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). 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.”   Id. at 1313.    The claims themselves provide

“substantial” guidance as to the meaning of claim terms. Id. at 1314. The claims must

be read in light of the specification, the “‘single best guide to the meaning of a disputed

term.’” Id. at 1315 (quoting Vitronics, 90 F.3d at 1582). A court should also consider

the patent’s prosecution history, if in evidence. Id. at 1317. 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.” Id.




05-1283                                      13
                                              A.

       As noted above, the district court interpreted the claim term “inflation input” to

mean the point at which air enters the passageway. On appeal, as they did in the

district court, defendants argue that, in addition to being the point at which air enters the

passageway, the inflation input must be the end of the coupling that is most distal from

the end of the inflatable body. They base this construction on the argument that claim 9

and claim 12 of the ’726 patent specify that the valve for controlling the transfer of air

must be “disposed between the interior [of the inflatable body] and the inflation input.”

As a result, defendants reason, the inflation input must be above or below, and not

within, the valve. Hence, according to defendants, this means that the inflation input

must be the end of the coupling that is most distal from the end of the inflatable body.4

Aero responds that the district court’s construction of “inflation input” in claim 9 is correct

because the plain language of claim 9, as well as the supporting specification and

drawings, teach that the “inflation input” is “the place where air enters the passageway.”

       Claim 9 of the ’726 patent claims “an inflatable support system” that comprises

an inflatable body having an interior, an exterior, and an inflation input for transfer of air

between the interior and exterior. ’726 patent, col.10, ll.48-50. Claim 9 states that the

inflatable support system has “a one-way valve, disposed between the interior and the

inflation input, for controlling the transfer of air” and that the valve includes “a



       4
              Defendants appear to assert that there would be no infringement under
their proposed construction of “inflation input” because the top of the short inner cylinder
in the accused Intex device, see the above drawing of the accused device, where air
enters, is within the valve, rather than at the top of it, as the claims require. Thus, so
the argument goes, there is no infringement because, in the valve of the accused Intex
mattress, the “inflation input” is not at the coupling that is most distal (furthest away)
from the end of the air mattress.


05-1283                                       14
passageway having a general circular cross section and a first end in communication

with the interior and a second end in communication with the inflation input.” Id., col.10,

ll.51-58. The claim further states that the inflatable support system has “a generally

circular coupling defining the passageway, the coupling having an open end defining the

inflation input and a flared end, contiguous therewith, providing the circular lip, so that (i)

the coupling at the open end has a smaller internal diameter than at the flared end and

(ii) the diaphragm can be pushed axially to open the valve by reaching into the open

end of the coupling.” Id., col.11, ll.4-11. This is most clearly illustrated in Figure 15 of

the ’726 patent. Claim 12 of the ’726 patent claims “[a]n inflatable body” that comprises

“an inflatable bladder having an interior and an inflation input.” Id., col.11, ll.27-29.

Claim 12 further states that the “inflatable body” comprises “a one-way valve disposed

between the interior and the inflation input,” as well as “a passageway having a

generally circular cross section and a first end in communication with the interior and a

second end in communication with the inflation input.” Id., col.11, ll.30-31, 34-37. We

see nothing in the language of claims 9 and 12 that limits the term “inflation input” to

anything other than “where air enters the passageway.” Moreover there is certainly

nothing in the claim language that limits the location of the inflation input to the end of

the coupling that is most distal from the end of the inflatable body, as urged by

defendants.5

       The specification further supports this conclusion.          Figures 3, 15, and 17

demonstrate possible embodiments with inflation inputs. Id., figs.3, 15, & 17. These

       5
              We see no error in the district court’s construction of the term passageway
(“a way that allows a passage of air to and from the interior of the bed”), which
defendants do not challenge on appeal. See Markman Order, 2004 U.S. Dist. LEXIS
1202, at *12.


05-1283                                       15
embodiments do not require a definition of “inflation input” that limits the location other

than to “where air enters the passageway.” Indeed, all three of the figures show the

inflation input as a place where air enters the passageway. The rest of the specification

also supports this interpretation, as it explains that “[i]nflation is provided to the mattress

[ ] by means of the inflation input . . . .” Id., col. 3, l. 68, to col. 4, l. 2. Finally, there is

nothing in the prosecution history that would alter this meaning.

       In sum, the claim language, the specification, and the prosecution history support

the district court’s construction of the term “inflation input.” Accordingly, we will not

disturb that construction.6




       6
                We reject defendants’ claim that the district court erred by construing the
term “inflation input” in light of the accused device. There is no basis for the argument
that the district court improperly relied on the accused device. Although the court
revealed an awareness of the accused device, the court’s awareness of the accused
device is permissible. See Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442
F.3d 1322, 1326-27 (Fed. Cir. 2006) (“While a trial court should certainly not prejudge
the ultimate infringement analysis by construing claims with an aim to include or exclude
an accused product or process, knowledge of that product or process provides
meaningful context for the first step of the infringement analysis, claim construction.”);
Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1580 (Fed. Cir.
1991) (“Of course the particular accused product (or process) is kept in mind, for it is
efficient to focus on the construction of only the disputed elements or limitations of the
claims.”).
        Defendants also argue that the district court amended its claim construction
because the court refused to allow defendants to argue to the jury that, in the accused
device, the top of the tall outer cylinder was the “inflation input” and “open end” of the
coupling. We do not agree. During trial, Intex was prohibited from rearguing the claim
construction or attempting to use the naked language of the claims—instead of the
district court’s claim construction. Thus, when counsel for Intex addressed infringement
by referring to the claim language, instead of the court’s claim construction, the district
court warned him that “I’ve now construed the claim and asking questions which would
suggest that my construction is somehow at variance with the claim is unfair.” The court
did not stop defendants from discussing infringement or referring to the court’s
construction. In short, we do not read the colloquy between counsel and the district
court as evidence of a revised claim construction of “inflation input” at trial.


05-1283                                         16
                                             B.

       On appeal, defendants also challenge the district court’s construction of the term

“complete hermetic seal” in the limitation of claim 12 relating to a “flexible circular

diaphragm.” As seen, the court construed this term to mean “a seal that does not

require any additional parts to retain nearly or largely all of the air in the bed.” Markman

Order, 2004 U.S. Dist. LEXIS 1202, at *16-17.          Defendants argue that the court’s

construction of “complete hermetic seal” is inconsistent with the specification because

the specification indicates that the language “complete hermetic seal” relates to the

quality of the seal and not its mechanical completeness. They argue in addition that the

prosecution history expressly indicates that the phrase “complete hermetic seal” refers

to the degree of sealing, so a complete hermetic seal is one that is “impervious to air.”7

Aero responds that the district court did not err in construing “complete hermetic seal” in

claim 12 to mean that the valve does not require any additional parts to form a seal. It

urges that the court’s construction is not inconsistent with the specification and that the

term “complete hermetic seal” was added during prosecution to distinguish prior art that

required additional parts to form a seal, such as a lid.

       In our view, the district court properly construed the term “complete hermetic

seal” in claim 12. Claim 12 recites that the “inflatable body” of the invention comprises

“an inflatable bladder having an interior and an inflation input” and “a one-way valve

disposed between the interior and the inflation input providing a substantially hermetic

seal under low pressure conditions.” ’726 patent, col.11, ll.28-32. The “substantially

       7
             Defendants assert that there would be no infringement under their
proposed claim construction of “complete hermetic seal”—namely, a seal that is
“impervious to air”—because the accused Intex device leaks some air and thus is not
“impervious to air.”


05-1283                                      17
hermetic seal” is the only seal that is claimed. The claim goes on to explain that the

one-way valve includes “a flexible circular diaphragm” so that, “following inflation of the

bladder, air pressure created in the interior [of] the bladder . . . causes an outer annular

region of the outer surface of the diaphragm to be urged into engagement against the

valve seat to provide a complete hermetic seal when the valve is in the closed position.”

Id., col.11, ll.42-57 (emphasis added).    We read the quoted claim language as doing

two things. First, it tells the reader that the one-way valve provides a “substantially

hermetic seal.” Second, it explains to the reader how that “substantially hermetic seal”

comes about: specifically, by air pressure causing a region of the outer surface of the

diaphragm to become engaged against the valve seat.            In other words, the claim

language tells one of skill in the art the manner in which the claimed “substantially

hermetic seal” is accomplished. While defendants’ argument would have been squarely

foreclosed had the inventor referred to “a completed hermetic seal,” we are not

prepared to hold that the inventor’s less-than-perfect wording undermines the claim

construction that emerges from the otherwise clear language of claim 12. We also think

the district court was correct when it stated that interpreting the claimed seal as being a

seal that does not allow any air to leak through would render the term “substantially”

illusory. Markman Order, 2004 U.S. Dist. LEXIS 1202, at *16; see Merck & Co. v. Teva

Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that

gives meaning to all the terms of the claim is preferred over one that does not do so.”).

In sum, the claim language supports the district court’s construction that “complete

hermetic seal” means “a seal that does not require any additional parts to retain nearly




05-1283                                     18
or largely all of the air in the bed.” Markman Order, 2004 U.S. Dist. LEXIS 1202, at *16-

17.

       We are not persuaded by defendants’ argument that the district court’s claim

construction is at odds with the specification and the prosecution history.             The

specification requires little discussion. Referring to Figure 3 above, it simply states that,

“[w]hen air has been placed within the mattress 10 under modest pressure, . . . and air

pressure is removed from inflation input 322, the pressure of air in the mattress 10

urges the diaphragm 34 against valve seat 36 and produces a positive seal against the

exit of air from the mattress.” ’726 patent, col.4, ll.12-18. This language does not, in

any way, suggest that the seal of claim 12 must be “complete” in terms of being air-tight.

       Turning to the prosecution history, the ’726 patent issued from U.S. Patent

Application No. 992,814 (“the ’814 application”), which was filed on December 16, 1992,

as a continuation-in-part of U.S. Patent Application No. 384,786 (“the ’786 application”).

As originally filed, independent claim 12 of the ’814 application required a “substantially

hermetic seal”:

       An inflatable bed comprising:
               an inflatable bed having an interior and an inflation input;
               a one-way valve disposed between the interior and the inflation
       input providing a substantially hermetic seal under low pressure
       conditions, such valve including:
               a passageway having a generally circular cross section and a first
       end in communication with the interior and a second end in
       communication with the inflation input;
               a circular lip, disposed peripherally in the passageway and
       protruding radially inward, having a first surface generally facing the
       interior, defining a valve seat; and
               a flexible circular diaphragm, having an inner surface generally
       facing interior and an outer surface facing away from the interior, mounted
       for axial movement in the passageway away from and against the valve
       seat in respectively open/and closed positions of the valve, so that an




05-1283                                      19
       outer annular region of the outer surface of the diaphragm engages,
       against the valve seat when the valve is in the closed position.

(Emphasis added).       Claim 12 and dependent claims 13 through 15 of the ’814

application were rejected under 35 U.S.C. § 103 as being obvious in view of U.S. Patent

No. 4,579,141, which issued to Heino Arff (“the Arff patent”).8 The Examiner explained

that it would have been obvious to a person of ordinary skill in the art to use the check

valve taught by the Arff patent:

       Arff shows a filling and discharge valve used for an inflatable body that
       comprises an annular flange . . . that includes a cylindrical portion . . .
       upon which a cap . . . can be screwed. A passage is defined through the
       flange which receives a spring loaded check valve . . . that includes an
       annular diaphragm . . . . The diaphragm rests against an annular sealing
       face defined by annular sealing ring . . . . Note that the lower end of the
       sealing ring is defined by an annular surface that faces down and into the
       inflatable body, the valve diaphragm rests against this face to form the
       seal. While the Arff valve is used upon an inflatable boat, it is clear that its
       use is not so limited. Since it is well known in the art to use a one way
       check valve similar to Arff’s upon an air mattress, it would have been
       obvious to one of ordinary skill in the art [to] use the specific check valve
       taught by Arff upon an air mattress.

       In response to this rejection, the inventor amended claim 12 so that it reads, in its

present form, as follows:

       An inflatable [bed] body comprising:
               an inflatable bladder having an interior and an inflation input;
               a one-way valve disposed between the interior and the inflation
       input providing a substantially hermetic seal under low pressure
       conditions, such valve including:
               a passageway having a generally circular cross section and a first
       end in communication with the interior and a second end in
       communication with the inflation input;
               a circular lip, disposed peripherally in the passageway and
       protruding radially inward, having a first surface generally facing the
       interior, defining a valve seat; [and]



       8
             The Arff patent is directed to a filling and discharging valve for inflatable
hollow bodies, such as dinghies.


05-1283                                      20
               a flexible circular diaphragm, having an inner surface generally
       facing the interior and an outer surface facing away from the interior,
       mounted for axial movement in the passageway away from and against
       the valve seat in the respectively open and closed positions of the valve,
       so that (i) the act of inflation of the bladder under low pressure is sufficient
       to cause axial motion of the valve into the open position to permit the large
       influx of air and (ii) following inflation of the bladder, air pressure created in
       the interior the bladder by inflation thereof causes an outer annular region
       of the outer surface of the diaphragm [engages] to be urged into
       engagement against the valve seat to provide a complete hermetic seal
       when the valve is in the closed position; and
               stiffening means for reducing flexing of the diaphragm except in its
       outer annular region.

(Bracketed material removed, underlined material added). Aero explained that claim 12

had been amended to “claim the subject matter of the invention more distinctly.” It also

explained that claim 12 “as amended now requires stiffening means for reducing flexing

of the diaphragm except in its outer annular region.” Aero asserted that the amendment

was supported by the specification.         The Examiner thereafter issued a Notice of

Allowance.

       As seen, the term “complete hermetic seal” was added to claim 12 after a

rejection based on the Arff patent. However, the Examiner did not cite the Arff patent

against claim 12 because of the quality of the seal in claim 12. The inventor explained

that claim 12 was being amended, in light of the Arff patent, to require a stiffening

means. There is nothing in the prosecution history to suggest that claim 12 was being

modified to add a requirement for a completely hermetic seal.               Thus, contrary to

defendants’ argument, the language “complete hermetic seal” was not added to

distinguish the Arff patent based on the limitation of a seal that is completely impervious

to air, as defendants urge.        In short, the prosecution history does not support

defendants’ claim construction argument.




05-1283                                       21
       As noted, defendants argue that the jury’s infringement verdict is based on an

incorrect claim construction and that they do not infringe under the correct claim

construction. Defendants do not argue that they do not infringe under the district court’s

claim construction.    Because we affirm the district court’s claim construction, the

judgment of infringement resulting from the jury’s verdict is affirmed.

                                             II.

       As noted, after the jury trial the district court considered the legal issue of

definiteness and held that claim 12 of the ’726 patent was not invalid by reason of

indefiniteness.   Indefiniteness Opinion, 2004 U.S. Dist. LEXIS 12894.         On appeal,

defendants raise again the argument that claim 12 of the ’726 patent is invalid by

reason of indefiniteness.

       A patent is presumed valid, and the burden of establishing invalidity as to any

claim of a patent rests upon the party asserting such invalidity. 35 U.S.C. § 282. Clear

and convincing evidence is required to invalidate a patent. Typeright Keyboard Corp. v.

Microsoft Corp., 374 F.3d 1151, 1157 (Fed. Cir. 2004). A determination of whether a

claim recites the subject matter that the applicant regards as its invention and is

sufficiently definite so as to satisfy the requirements of 35 U.S.C. § 112, ¶ 2,9 is a legal

conclusion that we review de novo. Allen Eng’g Corp. v. Bartell Indus., 299 F.3d. 1336,

1348 (Fed. Cir. 2002); Personalized Media Commc’ns, LLC v. lnt’l Trade Comm’n, 161

F.3d 696, 702 (Fed. Cir. 1998). If a claim is not amenable to construction, the claim is

invalid as indefinite under 35 U.S.C. § 112, ¶ 2. Novo Indus., L.P. v. Micro Molds Corp.,



       9
             Section 112, paragraph 2, states: “The specification shall conclude with
one or more claims particularly pointing out and distinctly claiming the subject matter
which the applicant regards as his invention.”


05-1283                                     22
350 F.3d 1348, 1353 (Fed. Cir. 2003). 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. Exxon Res. & Eng’g Co.

v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001).

       Defendants contend that claim 12 is indefinite and that the district court had to

rewrite the claim to make it valid. They argue that while there is only one seal in claim

12, the claim simultaneously requires both a “substantially hermetic seal under low

pressure conditions” and a “complete hermetic seal when the valve is in the closed

position.”   They assert that the addition of the second phrase during prosecution

rendered the claim indefinite. Aero responds that claim 12 is not indefinite because it is

capable of construction.

       Because, as just seen, claim 12 is capable of being construed, it is not indefinite.

The term “complete hermetic seal” refers to the mechanical completeness of the seal,

while the term “substantially hermetic seal” refers to the quality of the seal. During trial,

Aero’s technical expert, Dr. Karvelis, testified to his understanding of the claim terms.

See Indefiniteness Opinion, 2004 U.S. Dist. LEXIS 12894, at *7. As the district court

recognized, “[t]hese terms, when read in combination and in light of the specification of

the ’726 patent, would be understandable to a person of ordinary skill in the art.” Id.

We see no error in the district court’s determination that claim 12 is not indefinite.

                                             III.

       As noted, the district court denied defendants’ motion for remittitur and for a new

trial on damages, rejecting the argument that awarding Aero damages for both patent

and trademark infringement constituted an impermissible double recovery.                 Order




05-1283                                      23
Denying New Damages Trial, 2004 U.S. Dist. LEXIS 25941.            Defendants raise the

damages issue again on appeal.

      We apply our own law with respect to issues of substantive patent law and also

with respect to certain procedural issues pertaining to patent law; we apply the law of

the regional circuits on non-patent issues. See Midwest Indus., Inc. v. Karavan Trailers,

Inc., 175 F.3d 1356, 1359 (Fed. Cir. 1999) (en banc). This case presents the question

of whether Aero’s recovery of both patent and trademark infringement damages

represents an impermissible double recovery. We believe that this question is properly

determined under Federal Circuit law. That is because, although the question relates in

part to trademark damages, it also involves a matter unique to patent law, damages for

patent infringement. See Fiskars, Inc. v. Hunt Mfg. Co., 279 F.3d 1378, 1381 (Fed. Cir.

2002) (“[T]he issue before us—whether a lost profits damages award should be set

aside [under Rule 60(b)] because post-trial sales data may show the acceptability of a

non-infringing alternative product—turns on a substantive area of patent law. Because

resolution of this issue necessarily requires an understanding of the distinctive

characteristics of patent damages law, we apply Federal Circuit law in our review.”).

      We review the denial of a motion for a new trial under the law of the regional

circuit, in this case the Seventh Circuit. See Koito Mfg. Co. v. Turn-Key-Tech. LLC, 381

F.3d 1142, 1148 (Fed. Cir. 2004). In the Seventh Circuit, a trial court may grant a new

trial “where the verdict is against the clear weight of the evidence,” while the court’s

ruling on a motion for a new trial is reversed only where there is a clear abuse of

discretion. Trzcinski v. Am. Casualty Co., 953 F.2d 307, 315 (7th Cir. 1992). Under this

standard, the court “will not set aside a jury verdict if a reasonable basis exists in the




05-1283                                    24
record to support the verdict.”     Id.   Likewise, the Seventh Circuit reviews a district

court’s denial of a motion for remittitur for an abuse of discretion. Lampley v. Onyx

Acceptance Corp., 340 F.3d 478, 483 (7th Cir. 2003).

         Generally, the double recovery of damages is impermissible.       See Junker v.

Eddings, 396 F.3d 1359 (Fed. Cir. 2005); Bowers v. Baystate Techs., Inc., 320 F.3d

1317 (Fed. Cir. 2003); Catalina Lighting, Inc v. Lamps Plus, Inc., 295 F.3d 1277 (Fed.

Cir. 2002); Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1362 (Fed. Cir.

1998); CPG Prods., Corp. v. Pegasus Luggage, Inc., 776 F.2d 1007, 1014 n.4 (Fed. Cir.

1985).

         In Bowers, we recognized that double recovery for the same injury is

inappropriate. 320 F.3d at 1327-28. We explained that “[t]he law is clear that the jury

may award separate damages for each claim, ‘leaving it to the judge to make

appropriate adjustments to avoid double recovery.’” Id. (quoting Britton v. Maloney, 196

F.3d 24, 32 (1st Cir. 1999)). We held in Bowers that the trial court did not abuse its

discretion by allowing the jury to award damages for copyright and contract claims for

the same cause of action and then omitting the duplicative copyright damages. Id. at

1328 (“In this case, the breach of contract damages arose from the same copying and

included the same lost sales that form the basis for the copyright damages. The district

court, therefore, did not abuse its discretion by omitting from the final damage award the

duplicative copyright damages.”).




05-1283                                       25
      Catalina Lighting involved 35 U.S.C. §§ 284 and 289, the latter of which deals

with damages for infringement of a design patent.       295 F.3d 1277.10      In Catalina

Lighting, we were faced with the question of whether “a patentee may recover both

infringer profits and a reasonable royalty when both a design patent and utility patent

have been infringed by the sale of a single product.” Id. at 1291. We resolved the

question by focusing on the conduct that had damaged the patentee: the sale of

Catalina Lighting’s infringing product. We stated:

      Lamps Plus is entitled to damages for each infringement, but once it
      receives profits under § 289 for each sale, Lamps Plus is not entitled to a
      further recovery from the same sale because the award of infringer profits
      under § 289 also constitutes “damages adequate to compensate for the
      infringement, but in no event less than a reasonable royalty for the use
      made of the invention by the infringer.”

Id.; see Junker, 396 F.3d at 1368 (“Furthermore, the dollar amount that Junker now

seeks as damages for breach of contract is identical to the dollar amount the jury

awarded him for infringement. Both claims arose out of the same set of operative facts

regarding Galt’s unauthorized use of the design Junker had developed.                The

circumstances at least suggest that awarding Junker the damages he seeks on his



      10
             Section 289 states:

      Whoever during the term of a patent for a design, without license of the owner,
      (1)    applies the patented design, or any colorable imitation thereof, to any
             article of manufacture for the purpose of sale, or
      (2)    sells or exposes for sale any article of manufacture to which such design
             or colorable imitation has been applied shall be liable to the owner to the
             extent of his total profit, but not less than $250, recoverable in any United
             States district court having jurisdiction of the parties.
      Nothing in this section shall prevent, lessen, or impeach any other remedy which
      an owner of an infringed patent has under the provisions of this title, but he shall
      not twice recover the profit made from the infringement.

35 U.S.C. § 289.


05-1283                                    26
breach-of-contract claim would constitute a double recovery.”); Celeritas, 150 F.3d at

1362 (“Celeritas stipulated to accept the single highest award from the three causes of

action consisting of patent infringement, trade secret misappropriation, and breach of

contract in order to avoid complex jury instructions dealing with avoiding duplicative

damages. . . . The purpose of the stipulation was to avoid an inquiry into the overlap in

the damage awards arising from multiple related claims.”); CPG Prods., 776 F.2d at

1014 n.4 (“Though the district court ordered accountings for damages resulting from

patent infringement and from unfair competition, Lark is not entitled to dual damages

resulting from the same act.” (citing Stewart & Stevenson Servs., Inc. v. Pickard, 749

F.2d 635, 644 (11th Cir. 1984))). Bowers, Catalina Lighting, Junker, Celeritas, and CPG

Products teach that, in determining whether there has been an impermissible double

recovery of damages, the inquiry focuses on whether the damages issue arose from the

same set of operative facts.

       Relying upon Bowers, Catalina Lighting, and CPG Products, defendants

challenge the award of damages in this case. They contend that the $2.95 million Aero

received as compensation for patent infringement and the $1 million it received as

compensation for trademark damages amounted to an impermissible double recovery.

Aero responds that the district court properly awarded Aero a reasonable royalty for

Intex’s patent infringement and a portion of Intex’s profits for its trademark infringement

because Intex’s infringement of the ’726 patent and infringement of the “ONE TOUCH”

trademark constituted two separate wrongs. It distinguishes Bowers, Catalina Lighting,

and CPG Products, asserting that the claims in those cases were based on a single

wrongful act that caused a single harm. In addition, it relies on Nintendo of America,




05-1283                                     27
Inc. v. Dragon Pacific International, 40 F.3d 1007 (9th Cir. 1994), where the court

allowed Nintendo to recover trademark and copyright infringement damages arising

from sales of the same video game cartridges.

      Patent infringement damages are meant to compensate the patentee for the

infringement, and a patentee is entitled to at least reasonable royalties. See 35 U.S.C.

§ 284 (“Upon finding for the claimant the court shall award the claimant damages

adequate to compensate for the infringement, but in no event less than a reasonable

royalty for the use made of the invention by the infringer, together with interest and

costs as fixed by the court.”). The Trademark Act of 1946, Pub. L. No. 79-489, 60 Stat.

427 (codified as amended in scattered portions of 15 U.S.C.) (“the Lanham Act”), allows

a trademark owner to recover its damages, the defendant’s profits, and the costs of the

action, and the amount awarded “shall constitute compensation and not a penalty.” 15

U.S.C. § 1117(a).

      As indicated, at trial Aero sought patent infringement damages in the amount of

$3.4 million. This was based upon the testimony of Aero’s damages expert, Mark Alan

Peterson, that Aero was entitled to a 15.7% reasonable royalty on $21.8 million in sales

of the accused Intex mattress, which would amount to $3.425 million. Aero argued to

the jury that it should award “3.4 million dollars of that 22 million dollars for patent

infringement.” Aero asserted that this amount would “compensate Aero for the [patent]

infringement. . . .” At the same time, Aero sought trademark infringement damages in

the amount of $2.2 million. This was based upon Aero’s contention that defendants had

made $2.2 million in profits based on sales of the accused Intex mattresses.

Defendants’ damages expert, Roy Weinstein, testified at trial that Intex had sold $22




05-1283                                   28
million worth of accused Intex mattresses, and Intex’s profits were 10.4%, so Intex had

made approximately $2.2 million in profits.11 In short, Aero used defendants’ patent

infringement damages calculations in support of its proposed amount of trademark

damages.

      The jury awarded Aero $2.95 million dollars for the patent infringement—

presumably a reasonable royalty as Aero requested—and $1 million in Intex’s and

Quality Trading’s profits for the trademark infringement.      This was less than the

damages that Aero requested—reasonable royalty damages of $3.4 million for the

patent infringement and disgorgement of Intex’s profits of $2.2 million for the trademark

infringement.

      As just seen, the record demonstrates that Aero based both its patent and

trademark damages solely on sales of the accused Intex mattresses. Aero did not rely

on any other evidence in support of its trademark damages. In other words, there was

no evidence introduced at trial of Intex’s use of the mark “ONE TOUCH” other than in

connection with the sales of mattresses that formed the basis for Aero’s patent

infringement claim. In short, all of the damages awarded to Aero flowed from the same

operative facts: sales of the infringing Intex mattresses. Aero was fully compensated for

defendants’ patent infringement when it was awarded a reasonable royalty for patent

infringement based on sales of the infringing Intex mattresses. It could not also be

awarded defendants’ profits for trademark infringement based on the same sales of the

same accused devices.      This is the result compelled by Bowers, Catalina Lighting,

      11
              At trial, defendants asserted that Aero’s proposed royalty rate for patent
infringement damages was too high because defendants were only making a 10%
profit. Based on this, defendants argued that a reasonable royalty rate would be 5%, or
$1.1 million dollars.


05-1283                                    29
Junker, Celeritas, and CPG Products. We thus hold that the district court abused its

discretion by allowing to stand the jury’s award to Aero of $1 million in trademark

damages.

      Finally, we do not think that Nintendo helps Aero. Nintendo stated that, “[p]ut

together, selling the cartridges may have been one act, but it was two wrongs

[trademark and copyright infringement].”        40 F.3d at 1011.   The Nintendo court

reasoned that “Congress created two separate statutory schemes to govern copyrights

and trademarks; in order to effectuate the purposes of both statutes, damages may be

awarded under both.” Id. Further, the court reasoned that Nintendo “did not recover the

same type of damages under both acts” because it recovered actual damages under

the Lanham Act and it elected and recovered statutory damages, instead of actual

damages, under the Copyright Act. Id.12 From our standpoint, the problem with Aero’s

reliance on Nintendo is that an award of both patent and trademark infringement

damages in this case would be contrary to our decisions in Bowers, Catalina Lighting,

Junker, Celeritas, and CPG Products. Under these cases, even though damages are

claimed based upon separate statutes or causes of action, when the claims arise out of

the same set of operative facts, as is the case here, there may be only one recovery.




      12
             The damages provision of the Copyright Act states:

      [a]n infringer of copyright is liable for either—
      (1)     the copyright owner’s actual damages and any additional profits of
              the infringer . . .; or
      (2)     statutory damages . . . .

17 U.S.C. § 504(a).


05-1283                                    30
                                       CONCLUSION

       In sum, we hold as follows:

       (1)    The district court did not err in construing the term “inflation input” in

claims 9 and 12 of the ’726 patent or the term “complete hermetic seal” in claim 12 of

the ’726 patent. Accordingly, the judgment of infringement is affirmed.

       (2)    The district court did not err in ruling that claim 12 of the ’726 patent is not

invalid by reason of indefiniteness.

       (3)    The district court erred in allowing the jury’s award of $1 million in

trademark infringement damages to stand because doing so resulted in an

impermissible double recovery in favor of Aero. That award is vacated.

       Accordingly, the judgment of the district court in favor of Aero is affirmed-in-part

and vacated-in-part. The case is remanded to the district court for entry of judgment in

Aero’s favor in the principal amount of $5.9 million.

                                          COSTS

       Each party shall bear its own costs.


             AFFIRMED-IN-PART, VACATED-IN-PART, and REMANDED




05-1283                                       31
 United States Court of Appeals for the Federal Circuit


                                        05-1283


                      AERO PRODUCTS INTERNATIONAL, INC.
                            and ROBERT B. CHAFFEE,

                                                              Plaintiffs-Appellees,


                                              v.

                         INTEX RECREATION CORP.,
              QUALITY TRADING, INC. and WAL-MART STORES INC.,

                                                              Defendants-Appellants.




DYK, Circuit Judge, concurring.

      I join the majority opinion with the exception of Part I.A. of the discussion, which

addresses the inflation-input limitation in claims 9 and 12 of the ’726 patent. While I

agree with the majority that the district court did not err in construing the term or in

excluding evidence concerning that limitation, my understanding of the defendants’

argument is somewhat different than the majority’s, and my reasons for rejecting the

argument are necessarily different as well.

      In my view, defendants’ primary complaint is that during the trial the district court

improperly sustained Aero’s objection to testimony offered by defendants that the

inflation input was the end of the coupling that is most distal from the interior of the

inflatable body, i.e., the top of the tall cylinder in the accused device, depicted in the

majority opinion. The district court ruled that this testimony was inconsistent with the
district court’s claim construction of the claim term “inflation input.” Defendants correctly

point out that such testimony was not inconsistent with the formal definition adopted by

the district court (and to which they did not object), defining the term “inflation input” as

the point “where air enters the passageway.” The majority appears to approve of this

limited claim construction.     Maj. Op. at 15.     However, the claim construction order

elaborated on the definition, and the proferred testimony was inconsistent with this

elaborated definition. The order explicitly rejected the defendants’ argument that the

claim 9 “inflation input” in the accused device was the top of the tall cylinder, on the

ground that the top of the tall cylinder was not “contiguous” to the flared end as the

language of claim 9 requires.

       I agree with the district court’s construction of claim 9 that the inflation input is not

the end of the coupling that is the most distal from the interior (i.e., the top of the tall

cylinder in the accused device). Claim 9 provides that the “coupling ha[s] an open end

defining the inflation input and a flared end, contiguous therewith.” Id., col. 11, ll. 5-7

(emphasis added). As the district court held (quoting in part from the defendants’ brief),

“it can be seen that the ‘generally circular coupling’ [in the accused device] consists of

the structure between the [top of the tall cylinder] and the flared end. If a structure is

between the [top of the tall cylinder] and the flared end, then these two pieces cannot be

contiguous.” J.A. 133 (internal quotation marks omitted). Thus, I see no error in this

construction of the term as it appears in claim 9, nor in the district court’s determination

that the “inflation input” could not be the top of the tall cylinder in the accused device

under the district court’s claim construction. Both parties assume that the term “inflation

input” has the same meaning in claim 12.



05-1283                                        2
       The district court’s claim construction did not prevent defendants from otherwise

arguing that the accused device did not satisfy the claim limitations. Thus, defendants

could have argued that the top of the short cylinder cannot be an inflation input because

claims 9 and 12 of the ’726 patent require that the valve for controlling the transfer of air

be “disposed between the interior [of the inflatable body] and the inflation input.”

       I see no error in the district court’s construction of the term “inflation input,” nor in

its evidentiary ruling.




05-1283                                        3
