## 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, Ga rrett & Dunner, L.L.P., of Washington, DC, argued for defendants-appell ants. With him on the brief were Kara F. Stoll and Edward J. Naidich

. Appealed from: United States District C ourt 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. (“A ero Products”) and Robert B. Chaffee (collectively “Aero”) sued Intex Recreation Co rp. (“Intex”), Quality Trading, Inc. (“Quality Trading”), and Wal-Mart Stores, Inc. (“Wal -Mart”) (collectively “defendants”) in the United States District Court fo r the Northern District of Illi nois 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 dist rict court entered judgment ofinfringement and non-invalidity in favor of Ae ro with r e spect to the asserted claims of the ’726 patent and with respec t to Aero’s trademark claim. Based upon that judgment, the court awarded Aero damages in the to tal 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 Denyi ng New Damages Trial ”). The total dam ages award was bas e d on the jury’s finding that Aero was enti tled 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. In t’l, Inc. v. Intex Rec. Corp. , No. 02 C 2590, 2004 U.S. Dist. LEXI S 13453, at *13 (N.D. Ill. Ju ly 15, 2004) (“Order Awarding Enhanc ed Damages ”), and $1 million as trademark infringemen t damages. See Order Denying New Dama ges Tria l , 2004 U.S. Dist. L EXIS 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); Aer o Prods. Int’l, Inc. v

. Inte x 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 do uble recovery. Accordingly, we vacate the awar d of $1 m illion in trademark infringement damages in favor of Aero. We thus affi rm-in-part, vacate-in-par t, and remand to the district court for entry of a fi nal judgment in favor of Aero c onsistent with this opinion.

05-1283 2BACKGROUND
I. The invention claimed in the ’726 patent “relates to inflatable s u pport systems, which may include air mattresses, and inflation and control thereof.” 1 ’726 pat ent col.1, ll.14-16. The aspect of the inv ention that is the focus of th is appeal is the claimed valv e assembly. It is by means of the valve a ssembly that the air mattress is i n flated and remains inflated. Id. , col.3, l.68, to col.4, l.2. Figure 3 of the ’726 patent shows a cr oss-section of the valve assembly.

Id. , fig. 3. Describing the operation of the valve as sembly shown in Figure 3, the specification states that “[ i]nflati on is provided to the mattress 10 by means of the inflation input 322 having exteri or threads 321 . . . .” Id. , col.3, l.68, to col.4, l.2. The specification further states t hat “[a]ir pressure at the in flation input 322 causes the downward displacement of diaphragm 34 away f r om 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 desi red ext ent “and air pressure is removed from inflation input 32 2, the pressure of air in the mattress 10

1 For simplic ity, we refer to the invent ion as being direct ed to inflatable air mattresses.

05-1283 3urges the diaphragm 34 against v a lve seat 36 and produces a pos itive seal against the exit of air from the mattress.” Id. , col.4, ll.14- 18. Thus, the valv e as sembly is d e scribed as “dual,” id. , col.3, l.65, becaus e it (i) controls t he flow of air into the mattress and (ii) operates to keep air in the mattre ss once the mattress is inflated. Figure 15 of the ’726 patent shows a cro ss-section of an alte rnative 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 s pecification states that, in this em bodiment, “[a] circular coupling 1541 inc l udes an open end that constitutes the inflation input 1542. It also ha s a flared end that provides the valve seat 1543 in the form of a ci rcular lip.” Id. , col.9, ll.34-37. T he spec ific ation furt her states that “[i]t can be s een that the diaphragm [1544] can be ac cessed by an individual directly from the inflation input 1542 and can be pushed axially into an open posit ion.” Id. , col.9, ll.41-43. Figure 17 below shows a top view of the embodiment in Fi gure 15, with the cover assembly in a closed position. Id. , fig.17. The figure shows an inflation input labeled 1542:

05-1283 4Id. , fig.17. The specification explains that, as sh own in F i gure 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 hav ing an interior , an exterior, and inf l ation input for transfer of air between t he interior and exterior; and a one-way valve, dis posed bet ween the interior and the inflation input, for c ontrollin g t he transfer of ai r, pro v idin g a su bstantially hermetic seal under low pressur e condition s, such valve including: a passageway having a general circular cross section and a first end in c o mmunication with t he interior and a second end in communication with the inflation input; a circular lip, disposed per ipherally in the pass a geway and protruding radially in ward, having a first surface generally facing the interior, defining a valv e seat; a flexible c i rcular diaphragm, hav ing an interior surface generally facing the interior and an out er surfac e facing away from the interior mounted for axial movement in the passageway away from and against the valve s eat in res p ectively open an d closed pos itions of the v a lve, so that an outer annular r egion of the outer surf ace of the diaphragm engages against the valve seat in the closed position; and a generally circular coupling defin ing the passageway, the coupling having an open end defining the in flat ion input and a flar ed end,

05-1283 5contiguous therewith, provid ing t he circular lip, so t hat the (i) the coupling at the open end has a smaller internal diam eter 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 t he ’726 patent states: An inflatable body comprising: an inflatable bladder having an int e rior and an inflation input; a one-way valve dis posed bet ween the interior and the inflation input prov iding a s ubstantially he rmetic seal under low pressure conditions, such valve including: a passageway hav ing a generally circ ular c r oss section and a first end in c o mmunication with t he interior and a second end in communication with the inflation input; a circular lip, disposed per ipherally in the pass a geway and protruding radially in ward, having a first surface generally facing the interior, defining a valv e seat; a flexible circular diaphragm, hav ing an inner surface gener ally facing the interior and an outer surf ace facing away from the interior, mounted for axial movement in the passageway away from and against the valve s eat in the respectively open and closed pos itions of the valve, so that (i) the act of inflation of the bladder under low pressure is s u fficient 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 bl adder by infl ation thereof causes an outer annular region of the outer surf ace of the diaphragm to be urged into engagement against the valve seat to provide a co mplete 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 mattre sses. In 1991, Mr. Chaffee licensed his technology to Aero Pr oducts. The ’726 pat ent number is marked on the mattress Aero Products sells, as well as on the product packaging, related doc umentation in the form of “sell sheets,” and instructions. To help m a rket its products, Aero Products coined the

05-1283 6term “ONE TOUCH.” Aero first used “ONE TOUCH” in November of 1991. It registered the trademark with the United St ates Patent and Trademark Of fice in Jun e of 1994. U.S. Trademark Reg. No. 1, 839,444. The mark “ONE TO UCH” a ppears on commercial embodiments of the invent ion of the ’726 patent. Intex also sells inflatable air mattresse s. Intex introduced its accused air mattresses in 2000 and sold them to retai l ers such as Quality Trading and Wal-Mart, who in turn sold them to the public. Inte x us ed the term “One Touch” on its webs ite, and “One Touch” was also used on Quality Trading’s website.
III.
A. On April 10, 2002, Aero sued defendants. Aero c l aimed that the Intex air mattress i n fringed the ’726 pat ent and that Wal-Mart and Quality Trading sold the infringing air mattresses. It also clai med that defendants infringed Aero Products’s trademark “ONE TOUCH.” After Aero filed suit, Intex sought an opinio n of counsel regarding infringement. Mr. Rod Berm an, the opining attorney, issued a noninfringement opinion on August 22, 2002. As far as t he alleged patent infringement was concerned, the d i spute b e tween the parties focused on whether Intex ’ s air mattress m e t the limit ations of c l aims 9 a n d 12 of the ’726 patent relating to the inflatio n and s ealing of the c l aimed mat t ress. The part of the accused device that relates to inflation of the Intex mattress i s depicted below:

05-1283 7Lip “Short inner cylinder” Valve Cylinder

Interior of mattress Ex terior of mattress

Diap h ragm Pump

The relevant parts of the a ccused 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 dev ice, 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 dis puted meanings of “inflation input” in claim 9 2 and “complete hermetic seal” in claim 12. Aero Prods. Int’l, Inc. v. Inte x Rec. Corp. , No. 02 C 2590, 2004 U.S. Dist. LEXIS 1202 (N.D. Ill. Jan. 27, 2004) (“Markman Order ”). Aero argued that “inflation i nput” meant the point at whic h air enters the passageway. According to Aero , as used in claim s 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 t hat “inflation input” should be construed as “the end of the coupling or pas s ageway 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 diffe rent meaning in claim 12.

05-1283 8advancing 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 s eal” in c l aim 12 of t he ’726 patent is “a seal that does not require any ad ditional parts to retain ‘nearly ’ or ‘largely’ all o f the air in the bed such that the bed ma int a ins its desired firmness fo r the ex pected duration of use.” Defendants argued that the term “compl ete hermetic seal” should be construed to mean “a seal that is ‘imper vious to air.’” Defendants r easoned that because t he parties agreed that a “substantially hermetic seal” is “ nearly or largely impervious to air,” then a “complete hermetic seal” woul d be “impervious to air.” On January 27, 2004, the district cour t rendered it s claim construction. Id. Agreeing with Aero’s construction of the te rm “passageway,” t he court interpreted the term “inflati on 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 infl ation 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 an y additional parts to retain nearly or largely all of the air in the bed.” Id. a t * 1 8

. T h e district court reasoned that there was only one “seal” used in claim 12: “[t]hat seal cannot be substantially hermetic, or allowing so me 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 distri ct court presided over a ju ry trial on the issues of patent and trademark infringemen t, patent validity, and pat ent and trademark damages.

05-1283 9At trial, Aero sought reasonab le royalty damages of $3.4 m illio n for infringement of the ’726 patent based on sales of the accus ed Intex air mattresses. For the alleged infringeme n t of the “ONE TO UCH” trademark, Aero sought to recover damages in the amount of $2.2 millio n, asserting that this figure repr esented Intex’s profits based on sales of the accused Intex air mattresses. On February 25, 2004, the jury found Intex li able for willful infrin gement of claim 9 and claims 12 through 15 of t he ’726 patent and Int e x and Quality Tradin g liable for trademark infringement of the “ONE TOUCH” trademark. Th e 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 an d $1 millio n as di sgorgement of Intex’s and Quality Trading’s profits for trademark infringement damages. 3
The district court then considered Ae ro’s motion for enhanced patent damages and attorney fees. The court reviewed t he details of defendants’ infringement an d alleged litigation mis c onduc t and doubled the patent damages pursuant to 35 U.S.C. § 284. Order Awarding Enhanced Damages , 2004 U.S. Dist. LEXI S 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 attorn ey fees. Id

. at *13-14. The cour t based its decision to enhance damages and to award attorney fees on its findings that the case was no t close, that Intex copied Aero’s c o mmercial embodiment, that Intex did not rely in good faith on the opinion of counsel noted above, t hat 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 w a s 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 permanen t injunction.

05-1283 10added $2.9 5 millio n in enhanced damages and award e d attorney’s fees, resulting in a total award in favor of Aero of $6.9 millio n. See id. at *14. The district court also found that claim 12 of the ’726 patent was not invalid b y 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. Ju ly 7, 2004) (“Indefiniteness Opinion ”). Prior to trial, the court granted Aero ’s motion in limine to exc l ude argument and ev idence from the jury relating to indefinitenes s. Afte r 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 us e of both “substantially he rmetic seal” and “complete hermetic seal” in c l aim 12 rendered the cl aim indefinite bec ause the terms were ambiguous and inconsistent. Aero count ered that the requi rement of both a “substantially hermetic seal” and a “complet e hermetic seal” did not render the claim indefinite, as the second description of the seal addr essed the mechanical completeness of the seal as opposed to the quality of the seal. The court noted that “the issue of whether Defendant s ’ defense of indefiniteness applies is a ques tion of law reserved for the Court’s determination.” Id. at *2. The court point ed to the testimony of Dr. Albert Karvelis, Aero’s technical ex pert. Id. at *7. Dr. Karvelis testified that the terms “su b stantially hermetic seal” a nd “complete hermetic seal” would be understandable to a person of ordi nary s k ill 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 defend ants’ argument that claim 12 was indefinite. Id. at *10-11.

05-1283 11Defendants also moved for judgment as a ma tter of law (“jmol”), for remitti tur, and for a new trial on damages . See Order Denying New Dam ages Trial , 2004 U.S. Dist. LEXIS 25941. Defendants argued that Aero had improperly recovered double damages because the exact sam e dev ices we re accus ed 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 dam ages did not constitute an impermissible dou ble recovery because “Intex committed two distinct wrongful acts that were completely independent of each other.” The district court agreed with Aero, concl uding that a “patentee is entitled to recover the loss it suffered without regard to whether the infringe r profited,” whereas “trademark infringement damages are premised on unjust enrichment and compensation theories

. ” Id. at *12. The c ourt therefore denied defendant s’ motions. Id. Based upon the jury’s verdict and its ow n rulings, the court entered judgment in favor of Aero as outlined above. Id. The court then entered a permanent injunc tion against defenda nts precluding them from making, using, selling, or offering to sell in the United States or importing into the United States inflatable de vic e s that infringe c l aim 9 and claims 12 through 15 of t h e ’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 agai nst them. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

05-1283 12DISCUSSI ON
I. The first issue we c o nsider is infri ngement. Defendants argue that the jury’s verdict of infringement was based upon an inco rrect 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 in fringe under the district court’s claim construction. Claim construction is a questi on of law that we review de novo. Cybor Corp. v. FAS Techs

. , 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc). T he words of a claim “‘are gener ally given t heir ordinary and cus t omary 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 (F ed. Cir. 1996)). The ordinary and customary meaning of a claim term is “the meaning that the t e rm 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 meani ng of a dis p uted term.’” Id. at 1315 (quoting Vitronics , 90 F

. 3d at 1582). A court should also cons ide r the patent’s prosecution histor y, if in evide n ce. Id. at 1317. The prosecution history “can often inform the meaning of the claim language by demonstrati ng how t h e inv e ntor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narro wer than it w ould other wise be.” Id.

05-1283 13A. As noted above, the district court interp reted the claim term “inflation input ” to mean the point at which air enters the pa ssageway. On appeal, as they did in the district court, defendants argue tha t, in addition to being the po int at which air enters the passageway, the inflat i on input m u st be the end of the coup ling that is most distal from the end of the inflatable body. They base th is construction on the argument that claim 9 and c l aim 12 of the ’726 patent specify that t he valv e for controlling the transfer of air must be “disposed between the interior [of t he inflatable body] and the inflation input.” As a result, defendants reason, the inflatio n input must be above or below, and not within, the valve. Hence, according to def endants, this means that the inflation input must be the end of the coupling that is most distal from the end of the inflat able body. 4 Aero responds that the district court’s construc tion of “inflation input” in claim 9 is correc t 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 s upport system” that compri ses an inflatable body hav ing an inter i or, 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 v a lv e, disposed between the interior and the inflation in put, for controllin g the transfe r of air” and that the valve includes “a

4 Defendants appear to assert that t here 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 abov e drawing of the accused devic e , 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 acc u sed Intex mattress, the “inflation input” is not at the coupling that is most distal (furthest away) from the end of t he air mattress.

05-1283 14passageway having a general circ ular cross section and a first end in communication with the int e rior and a second end in communication with the inflation input.” Id. , col.10, ll.51-58. The claim further states that the inflatable support syst em has “a generally circular coupling defining the pas sageway, t he coupling having an open end defining the inflation input and a flared end, c ontiguous therewith, providing th e circular lip, so that (i) the coupling at the open end has a smaller inter nal diameter than at the flared end and (ii) the diaphragm can be pus h ed axially to open the valve by reaching int o the ope n end of the coupling.” Id. , col.11, ll.4-11. This is most cl early 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 inte rior and an inflation input.” Id. , col.11, ll.27-2 9

. Claim 12 further states that the “inflatable body” compri ses “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 e nd in communication wit h the interior and a second end in comm unication 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 “inflati on input” to anything other than “where air enters the passageway.” Mor eover there is certainly nothing in the claim language that limits the loca tion of the inflation input to the end of the coupling that is most di stal from the end of the infl atable body, as urged by defendants

. 5 The specif ication further supports this conclusion. Figur es 3, 15, and 17 demonstrate possible embodiments with inflation input s. Id. , figs.3, 15, & 1 7 . These

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

05-1283 15embodiments do not require a defi nition of “inflation input” t hat limits the location othe r 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 t hat “[i]nflation is provided to the mattress [ ] by means of the inflat ion 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 s pecification, and the pr osecution 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 di strict court erred by c onstruing the term “inflation input” in light of the accused device. There is no basis for the argument that the district court im properly relied on the accused devic e. Although the court revealed an awareness of the accused devi ce, the court’s awareness of the accuse d device is permissible. See Wilson Sportin g Goods Co. v. Hillerich & Bradsby Co. , 442 F.3d 1322, 1326-27 (Fed. Cir. 2006) (“While a tria l court should certainly not prejudge the ultimate infringem ent analys is by construi ng c l aims with an aim to include or exclude an accused product or process, knowledge of that product or process provide s meaningful context for the first step of the infringement analys is, claim construction.”); Scripps Clinic & Research Found. v. Genentech, Inc. , 927 F.2d 1565, 15 80 (Fed. Cir. 1991) (“Of course the particular accused pr oduct (o r process) is kept in mind, for it is efficient to focus on the construction of only the disputed elements or limitatio ns of the claims.”). Defendants also argue that t he 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 c y linder wa s the “inflation input” and “open end” of the coupling. We do not agree. During trial, Intex was pr ohibi ted from rearguing the claim construction or attempting to use the nak ed language of the claims—instead of the district court’s claim c onstruction. Thus, when couns el for Intex addressed infringement by referring to the cl aim language, instead of the court’s claim construction, the district court warned him that “I’ve now construed the claim and asking questions which wou l d suggest that my construction is somehow at va riance with the claim is unfair.” The cour t did not st op defendants from discussing infr ingement or referring to the court’s construction. In shor t, we do not read th e colloquy between c o unsel and the district court as evidence of a revised claim cons truction of “inflati on input” at trial.

05-1283 16B. On appeal, defendant s also c ha llenge the district court’ s construction of the t e rm “complete hermetic seal” in the limitation of claim 12 relating to a “flexible circular diaphragm. ” As seen, the court construed th is term to mean “a seal that does not require any additional parts to re tain 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 “com plete hermetic seal” relates to the quality of the seal and not its mechanic a l c o mp leteness. 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 hermeti c seal is one that i s “impervious to air.” 7 Aero responds that the district court did no t err in const r uing “com plete hermetic seal” in claim 12 to mean that the valve does not require any additional parts to form a seal. I t urges that the court’s construc tion is not inc onsistent with the specification and that the term “complete hermetic seal” was added during pr osecution to dis t inguish prior art that required additional parts to form a seal, such as a lid. In our view, the district court proper ly construed the term “complete hermetic seal” in c l aim 12. Claim 12 recit e s that t he “inflatable body” of the invention comprises “an inflatable bladder havi ng an interior and an inflation input” and “a one-way valv e disposed between the interior and the inflat ion input pr oviding a s ubstantially hermetic seal under low press u re conditions.” ’726 patent, col.11, ll.28-32. The “substantially

7 Defendants assert that there would be no in fringement under their proposed claim cons truction of “complete he rmetic seal”—namely, a seal that is “impervious to air”—because th e accused Intex device leaks some air and thus is not “impervious to air.”

05-1283 17hermetic seal” is the only seal that is clai med. The claim goes on to explain that the
one-way v a lve includes “a flexib le circular diaphragm” so tha t, “following inflation of the bladder, air pressure c r eated in the interior [of] the bladder . . . causes an outer annular region of t he outer s u rface of the diaphragm to be urged into engagement against the valve seat to provide a complete hermetic seal when t he valve is in the clos ed position.” Id. , col.11, ll.42-57 (emphasis added). W e read the quoted c l aim language as d o ing two things. First, it tells the reader that the one-way valve provides a “s ubstantially hermetic seal.” Second, it explains to t he reader how that “subst antially her metic seal” comes about: specifically, by air pressure c ausing a r egion of the outer surface of the diaphragm to become engaged against t he valv e seat. In other words, the claim language t e lls one of skill in the art the manner in whic h the claimed “substantially hermetic seal” is accomplished. While defe ndants’ argument would hav e been square ly 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 otherwis e clear language of claim 12. We als o think the district court was correct when it stated t hat 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 t he terms of the claim is preferred over one t hat does not do so.”). In sum, the claim language suppor ts the district court’s c onstruction that “complete hermetic seal” means “a seal that does not r equire any additional parts to retain nearly

05-1283 18or 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 cl aim construction is at odds with t he specific ation and the prosecut ion history. The specification requires little discus s ion. Referri ng to Figure 3 above, it simply states that, “[w]hen air has been placed wit hin the mattress 10 under modest pressure, . . . and air pressure is removed from inflation input 32 2, the pressure of air in the mattress 10 urges the diaphragm 34 against v a lve seat 36 and produces a pos itive 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 mu st be “complete” in terms of being air-tight. Turning to the prosecution hist ory, t he ’726 patent issued from U.S. Patent Application No. 992,814 (“the ’ 814 application”), which was f iled on Decemb er 16, 1992, as a continuation-in-part of U. S. Patent Applicatio n No. 384,786 (“ the ’786 application”). As originally filed, independent c l aim 12 of t he ’814 ap plication required a “s ubstantially hermetic seal”: An inflatable bed comprising: an inflatable bed having an interior and an inflation input; a one-way valve dis posed bet ween the interior and the inflation input prov iding a s ubstantially hermetic seal under low pressure conditions, such valve including: a passageway hav ing a generally circ ular c r oss section and a first end in c o mmunication with t he interior and a second end in communication with the inflation input; a circular lip, disposed per ipherally in the pass a geway and protruding radially in ward, having a first surface generally facing the interior, defining a valv e seat; and a flexible circular diaphragm, hav ing an inner surface gener ally facing interior and an outer surface fa cing away from the interior, mounted for axial movement in the passageway away from and against the valve seat in respectively open/and closed pos itions of the valve, so that an

05-1283 19outer annular region of the outer surface of the diaphragm engages, against the valve seat when the va lve 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 Exam iner explain e d that it would have be e n obvio us to a person of ordinary skill in the art to use the check valve taught by the Arff patent: Arff shows a fillin g a nd dischar ge valv e u s ed 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 diaphr agm 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 re sts against this face to form the seal. While the Arff v a lve is us ed upon an inflatable b oat, it is c l ear that its use is not so limited. Si nce it is well known in the art to use a one way check valv e 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 int e rior and an inflation input; a one-way valve dis posed bet ween t he interior and the inflation input prov iding a s ubstantially he rmetic seal under low pressure conditions, such valve including: a passageway hav ing a generally circ ular c r oss section and a first end in c o mmunication with t he interior and a second end in communication with the inflation input; a circular lip, disposed per ipherally in the pass a geway and protruding radially in ward, having a first surface generally facing the interior, defining a valv e seat; [and]

8 The Arff p a tent is d i rected to a f illing a nd discharging valve for inflatable hollow bodies, such as dinghies.

05-1283 20a flexible circular diaphragm, hav ing an inner surface gener ally facing the interior and an outer surf ace facing away from the interior, mounted for axial movement in the passageway away from and against the valve s eat in the respectively open and closed pos itions of the valve, so that (i) the act of inflation of the bladder under low pressure is s u fficient 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 s eat to provide a com p lete hermetic sea l when the valve is in the closed position; and stiffening means for reducing flexi ng of the diaphragm except in its outer annular region

. (Bracketed material removed, underlined materi al add ed). Aero ex plained t hat claim 12 had been amended to “claim the subject matter of t he i n vention more distinctly.” It also explained that claim 12 “as amended now require s stiffening means fo r reducing flexing of the diaphragm exc ept in it s outer annular region.” Aero asserted that the amendment was supported by the specification. Th e Examiner thereafter issued a Notice of Allowanc e. As seen, the term “complete hermetic s eal” was added to claim 12 after a rejection based on the Arff patent. However, the Examiner did not cite the Arff patent against c l aim 12 bec ause of the quality of the seal in claim 12. The invent or explained that claim 12 was being amended, in light of the Arff paten t, to require a stiffening means. There is nothing in t he prosecution history to sugges t that claim 12 was being modified t o add a r equirement for a complete ly hermetic seal. Thus, contrary to defendants ’ argument, the language “complet e hermetic seal” was not added to distinguish the Arff patent based on the limitation of a s eal t hat is c o mpletely impervious to air, as defendants urge. In short, the prosecution history does not support defendants ’ claim construction argument.

05-1283 21As noted, defendants argue that the jury’s infringement verdict is based on an incorrect claim const r uction 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 cons truction. 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 distri ct c ourt considered the legal iss u e of definitenes s and held that claim 12 of the ’ 726 patent was not invalid by reason of indefiniteness. I ndefi n iteness Opinion , 2004 U.S. Dist. LEXIS 12894. On appeal, defendants raise again the argument that claim 12 o f the ’ 726 patent is invalid by reason of indefiniteness. A patent is presumed valid, and the burden of establishi ng 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 requir ed to invalidate a patent. Ty peright Keyboard Corp. v. Microsoft Corp. , 374 F.3d 1151, 1157 (Fed. Cir. 2004). A determination of whether a claim recit e s 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 lega l conclus i on that we review de nov o. Allen Eng’g Corp. v. Bartell Indus. , 299 F

. 3d. 1336, 1348 (Fed. Cir. 2002); Personaliz ed Media Co mmc’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 conc lude with one or more claims particularly pointing out and dist inctly claiming the subject matter which the applic ant regards as his invention. ”

05-1283 22350 F.3d 1348, 1353 (Fed. Cir. 2003). If a claim is am enable to construction, “even though the task may be formidable and the conc lusion may be one over whic h reasonable persons will dis agree ,” the claim is not indefinit e. Exxon Res. & Eng’g Co. v. United States , 265 F.3d 1371, 1375 (Fed. Cir. 2001). Defendants contend t hat claim 12 is indefin ite and that the district court had to rewrite the claim to m a ke it v a lid. They argue that while t here is only one s eal in claim 12, the claim simultaneously requires both a “substantially hermetic seal under low pressure conditions” and a “complete hermeti c seal when the valve is in the closed position.” They ass e rt t hat the addition of the sec ond phrase during prosecution rendered t he claim indefinite. Ae ro 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 her metic seal” refers to the quality of the seal. During trial, Aero’s tec hnical expert, Dr. Karvelis, testif ied to his understanding of the claim terms. See Indefiniteness O p inion , 2004 U.S. Dist

. LEXIS 12894, at *7. As the district court recognized, “[t]hese terms, when read in combi nation and in light of the specification of the ’726 patent, would be under standable to a per son of ordinar y skill in the art.” Id. We see no error in the district court’s det ermi nation that claim 12 is not indefinit e. III. As noted, the district court denied defendan ts’ motion for remittitur and for a new trial on damages, rejecting the argument that aw arding Aero damages for both patent and trademark infringement constituted an impermissible double recovery. Order

05-1283 23Denying New Damag e s Trial , 2004 U.S. Dist. LEXIS 25941. Defendan ts raise the damages is sue again on appeal. We apply our own law with res pect to iss ues of substantive pa tent law and als o with respect to certain procedural issues pe rtaining 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 cas e presents the question of whether Aero’s recovery of both patent and trademark infringement damages represents an impermissible double recovery . We be lie ve that this questio n is properly determined under Federal Circuit law. That is becaus e, alt hough t he question relates in part to trademark damages, it also involv es a matter unique to patent law, damages for patent infringement. See Fiskars, Inc. v. Hunt Mfg. Co. , 279 F.3d 1378, 13 81 (Fed. Cir. 2002) (“[T]he issue before us—whether a lost profits damages awar d sho u ld be set aside [under Rule 60( b)] becaus e post-trial sale s data may show the accept ability of a non-infringing alternative product

— turns on a s ubstantive area of patent law. Beca use resolution of this iss ue necess a rily requ ires an understanding of the distinctiv e characteristics of patent damages law, we appl y Feder al 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 Sevent h Circuit, a trial court may grant a new trial “where the verdict is against the clear we ight of the evide n c e ,” while the court’s ruling on a motion for a new trial is rever s ed only where ther e is a c l ear abuse of discretion. Trzcinski v. Am. Casu alty 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 24record to support the verdict.” Id. Likewise, the Seventh Ci rcuit reviews a district court’s denial of a motion fo r remittitur for an abus e of discretion. Lampley v. Onyx Acceptanc e Corp. , 340 F.3d 478, 483 (7th C i r. 2003). Generally, the double recovery of damages is impermissible. See Junker v. Eddings , 396 F.3d 1359 (Fed. Cir. 2005); Bowe rs v. Baystate Techs., Inc. , 320 F. 3d 1317 (Fed. Cir. 2003); Catalina Lightin g, Inc v. Lamps Plus, Inc. , 295 F.3d 1277 (Fed. Cir. 2002); Celeritas T e chs., Lt d. v. Rockwell Int’l Corp. , 150 F.3d 1354, 13 62 (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 la w is clear that the jury
may awar d 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 copyri ght and contract claims for the same cause of action and then omitting the duplic ative copyright damages. Id. at 1328 (“In this case, t he breach of contract damages arose from the same c o pying and included the same los t sales that form the basi s for the copyright dama ges. The district court, therefore, did not abuse its discretion by omitting from the final damage award the duplicative copyright damages.”).

05-1283 25Catalina Lighting inv o lved 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 w hen both a design pa tent and utility patent have been infringed by the sale of a s i ngle product. ” Id. at 1291. We r e solved the question by focusing on the c onduct that had damaged the patentee: the sale of Catalina Lighting’s infringi ng product. We stated: Lamps Plus is entitled to damages for each infringement, but once it receives pr ofits under § 289 for each sa le, Lamps Plus is not entitled to a further recovery from the same s a le becaus e the award of infringer profits under § 289 also constitutes “dam ages adequate to compensate for the infringement, but in no event less t han a reasonable royalty for the use made of the invention by the infringer.” Id. ; see Junker , 396 F.3d at 1368 (“Furthermore, th e dollar amount that Junker no w seeks as damages for breach of contract is identic al to the dollar amount the jur y awarded him for infringement. Both claims arose out o f t he same set of oper ative facts regarding Galt’s unauthoriz ed use of the design Junk er had developed. The circumstances at least suggest that awar ding Junk er the damages he s e eks on his

10 Section 289 states: Whoever during the term of a patent for a design, without license o f the owner, (1) applies the patented design, or any color able imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any arti cle of manufacture to which s u c h design or colorable imitation has been applied shall be liabl e to the owner to the extent of his total profi t, but not less than $250, recoverable in any United States district court having jurisdiction of the parties. Nothing in this section shall prev ent, lessen, or impeach any other remedy which an owner of an infringed patent has under the provis ions of this title, but he s hall not twice recover the profit made from the infringement. 35 U.S.C. § 289.

05-1283 26breach-of-contract claim would c onstitu te a double recovery.”); Celeritas , 150 F.3d at 1362 (“Celeritas stipulated to ac cept the singl e highest award from the three causes of action consisting of patent infringement, tr ade secret misappropriat ion, and breach o f contract in order to avoid com p lex jury instructions dea ling with avoiding duplic ative damages. . . . The purpose of the stipulation wa s to avoid an inquiry into the overlap in the damage awards arising from multiple related c l aims.”); CPG Prods. , 776 F.2d at 1014 n.4 (“Though the district court ordered a ccountings for damages resulting from patent infringement and from unf air competition, Lark is not entitled to dual damages resulting from the same act.” (citing St ewart & Stevenson Serv s., Inc. v. Pickard , 749 F.2d 635, 644 (11th Ci r. 1984))). Bowers , Catalina Lighting , Junk er , Celerita s , and CPG Products teach that, in determining whether there has been an impermissible doubl e recovery of damages, the inquiry focuses on whether the damages issue aros e from the same set of operative facts. Rely ing upon Bowers , Catalina Lighting , and CPG Products , defendants challenge t he award of damages in this case. They contend that th e $2.95 million Aer o received a s compens ation for p a tent infrin gem ent an d the $ 1 million it received as compensation for trademark damages amounted to an impermi ssible double recovery. Aero responds that the district c ourt pr operly awarded Aero a reasonable r o yalty 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 inf r ingem ent of the “ONE TOUCH” trademark constituted two separ ate wrongs . It distinguishes Bowers , Catalina Lighting , and CPG Products , asserting that the claims in t hos e cases were based on a single wrongful act that caused a s i ngle harm. In add ition, it relies on Ni ntendo of Americ a,

05-1283 27Inc. v. Dragon Pac i fic Internati onal , 40 F

. 3d 1007 (9th Cir. 1994), where the court allowed Nintendo to recover trademark and copyright infr ingement 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 claiman t damages adequate t o compens ate for the infringement, but in no event les s than a reasonable royalty for the use made of t he invention by the infringer , together with interest and costs as fixed by the court.”). The Trademar k Act of 1946, Pub. L. No. 79-489, 60 Stat. 427 (codified as amended in sc attered 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 awar ded “shall constitute compensation and not a penalty.” 1 5 U.S.C. § 1117(a). As indicated, at trial Aero sought pat ent infringement damages in the amount of $3.4 millio n

. This was based upo n the testi m ony of A e ro’s damages expert, Mark Alan Peterson, that Aero was entitled to a 15.7% reasonable royalty on $21. 8 million in sales of the accu sed Intex mattress, which wo uld am ount to $3.425 million. Ae ro argued t o the jury that it should award “3.4 million do llars of that 22 mill ion do llar s for patent infringement.” Aero asserted that this am ount would “c ompensate Aero for the [patent] infringement. . . .” A t the same time, Ae ro sought trademark infr ingement damages in the amount of $2.2 milli on. This was based upon Aero’s contention that defendants had made $2.2 million in profit s based on sales of the accused Intex mattresses. Defendants ’ damages expert, Roy Weinstein, test ified at trial that Intex had sold $22

05-1283 28million worth of accus ed Intex mattresses, and Inte x’s profits were 10.4%, so Intex had made appr oximately $2.2 million in profits

. 11 In short, Aero used defendants’ patent infringement damages calculations in sup port of its proposed amount of trademark damages. The jury awarded Aero $2.9 5 million dol lars for the patent infringe ment— presumably a reasonable roya lty as Aero requested—and $1 million in Intex’s an d Quality Trading’s profits fo r the trademark infringement. This was les s than the damages that Aero requested— reasonable roya lty damages of $3.4 million for the patent infringement and disgorge ment of Intex’s profits of $2.2 m i llion for the trademark infringement. As just seen, the record demonstrates that Aero based both its patent and trademark damages s o lely on sale s of the accused Intex mattres ses. Aero did not rely on any other evidenc e in suppor t of its trad emark damages. In other words, there was no evidenc e introduce d at trial of Intex’s us e 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 awar ded to Aero flowed from the same operative facts: sales of the in fringing Intex mattresses. Ae ro was fully compensated for defendants ’ patent inf r ingement w hen 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 fo r trademark infringement based on the same s a les of the same accused devices. This is the result compelled by Bowers , Catalina Lighting ,

11 At trial, defendants as serted 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 millio n dollars.

05-1283 29Junker , Celeritas , and CPG Products . We thus hold that t he district court abused its discretion by allowin g to stand the jury’s award to Aero of $1 millio n in trademark damages. Finally, we do not think that Nintendo helps Aero. Nintendo stated that, “[p]ut together, selling the cartridges may hav e been one act, but it was two wrongs [trademark and copyright infr ingement].” 40 F.3d at 1011. The Nint e ndo co u r t reasoned that “Congress created two separate statutory schemes to govern copyrights and trademarks; in order to ef fectuate the purposes of bot h 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” becaus e it recovered actual damages under the Lanham Act and it elected and recove red 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 tr ademark infringement damages in this case would be cont rary to our decisions in Bowers , Catalina Lighting , Junker , Celeritas , and CPG Products . Under these cases, even though damages are claimed based upon s eparate stat utes or causes of act i on, when t he 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 copyri ght is liable for either— (1) the copyright owner’s actual dam ages and any addition a l profits of the infringer . . .; or (2) statutory damages . . . . 17 U.S.C. § 504(a).

05-1283 30CONCLUS ION 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 pat ent or the term “compl ete hermetic seal” in c l aim 12 of the ’726 patent. Accordingly, the j udgment of infringement is affirmed. (2) The district court did not err in ruli ng that claim 12 of the ’726 patent is not invalid by reason of indefinitenes s. (3) The distric t court erred in a llo wing the j u ry’s awar d of $1 million in trademark infringem ent damages to st and 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 t he dis t rict court for entry of judgment in Aero’s favor in the princi pal amou nt of $5.9 million. COSTS Each party shall bear its own costs.

AFFIRMED-IN-PART, VACAT ED-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 except ion 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 cour t 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 ma jority’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 t he coupling that is most distal from the interior of the inflatable body, i.e., the top of the tall cyli nder in the accused device, depicted in the majority opinion. The district court ruled that this testim ony was inconsistent with thedistrict court’s claim c onstruction of the clai m term “infl a tion input.” Defendants correctly point out that such tes t imony was not inc ons istent with t he formal definition adopted by the district court (and to whic h they did not object), definin g the term “inflation input” as the point “ w here air enters the passageway.” The majority appears to approve of this limited c l aim construction. Maj. Op. at 15. Howev e r, the claim construction order elaborated on the definition, and the proferred testimony was inconsistent with this elaborated definition. The order explic itly rejected the defendants’ argum ent that the claim 9 “inflation input” in the ac cused device w a s the top of the tal l cyl inder, on the ground that the top of the tall c y linder 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 couplin g that is the most distal from the interior (i.e., the top of the tall cylinder in the accused devic e) . Claim 9 pr ovides that t he “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 t he defendants’ brief), “it can be seen that the ‘general ly circular coupling’ [in the accused devic e] consists of the structure between t he [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 m a rks omitted). Thus, I see no error in this construction of the ter m as it appears in clai m 9, nor in the district court’s det ermination that the “inflation input” coul d not be the top of the tall cyl inder in the accused dev i ce under the district court’ s claim construction. Bo th parties assume that the term “inflation input” has the same meaning in claim 12.

05-1283 2The district court’s claim construction did not prevent defendants from otherwise arguing that the accused device did not sati sfy the claim limitati ons. Thus, defendants could have argued that the top of the short cy linder cannot be an inflation input because claims 9 and 12 of the ’726 patent require that the valve for c ontrolling the transfer of air be “dispos ed between the interior [of the inflatable body] and the inflation input.” I see no error in the district court’ s cons truction of the term “inflation input,” nor in its evidentiary ruling.

05-1283 3