Aero Prods. Int'l, Inc. v. Intex Recreation Corp.
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.
