Claim Construction

The asserted '726 claims went to a valve assembly for an inflatable mattress. There were two claim construction issues on appeal: the terms "inflation input" in claims 9 & 12, and "complete hermetic seal" in claim 12.

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. In sum, the claim language, the specification, and the prosecution history support the district court’s construction of the term “inflation input.”

The construction of "complete hermetic seal" for claim 12 was peculiar, as "complete" as construed as something less than that, at least considering the common usage of the word. Both courts preferred a limited construction to the term "complete," as reading it prima facie "would render the term “substantially” illusory." There was an admitted tolerance for a bit of sloppy claim language: "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."

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 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 or largely all of the air in the bed.” Markman Order, 2004 U.S. Dist. LEXIS 1202, at *16-17.

Defendants also argued claim 12 as indefinite, but, the CAFC ruled that, as "claim 12 is capable of being construed, it is not indefinite."

Damages

Aero sought reasonable royalty for patent infringement, and a finding of willful infringement; both granted.

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... 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.

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 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.

Aero had based its trademark infringement damage on defendant's estimate of patent infringement. The trademark damage assessment did not go over well in appeals court, based solely upon patent infringement damage assessment, and the CAFC dropped award for trademark infringement.

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).

In short, Aero used defendants’ patent infringement damages calculations in support of its proposed amount of trademark damages... 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... 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.

So, the CAFC crossed out the $1 million for trademark infringement, leaving Aero an award of $5.9 million. A permanent injunction was also left intact.