All The $$$ Comes From One Pocket, or Out Of the Same Mattress.

In yet another case of infringing goods on the shelves of Wal-Mart, Aero Prods. Int’l, Inc. v. Intex Rec. Corp., (CAFC 2OCT06) that portion of the damages awarded for the infringing trademark was vacated, because the mark was upon the beds that infringed the patent.  To allow a reasonable royalty for infringing the bed patent, plus award profits of the infringer for infringing the trademark would be an “impermissible double recovery.”  Quare: if the infringer paid a reasonable royalty to make the patented bed, would more $$ have to be paid to license the trademark on the beds?
An aspect of the ruling that seems odd is that the Federal Circuit arrogates that the issue of trademark damages will not be decided under regional circuit precedent.  Since the CAFC affirms the patent damages, one wonders why the trademark award is governed by CAFC precedent; and, is there a chance that the patent case and trademark case could have been separate suits that ended up in two Circuit courts for review.
My read of Aero is that the CAFC does not see how the two statutory phrases, “damages adequate to compensate for the [patent] infringement,” and “subject to principles of equity, to recover (1) defendant’s profits” for the trademark infringement, can co-exist and be accorded co-equal meaning.
In the end, the CAFC opts out of any statutory analysis, and holds “the result [is] compelled by [its] Bowers, Catalina Lighting, [etc.]” precedent, and conversely, that reliance on a 9th Circuit case “would be contrary to our [CAFC] decisions in Bowers, Catalina Lighting, [etc.].”
While some part of the trademark award may be duplicative the reasonable patent royalty awarded, that issue more appropriately would be remanded for the district judge to “mold” the damage award, not for the CAFC to vacate it.