Often multiple types of intellectual property cover a product. For example, trademarks, trade secrets, and patents may all cover different aspects of the same product. The overlapping coverage can result in multiple different claims of infringement resulting for one sale of a covered product. The question then becomes, “can the rights owner recover for each type of intellectual property?” This was the issue in Texas Advanced Optoelectric Solutions, Inc. v. Renesas Electronics America, Inc., F/K/A Intersil Corp. which was recently decided by the Federal Circuit. Intersil had been found to both infringe patents and misappropriate trade secrets of Texas Advanced by the sale of light sensors.
Most rights owners, and Texas Advanced, would like the answer to be “yes, double recovery is allowed.” At first glance it appears there have been at least two damaging events in Texas Advance’s case patent infringement and trade secret misappropriation by Intersil. However, the Federal Circuit held that double recovery for the same injury is not allowed and limited the damages to either the patent or trade secret damages. This bar to double recovery had previously been applied to sales of products covered by patents and trademarks, and the Federal Circuit held that the same standard applies to sales covered by trade secrets and patents. Thus, when the damages awarded flow from the same sales, the awarded damages cannot overlap. For rights holders, there is still benefit in having overlapping coverage as one can’t know which type of intellectual property coverage may win the day in any specific infringement action. But, when two or more succeed, rights holders shouldn’t expect extra damages.
Click here for the full opinion of the Federal Circuit.