Advertisement

April 23, 2014

Patent Infringement Claims Not Precluded by Related Trademark Infringement Claims in Prior Suit

Addressing, in the context of a patent infringement claim, what constitutes the same nucleus of operative facts as were previously considered in the context of a trademark infringement claim, the U.S. Court of Appeals for the Federal Circuit concluded that claim preclusion did not bar a plaintiff–appellant’s allegations of patent infringement, even though the complaint referred to the same advertisements that were at the center of a previous trademark infringement lawsuit between the same parties.  Superior Indus., LLC v. Thor Global Enters. Ltd., Case No. 11-1549 (Fed. Cir., Nov. 27, 2012) (Rader, C.J.) (Mayer, J., dissenting).

Superior Industries filed a complaint against Thor Global Enterprises, alleging infringement of patents directed to portable conveyor assemblies used to transport and stockpile rocks, sand, grain and other materials.  The district court dismissed Superior’s complaint, in part based on its determination that claim preclusion applied.  According to the district court, Superior’s patent infringement claims shared a common nucleus of operative facts with trademark infringement claims brought by Superior in a previous lawsuit.  Superior owns the registered trademark “FB,” which refers to the fully braced undercarriages such as those claimed in Superior’s asserted patents. 

In the trademark action, Superior focused on Thor’s press releases describing a “PATENT-PENDING FB Undercarriage” and point-of-sale displays also using the “FB” mark.  The trademark action ended in a consent judgment permanently enjoining Thor from further using the “FB” trademark in connection with undercarriage assemblies or portable conveyors.  In dismissing Superior’s patent infringement claims, the district court highlighted the commonalities among Superior’s claims in the patent and trademark infringement cases.  Superior’s patent infringement complaint referred to the same advertisements at issue in the previous trademark action.  In addition, the complaint in the trademark action referenced the parent to one of the patents asserted in the present (patent) case.  Superior appealed. 

Notwithstanding the overlap in the factual underpinnings between Superior’s new patent case and its prior trademark infringement case, the Federal Circuit reversed the judgment of the district court, explaining that Superior’s patent claims arose from separate transactions than those at issue in its prior trademark infringement cases.  The Court noted that although claim preclusion is often described as barring claims that could have been raised in a prior action, claims are only precluded if they involve the same cause of action.  Claims involve the same cause of action when they share the same nucleus of operative facts.  According to the Court, Superior’s trademark infringement claims pertained to the use of Superior’s registered “FB” mark, not the sales of the conveyor or undercarriage systems that form the basis of a Superior’s patent infringement claims.  Similarly, the Court ruled that the advertisements involved in the trademark action did not constitute offers for sale that could form the predicate of a patent infringement claim.  An offer for sale must set out the terms of a proposed sale in sufficient detail to allow a purchaser to accept the bargain.  However, Thor’s advertisements did not include price terms and thus could not be considered offers for sale.

In dissent, Judge Mayer concluded that Superior’s patent and trademark claims shared the same nucleus of operative facts.

© 2014 McDermott Will & Emery

About the Author

McDermott Will & Emery is a premier international law firm with a diversified business practice. Numbering more than 1,100 lawyers, we have offices in Boston, Brussels, Chicago, Düsseldorf, Frankfurt, Houston,...

+1 312 372 2000

Boost: AJAX core statistics

Legal Disclaimer

You are responsible for reading, understanding and agreeing to the National Law Review's (NLR’s) and the National Law Forum LLC's  Terms of Use and Privacy Policy before using the National Law Review website. The National Law Review is a free to use, no-log in database of legal and business articles. The content and links on www.NatLawReview.com are intended for general information purposes only. Any legal analysis, legislative updates or other content and links should not be construed as legal or professional advice or a substitute for such advice. No attorney-client or confidential relationship is formed by the transmission of information between you and the National Law Review website or any of the law firms, attorneys or other professionals or organizations who include content on the National Law Review website. If you require legal or professional advice, kindly contact an attorney or other suitable professional advisor.  

Some states have laws and ethical rules regarding solicitation and advertisement practices by attorneys and/or other professionals. The National Law Review is not a law firm nor is www.NatLawReview.com  intended to be  a referral service for attorneys and/or other professionals. The NLR does not wish, nor does it intend, to solicit the business of anyone or to refer anyone to an attorney or other professional.  NLR does not answer legal questions nor will we refer you to an attorney or other professional if you request such information from us. 

Under certain state laws the following statements may be required on this website and we have included them in order to be in full compliance with these rules. The choice of a lawyer or other professional is an important decision and should not be based solely upon advertisements. Attorney Advertising Notice: Prior results do not guarantee a similar outcome. Statement in compliance with Texas Rules of Professional Conduct. Unless otherwise noted, attorneys are not certified by the Texas Board of Legal Specialization, nor can NLR attest to the accuracy of any notation of Legal Specialization or other Professional Credentials.

The National Law Review - National Law Forum LLC 4700 Gilbert Ave. Suite 47 #230 Western Springs, IL 60558  Telephone  (708) 357-3317 If you would ike to contact us via email please click here.