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.