Superior Industries, LLC v. Thor Global Enterprises Ltd.
700 F.3d 1287
| Fed. Cir. | 2012Background
- Superior owns the '947, '101, and '231 patents and the FB trademark related to height-adjustable bulk material belt conveyors.
- Thor, a Canadian company, marketed a patent-pending FB undercarriage technology in 2007 with press releases and point-of-sale displays.
- Superior filed a 2009 trademark infringement action against Thor, which ended in a consent judgment in 2010 restraining Thor from using the FB mark in connection with its undercarriage/portable conveyors.
- Superior then sued Thor in 2010 for infringement of the '101 and '231 patents, alleging Thor sold, offered to sell, or imported a telescoping conveyor with the Thor Undercarriage Technology.
- The district court dismissed the '101 patent infringement claim on claim preclusion grounds and dismissed the '231 patent claim under Rule 12(b)(6); this court reverses in part and remands, affirming in part the dismissal of indirect infringement.
- Superior’s direct infringement claim for the '231 patent is revived under Form 18 pleading requirements, while its claims for induced and contributory infringement remain dismissed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does the 2009 trademark action bar the patent claim for the '101 patent? | The two suits arise from separate transactions and different operative facts. | They arise from the same nucleus of operative facts—Thor's FB undercarriage advertising/offering for sale. | No; not precluded. |
| Should claim preclusion apply where trademark and patent claims arise from different transactions? | Different transactions mean different causes of action. | The same overarching conduct supports both actions. | Not barred; separate transactions basis governs. |
| Is Superior's claim under the '231 patent adequately pleaded under Form 18 for direct infringement? | Form 18 pleading requirements are met; Superior provided notice and relief requests. | Indirect infringement pleading fails; actionable facts for direct infringement are insufficient. | Direct infringement pleaded plausibly; Form 18 satisfied; indirect infringement dismissed. |
| Are Superior's trademark and patent claims the same cause of action for res judicata purposes? | They are different claims with different legal standards. | They arise from related advertising and sales activities and should be one action. | They constitute separate causes of action for res judicata purposes. |
Key Cases Cited
- In re Bose Corp., 476 F.3d 1331 (Fed. Cir. 2007) (claim preclusion and res judicata principles in patent contexts)
- Research Corp. Techs., Inc. v. Microsoft Corp., 536 F.3d 1247 (Fed. Cir. 2008) (synthetic patent-law issues and substantive/preclusive analysis)
- Acumed LLC v. Stryker Corp., 525 F.3d 1319 (Fed. Cir. 2008) (same transaction approach to claim preclusion in patent cases)
- Lane v. Peterson, 899 F.2d 737 (8th Cir. 1990) (test for same nucleus of operative facts under res judicata)
- Cambridge v. United States, 558 F.3d 1331 (Fed. Cir. 2009) (Rule 12(b)(6) standard and procedural review in patent cases)
- CoreBrace LLC v. Star Seismic LLC, 566 F.3d 1069 (Fed. Cir. 2009) (procedural posture for evaluating pleadings in patent cases)
- Zutz v. Nelson, 601 F.3d 842 (8th Cir. 2010) (pleading standards apply to patent infringement claims)