CAFC tackles a mixed patent/trademark issue

Chief Judge Rader in Superior v. Thor :

The United States District Court for the District of Minnesota dismissed with prejudice a patent infringe- ment complaint filed by Superior Industries, LLC (“Supe- rior”) against Thor Global Enterprises Ltd. (“Thor”) in part based on claim preclusion and in part for failure to state a claim under Rule 12(b)(6) of the Federal Rules of Civil Procedure. Superior Indus., LLC v. Thor Global Enters. Ltd., No. 10-CV-2524, 2011 WL 3100335, at *3 (D. Minn. July 22, 2011). Because Superior’s prior trademark infringement action did not arise from the same operative facts, and because Superior’s patent infringement com- plaint meets the pleading requirements of Form 18 of the Federal Rules of Civil Procedure, this Court reverses and remands for further proceedings. This court affirms the dismissal of Superior’s claims of indirect infringement of U.S. Patent No. 7,618,231.

Of applicable law:

this court looks to Federal Circuit precedent to resolve underlying issues of substantive patent law, such as the operative facts involved in a claim for patent infringement. See, e.g., Acumed LLC v. Stryker Corp., 525 F.3d 1319, 1323 (Fed. Cir. 2008) (applying Federal Circuit law to determine whether two claims for patent infringement are identical for claim preclusion purposes).

and

claim preclusion does not arise merely because the plaintiff was aware of independent facts that gave rise to a separate cause of action against the defendant at the time it brought suit. Acumed LLC v. Stryker Corp., 525 F.3d 1319, 1325–26 (Fed. Cir. 2008).

Bottom line:

Because Superior’s First Amended Complaint meets the pleading standard of Form 18, this court reverses the district court’s dismissal of Superior’s claims for direct infringement of the ’231 Patent, but affirms the dismissal of Superior’s claims for indirect infringement.

Judge Mayer dissented:

I respectfully dissent. Res judicata bars the patent infringement claims asserted by Superior Industries, LLC (“Superior”) against Thor Global Enterprises Ltd. (“Thor”) because they arise from the same nucleus of operative facts that gave rise to its 2009 trademark infringement action.

and

The majority errs when it concludes that Superior’s
patent infringement action is not based upon the same
nucleus of operative facts as its earlier trademark in-
fringement suit. Factors important in determining
whether two claims arise from the same set of operative
facts include whether they “are related in time, space,
origin, or motivation” and “whether they form a conven-
ient trial unit.” Lane, 899 F.2d at 742 (citations and
internal quotation marks omitted). Here, Superior’s
patent and trademark claims both relate to Thor’s fully-
braced undercarriages for portable conveyer systems,
which were advertised and allegedly offered for sale in
2007.