This is an interesting case that deals with several different components of intellectual property law including: patents, trademarks, and civil procedure.
Prior to the court of appeals ruling for this case, the district court of Minnesota dismissed this case based on claim preclusion reasoning that Superior’s prior trademark action raised from the same operative facts as their patent infringement suit. Therefore, the district court incorrectly rules that Superior was barred from bringing an additional patent infringement suit against Thor Global after they had already brought a trademark suit.
Superior is the owner by assignment of US patent number 7,284,947, 741,101, and 7,618,231 which are directed toward various “Braced Telescoping Support Struts and Systems.” Essentially, these patent claims portable conveyors that transport and stockpile, rock, sand grain, etc., and Superior alleges that their patents improve undercarriage systems by enabling portable conveyors to extend and operate safely and stably at heights above conventional conveyors. Also, superior claimed to have coined the term “fully braced” to refer to the new undercarriage.
Thor is a competitor of Superior, and filed a US patent application titled “Undercarriage for Telescopic Frame” on July 12, 2007 which discloses a similar frame to those disclosed in Superior’s patents. Additionally, Thor issued a press release stating that their new “FB (Fully Braced) Undercarriage technology” is currently being applied to their new series of telescopic stackers.
Initially on August 4, 2009, Superior initiated a trademark infringement lawsuit against Thor, alleging that Thor infringed its registered FB trademark through Thor’s use of the mark in the press release. In response, the district court permanently enjoined Thor from using the trademark “FB” in connection with telescopic conveyors.
Subsequently on June 21, 2010, Superior filed a patent infringement suit against Thor claiming that Thor had infringed upon their patent. The district court dismissed Superior’s claim alleging that Superior waived their right from filing a patent suit but not bringing the suit during the prior infringement suit because “both lawsuits arise from the same nucleus or operative facts-Thor’s offering for sale its FB undercarriage technology in the US.”
The court of appeals rejected the district court’s reasoning stating that claim preclusion bars a party from bringing repetitive law suits involving the same cause of action, however, these two causes do not involve the same nucleus of operative facts because the two cases arise from separate transactions. Specifically, the court of appeals reasoned that Superior’s patent claims arise from sales, offers to sell, and/or importation of goods, and their trademark suit arose from the use of the mark in advertising. More so, the court of appeals stated that Thor’s advertisement of the conveyor with the undercarriage systems baring the “FB” mark could not be held as “an offer to sell” under patent law because there were no price terms on the advertisements.
Austin Patent Attorney’s Take-a-ways:
1) It appears that res judicata in this case was not upheld because of the fact that Thor had not included a price on their advertisement with Superior’s “FB” trademark. This may be held analogous for other bar dates for when you can apply for a patent. For example, the bar date for an “offer to sale/on” can be argued if there are no price terms negotiated or discussed on an advertisement.
2) If bringing a patent infringement suit, make sure the suit is timely filed. If appears in this case, if Superior had filed a patent infringement suit at the same time as their trademark suit, then the patent suit would have been dismissed because there was no offer to sale the product under patent terms. If a client desires to go forward with a patent suit, make sure that an infringing product is already on the market or in advertisements with a price.