The Federal Circuit overruled a district court's ruling that a patent infringement claim was barred by an earlier trademark infringement suit between the same parties. The Federal Circuit found that the trademark and patent claims arose from distinct infringing activity and different nuclei of operative facts, as the trademark suit stemmed from the use of a mark in advertising while the patent suit involved actual sales or offers for sale. As such, the plaintiff was not precluded from filing separate trademark and patent infringement suits against the same party regarding the same patent.

1. December 6, 2012 A Trademark Claim Will Not Preclude a Later Patent Infringement Suit
Intellectual Property Client Alert
The Federal Circuit overruled a district court ruling that a patent infringement claim was
This Alert provides only barred by an earlier trademark infringement suit between the same parties. Superior Indus.
general information and
LLC v. Thor Global Enters. Ltd., Case No. 2011-1549 (Fed. Cir. Nov. 27, 2012).
should not be relied upon as In 2009, Superior successfully sued Thor for infringing its FB “Fully Braced” mark for
legal advice. This Alert may conveyors and undercarriage assemblies. After the suit closed, Superior sued Thor in June
be considered attorney 2010 claiming that Thor infringed two patents with Thor’s undercarriage technology. The
Minnesota District Court dismissed the latter-filed patent infringement suit, holding that
advertising under court and
Superior was precluded from alleging infringement since both suits arose from the same
bar rules in certain nucleus of operative facts – Thor offering “FB” undercarriage technology for sale in the United
jurisdictions. States. The Court held that claim preclusion applied with respect to one patent because
Superior could have included patent allegations in its previous suit, but chose not to.
For more information, contact
The Federal Circuit rejected the lower court’s ruling, finding that Superior’s trademark claim
your Patton Boggs LLP stemmed from Thor’s use of the “FB” mark in advertising, not actual sales or offers for sale.
attorney or the authors listed This rendered the trademark and patent claims distinct causes of action. The Court held, “[i]n
below.
this case, the 2009 trademark action does not preclude Superior’s patent infringement claim
because the two claims arise from clearly separate transactions.”
Richard J. Oparil
roparil@pattonboggs.com
This decision clarifies that plaintiffs will not be barred from filing separate trademark and
patent infringement suits against the same party on the same patent, where claims stem from
Caroline C. Maxwell distinct infringing activity that do not arise from the same nucleus of operative facts.
cmaxwell@pattonboggs.com
The Superior Industries opinion may be found here.
WWW.PATTONBOGGS.COM
This Alert provides only general information and should not be relied upon as legal advice. This Alert may also be considered
attorney advertising under court and bar rules in certain jurisdictions.
WASHINGTON DC | NEW JERSEY | NEW YORK | DALLAS | DENVER | ANCHORAGE | DOHA | ABU DHABI | RIYADH