A recent Federal Circuit decision permitted claims of patent infringement and trademark infringement may be brought in two separate lawsuits, even though the claims were filed by the same plaintiff and accused the same product of infringement.
The Court’s decision arose from a dispute between portable conveyor manufacturers Superior Industries, LLC and Thor Global Enterprises, Ltd. Superior originally brought a trademark infringement action against Thor, asserting that Thor infringed Superior’s registered “FB” trademark by using the FB mark in Thor’s press releases and point-of-sale displays for a portable conveyor system. That lawsuit ended with a consent judgment that enjoined Thor from using the mark in connection with certain products.
Approximately 14 months after the consent judgment, Superior filed a second lawsuit in which it accused Thor’s portable conveyor system of infringing three U.S. patents. Thor moved to dismiss the case, arguing that the claims were precluded by the earlier-filed trademark suit. The district court agreed with Thor with respect to two of the patents, stating that “[t]he only reason the earlier suit did not contain patent allegations is because Superior Chose not to make them.” (The third patent had not yet granted at the time of the trademark suit.)
On appeal, the Federal Circuit reversed. In Superior Industries, LLC v. Thor Global Enterprises Ltd. (No. 2011-1549, Nov. 27, 2012), the Court explained that the patent and trademark suits involved different causes of action, each with a different set of facts. “Superior’s trademark claims arose from Thor’s use of the FB mark in advertising – not from actual sales or offers for sale of the [product].” In contrast, the patent infringement claims related to sales and offers to sale of the products themselves.
Accordingly, the Court found that the patent and trademark suits involved very different transactions. Notably, the Court did not address whether Superior could have brought its patent claim if the trademark suit had related to use of the mark on the products themselves. So, it’s not yet clear whether this case will have a broad impact, or whether its application will be limited to situations where the two lawsuits involve entirely different transactions.