Trademark and Patent Infringement Claims Constitute Separate Causes of Action
November 27, 2012
Last Month at the Federal Circuit - December 2012
Judges: Rader (author), Mayer (dissenting), Schall
[Appealed from: D. Minn., Chief Judge Davis]
In Superior Industries, LLC v. Thor Global Enterprises Ltd., No. 11-1549 (Fed. Cir. Nov. 27, 2012), the Federal Circuit held that claims of trademark infringement and patent infringement related to the same product do not constitute the same cause of action for the purposes of claim preclusion. Additionally, the Court reversed-in-part the dismissal of plaintiff’s patent infringement claims for failure to state a claim for relief that is plausible on its face, holding that the plaintiff sufficiently pleaded direct infringement, but not induced or contributory infringement.
On August 4, 2009, Superior Industries, LLC (“Superior”) initiated a trademark infringement action
(“the 2009 Trademark Action”) based on an October 2007 press release from Thor Global Enterprises Ltd. (“Thor”) that included Superior’s “FB” trademark. The 2009 Trademark Action ended in a consent judgment. Two months later, Superior brought a patent infringement suit against Thor, alleging direct, induced, and contributory infringement of U.S. Patent Nos. 7,470,101 (“the ’101 patent”) and 7,618,231 (“the ’231 patent”) based on Thor’s FB Undercarriage Technology, the same technology advertised in the 2007 press release.
The district court dismissed Superior’s patent infringement claims for the ’101 patent based on claim preclusion because “[b]oth the trademark claims and the patent claims arise from and are based on the October 2007 press releases issued by Thor . . . and the point of sale displays allegedly distributed by Thor.” Slip op. at 5. And, while the district court found that claim preclusion did not apply to Superior’s claims for the ’231 patent because it issued after the 2009 Trademark Action, it dismissed Superior’s claims under Federal Rule of Civil Procedure 12(b)(6) for failing to state a claim for relief.
On appeal, the Federal Circuit held that the 2009 Trademark Action did not preclude Superior’s patent infringement claim because the two claims arose from clearly separate transactions. Further, the Court explained that “separate cases under separate laws do not constitute the same cause of action.” Id. at 9-10. Differentiating trademark and patent claims, the Federal Circuit emphasized that a “federal trademark infringement claim involves the defendant’s use of the plaintiff’s registered mark ‘in connection with the sale, offering for sale, distribution, or advertising, of any goods or services’ in a manner ‘likely to cause confusion, to cause mistake, or to deceive.’” Id. at 10 (quoting 15 U.S.C. § 1114). By contrast, the Court explained, patent infringement arises when an authorized party makes, offers to sell, or sells any patented invention. Focusing on the different standards, the Court concluded that Thor’s advertising at issue in the 2009 Trademark Action did not constitute an offer for sale for purposes of patent infringement because it contains no price terms. Thus, this could not be the operative fact that gave rise to Superior’s patent infringement claims. Therefore, the Court held that Superior’s trademark infringement and patent infringement claims constituted separate causes of action, and the district court erred in concluding that claim preclusion barred Superior’s claim for infringement of the ’101 patent.
The Federal Circuit then turned to the district court’s dismissal of Superior’s infringement claims for failure to plead sufficient factual matter to state a plausible claim for relief. The Court found that Superior’s complaint met the pleading standard for direct infringement provided by Form 18 of the Federal Rules of Civil Procedure. But the Federal Circuit also held that “Superior’s complaint falls far short of pleading facts necessary to state a plausible claim for either induced or contributory infringement.” Id. at 13. Particularly, the Court reasoned that “Superior does not allege that the accused products are ‘especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use,’ as required by 35 U.S.C. § 271(c),” nor does Superior allege “any facts to support a reasonable inference that Thor specifically intended to induce infringement of the ’231 Patent or that it knew it had induced acts that constitute infringement.” Id. at 13-14. Accordingly the Court reversed the district court’s dismissal of Superior’s claims for direct infringement, but affirmed the dismissal of Superior’s indirect infringement claims.
Judge Mayer dissented, stating that in his view, claim preclusion should bar Superior’s patent infringement claims “because they arise from the same nucleus of operative facts that gave rise to its 2009 trademark infringement action.” Mayer Dissent at 1. Judge Mayer noted that Superior’s patent infringement claims “could and should have been asserted during the 2009 trademark infringement action.” Id. at 2. In contrast to the majority opinion, Judge Mayer wrote that “notwithstanding the fact that patent and trademark infringement invoke different areas of substantive law, Superior was required to bring its patent infringement action concurrently with its trademark suit because both claims relate to the same advertising materials,” concluding that “such materials were clearly sufficient to put Superior on notice that it had a potential patent infringement claim.” Id. at 6. Judge Mayer expressed no view on whether or not the district court correctly dismissed Superior’s claims pursuant to Rule 12(b)(6).
Summary authored by R. Benjamin Cassady, Esq.