United States Court of Appeals
for the Federal Circuit
__________________________
SUPERIOR INDUSTRIES, LLC,
Plaintiff-Appellant,
v.
THOR GLOBAL ENTERPRISES LTD,
Defendant-Appellee,
__________________________
2011-1549
__________________________
Appeal from the United States District Court for the
District of Minnesota in Case No. 10-CV-2524, Chief
Judge Michael J. Davis.
___________________________
Decided: November 27, 2012
___________________________
JOHN M. WEYRAUCH, Dicke, Billig & Czaja, PLLC, of
Minneapolis, Minnesota, argued for plaintiff-appellant.
With him on the brief were PATRICK G. BILLIG and PAUL P.
KEMPF.
CHRISTOPHER T. HOLLAND, Krieg Keller Sloan Reilley
& Roman LLP, of San Francisco, California, argued for
defendant-appellee. With him on the brief was MATTHEW
T. PETERS.
__________________________
SUPERIOR INDUSTRIES v. THOR GLOBAL 2
Before RADER, Chief Judge, MAYER and SCHALL, Circuit
Judges. Dissenting opinion filed by Circuit Judge MAYER.
RADER, Chief Judge.
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.
I
Superior is the exclusive owner by assignment of U.S.
Patent Nos. 7,284,947 (the “’947 Patent”), 7,470,101 (the
“’101 Patent”), and 7,618,231 (the “’231 Patent”) (collec-
tively, the “Superior Patents”). The Superior Patents
claim priority to an October 26, 2006 application and
cover a “Braced Telescoping Support Strut and System.”
This claimed system supports a portable conveyor assem-
bly. Portable conveyors transport and stockpile rock,
sand, grain, and other aggregate material. Superior
alleges its patents claim an improved undercarriage
system that enables portable conveyors to safely and
stably extend to, and operate at, heights above previous
conveyors. The invention improves the prior art with
cross bracing between the upper and lower support beams
3 SUPERIOR INDUSTRIES v. THOR GLOBAL
that does not interfere with the extension or retraction of
the upper support beams. Superior claims to have coined
the term “fully braced” to refer to the new undercarriage.
Based on an intent-to-use trademark application filed on
October 3, 2007, Superior owns the registered trademark
“FB” for height-adjustable bulk material belt conveyors
and undercarriage assemblies (U.S. Trademark Registra-
tion No. 3,502,855).
Thor is a Canadian company that competes with Su-
perior in the portable conveyor market. On July 12, 2007,
Thor filed a U.S. patent application for an “Undercarriage
for a Telescopic Frame” (the “Thor Patent Application”),
which discloses a telescoping frame similar to that
claimed in the Superior Patents.
On October 1, 2007, Thor issued a press release on its
website describing a conveyor system with a new
“PATENT-PENDING FB Undercarriage” (the “Thor
Undercarriage Technology”). The press release states
that the “FB (Fully Braced) Undercarriage technology . . .
is currently being applied to all new T150-20, T150-12/15,
T135-12/15 and T170-5/8/10 ThorStack2™ series tele-
scopic stackers as well as other lifting devices.” J.A. 148.
The release provides no details about the selling price or
other terms of sale for Thor’s telescopic stackers. Also in
October 2007, Thor distributed point-of-sale displays,
identical to the press release, to numerous dealers
throughout the United States.
On August 4, 2009, Superior initiated a trademark in-
fringement action in the District of Minnesota (the “2009
Trademark Action”). Superior asserted Thor infringed its
registered “FB” trademark through Thor’s use of the mark
in its press releases and point-of-sale displays. The 2009
Trademark Action ended in a Consent Judgment dated
April 7, 2010, which permanently enjoined Thor from
SUPERIOR INDUSTRIES v. THOR GLOBAL 4
further use of the “FB” trademark in connection with
Thor’s undercarriage assemblies or portable conveyors.
On June 21, 2010, Superior filed suit against Thor for
infringement of Superior’s ’101 and ’231 Patents. Supe-
rior’s First Amended Complaint alleges that Thor “has
been and is directly infringing, actively inducing others to
infringe and/or contributing to the infringement of one or
more claims of the ’101 [and ’231] Patent[s] by its unau-
thorized making, using, offering to sell, selling and/or
importing a telescoping conveyor having the Thor Under-
carriage Technology in and/or to the United States.” J.A.
112–13. The complaint alleges that Thor admitted during
the 2009 Trademark Action that it had used “the mark
‘FB’ in connection with ‘multiple sales offerings to cus-
tomers, dealers and distributors in the United States [for
conveyor systems and/or related undercarriage systems],
and sold such goods into commerce in the United States’”
before Superior’s October 3, 2007 intent-to-use application
for the “FB” mark. J.A. 112 (quoting Thor’s Answer,
Affirmative Defenses and Counterclaims in the 2009
Trademark Action) (alterations in original). In April and
May 2010, Superior purports to have questioned Thor
about its current selling, offering for sale, and/or import-
ing the Thor Undercarriage Technology into the United
States. Superior alleges that, in response, it received only
“evasive responses and conclusory opinions from Thor
that the Thor Undercarriage Technology did not infringe
Superior’s patents.” Id.
The district court dismissed Superior’s claims for in-
fringement of the ’101 Patent on the basis of claim preclu-
sion. The district court noted that Superior “referenced
the ’947 Patent” in its complaint filed in the 2009 Trade-
mark Action, and found “[t]he only reason the earlier suit
did not contain patent allegations is because Superior
chose not to make them.” Superior, 2011 WL 3100335, at
5 SUPERIOR INDUSTRIES v. THOR GLOBAL
*5. The court found “both lawsuits arise from the same
nucleus of operative facts–Thor’s offering for sale its FB
undercarriage technology in the United States. Both the
trademark claims and the patent claims arise from and
are based on the October 2007 press releases issued by
Thor describing its ‘Patent-Pending FB Undercarriage
Technology’ and the point of sale displays allegedly dis-
tributed by Thor to dealers throughout the United
States.” Id.
As to the ’231 Patent, the district court determined
that claim preclusion did not apply because the ’231
Patent did not issue until more than three months after
Superior filed its complaint in the 2009 Trademark Ac-
tion. Id. The district court dismissed Superior’s claim
based on Rule 12(b)(6) of the Federal Rules of Civil Proce-
dure, however, finding Superior did not state a claim for
relief that is plausible on its face. Id. at *6. The court
found Superior did not plead sufficient factual matter to
support its claim that Thor sold or offered for sale infring-
ing products in the United States after the ’231 Patent
issued. Id. The district court held Superior could not rely
on Thor’s admission in the 2009 Trademark Action that it
had sold and offered for sale the Thor Undercarriage
Technology, because the admitted activities predated
issuance of the ’231 Patent. Id.
II
Claim preclusion is an issue of law reviewed without
deference. In re Bose Corp., 476 F.3d 1331, 1334 (Fed.
Cir. 2007). The law of the regional circuit—in this case
the United States Court of Appeals for the Eighth
Circuit—applies to the general principles of claim
preclusion. See Mars, Inc. v Nippon Conlux Kabushiki-
Kaisha, 58 F.3d 616, 618 (Fed. Cir. 1995). Federal Circuit
law, however, applies to “issues of substantive patent law
SUPERIOR INDUSTRIES v. THOR GLOBAL 6
and certain procedural issues pertaining to patent law.”
Research Corp. Techs., Inc. v. Microsoft Corp., 536 F.3d
1247, 1255 (Fed. Cir. 2008). Thus, 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).
This court reviews without deference a district court’s
Rule 12(b)(6) dismissal for failure to state a claim.
Cambridge v. United States, 558 F.3d 1331, 1335 (Fed.
Cir. 2009). “The question whether a Rule 12(b)(6) motion
was properly granted is a purely procedural question not
pertaining to patent law, to which this court applies the
rule of the regional circuit.” CoreBrace LLC v. Star
Seismic LLC, 566 F.3d 1069, 1072 (Fed. Cir. 2009)
(quoting Gen. Mills, Inc. v. Kraft Foods Global, Inc., 487
F.3d 1368, 1373 (Fed. Cir. 2007)) (alterations omitted).
III
The doctrine of res judicata, more specifically referred
to as claim preclusion, bars a party from bringing “repeti-
tive suits involving the same cause of action.” Lundquist
v. Rice Mem’l Hosp., 238 F.3d 975, 977 (8th Cir. 2001)
(citation omitted). Under Eighth Circuit law, claim
preclusion “bars relitigation of a claim if: (1) the prior
judgment was rendered by a court of competent jurisdic-
tion; (2) the prior judgment was a final judgment on the
merits; and (3) the same cause of action and the same
parties or their privies were involved in both cases.” Lane
v. Peterson, 899 F.2d 737, 742 (8th Cir. 1990).
Superior and Thor do not dispute that the 2009
Trademark Action involved the same parties and resulted
7 SUPERIOR INDUSTRIES v. THOR GLOBAL
in a final judgment on the merits entered by a court of
competent jurisdiction. See Superior Indus., LLC v. Thor
Global Enters. Ltd., No. 09–cv-02035 (D. Minn. Apr. 7,
2010) (Consent Judgment in the 2009 Trademark Action).
Superior’s claim for patent infringement is thus barred by
claim preclusion if the 2009 Trademark Action constitutes
the “same cause of action.”
Two cases involve the same cause of action when they
arise from the same “nucleus of operative facts”—i.e.,
when the same “transaction or series of transactions”
forms the basis for the two suits. Lane, 899 F.2d at 742.
The Eighth Circuit determines whether two claims arise
from the same set of transactional facts by asking
whether the facts “are related in time, space, origin, or
motivation, whether they form a convenient trial unit,
and whether their treatment as a unit conforms to the
parties’ expectations or business understanding or usage.”
Id. (quoting Restatement (Second) of Judgments § 24
(1980)).
A claim in a second action may still be precluded even
if it involves proof of some facts that were not operative
for the prior action. Id. at 743. Significant differences in
the necessary proof, however, may indicate that the two
claims simply are not based on the same nucleus of opera-
tive fact. Id. at 743 n.5. The Eighth Circuit has adopted
the approach of the Restatement (Second) of Judgments,
which is:
to see [the] claim in factual terms and to make it
coterminous with the transaction regardless of the
number of substantive theories, or variant forms
of relief flowing from those theories, that may be
available to the plaintiff; regardless of the number
of primary rights that may have been invaded;
and regardless of the variations in the evidence
SUPERIOR INDUSTRIES v. THOR GLOBAL 8
needed to support the theories or rights. The
transaction is the basis of the litigative unit or en-
tity which may not be split.
Id. at 743 (quoting Restatement (Second) of Judgments
§ 24 cmt. a (1980)). Thus, claim preclusion prevents a
plaintiff from suing a second time on a new legal theory
based on the same underlying conduct. Id. at 744 (hold-
ing suit for breach of fiduciary duties under federal law,
and violation of federal securities and bankruptcy laws,
among other legal theories, was barred by a prior suit for
breach of fiduciary duties under Arkansas state laws
based on same events); see also, e.g., Mills v. Des Arc
Convalescent Home, 872 F.2d 823, 826–27 (8th Cir. 1989)
(Title VII claim barred later § 1981 claim based on same
wrongful termination); Chester v. St. Louis Hous. Auth.,
873 F.2d 207, 208–09 (8th Cir. 1989) (procedural due
process claim arising from plaintiff’s demotion and resig-
nation barred later Title VII and equal protection act
claims based on same facts).
Thor and the district court emphasize that Superior
“could have brought” its claim for infringement of the ’101
Patent at the time it filed the 2009 Trademark Action
because the patent had issued by that time. Superior,
2011 WL 3100335, at *5. Although cases frequently state
that claim preclusion prevents parties “from relitigating
issues that were or could have been raised” in a prior
action, see, e.g., Federated Dep’t. Stores, Inc. v. Moitie, 452
U.S. 394, 398 (1981) (emphasis added); Lane, 899 F.2d at
741, such statements require some additional context.
Claim preclusion only applies to repetitious suits involv-
ing the same cause of action. Comm’r of Internal Revenue
v. Sunnen, 333 U.S. 591, 597–98 (1948) (explaining that
in a subsequent suit on the same cause of action, parties
are bound by matters that could have been raised in the
prior litigation, but in a subsequent suit on a different
9 SUPERIOR INDUSTRIES v. THOR GLOBAL
cause of action, parties are free to litigate points which
might have been tendered in the first suit); Restatement
(Second) of Judgments § 24 cmt. a (1980) (“‘Claim,’ in the
context of res judicata, has never been broader than the
transaction to which it related”); Lane, 899 F.2d at 742
(holding claim preclusion requires the “same cause of
action” to be involved in both suits). Thus, in discussions
of claim preclusion, “the phrase ‘claims that were raised
or could have been raised,’ refers to legal theories arising
out of the same transactional nucleus of facts.” Hells
Canyon Pres. Council v. U.S. Forest Serv., 403 F.3d 683,
686 n.2 (9th Cir. 2005).
Thus, 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). In Acumed, this
court reversed a decision finding a patent infringement
claim precluded where the patentee previously sued the
defendant for infringement of the same patent, but on a
different product. Id. at 1326. At the time of the first
suit, the record in Acumed shows that the patentee knew
that the defendant was selling both products in the
United States. Nonetheless, this did not preclude the
second suit because it arose from different transactional
facts—namely, the sale of a different product. Id. at 1325.
Thor has not cited any Eighth Circuit cases that suggest
claim preclusion ever applies to bar litigation of a claim
that arises from a different transaction or series of trans-
actions than was at issue in a prior litigation between the
same parties.
In this case, the 2009 Trademark Action does not pre-
clude Superior’s patent infringement claim because the
two claims arise from clearly separate transactions. In
other words, these separate cases under separate laws do
SUPERIOR INDUSTRIES v. THOR GLOBAL 10
not constitute the same cause of action. The district court
erred in finding that “both lawsuits arise from the same
nucleus of operative facts—Thor’s offering for sale its FB
undercarriage technology in the United States.” Superior,
2011 WL 3100335, at *5. 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 Thor Undercar-
riage Technology in the United States. Stated in other
terms, Superior’s patent infringement claim arises from
sales, offers to sell, or importation of goods that allegedly
infringe the ’101 Patent—not from the advertising or use
of the FB mark at issue in the 2009 Trademark Action.
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.” 15
U.S.C. § 1114 (emphasis added); see also Jet, Inc. v.
Sewage Aeration Sys., 223 F.3d 1360, 1363 (Fed. Cir.
2000). Superior’s trademark claims were not premised on
actual sales or offers for sale of conveyor or undercarriage
systems in the United States, much less on sales of the
specific technology covered by the Superior Patents.
Superior specifically alleged in the 2009 Trademark
Action—and Thor admitted—that Thor had not sold
conveyor or undercarriage systems bearing the “FB” mark
in the United States. Thus, no “sale” of “goods or ser-
vices” could have provided the statutory basis for a
trademark infringement claim under 15 U.S.C. § 1114.
Instead, the series of transactions that gave rise to the
2009 Trademark Action was Thor’s use of the FB mark in
the point-of-sale displays and press releases advertising
Thor’s portable conveyor systems.
A claim for patent infringement, by contrast, arises
when an unauthorized party “makes, uses, offers to sell,
11 SUPERIOR INDUSTRIES v. THOR GLOBAL
or sells any patented invention, within the United States
or imports into the United States any patented invention
during the term of the patent . . .” 35 U.S.C. § 271(a). An
“offer for sale” sufficient to give rise to liability for patent
infringement must meet the traditional contract law
definition of that term. Rotec Indus., Inc. v. Mitsubishi
Corp., 215 F.3d 1246, 1255 (Fed. Cir. 2000). Thus, “the
defendant must communicate a manifestation of willing-
ness to enter into a bargain, so made as to justify another
person in understanding that his assent to that bargain is
invited and will conclude it.” MEMC Elec. Materials, Inc.
v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1376
(Fed. Cir. 2005) (internal quotations and alterations
omitted). Communications that describe the allegedly
infringing materials but “do not contain any price terms .
. . on their face . . . cannot be construed as an ‘offer’ which
[the offeree] could make into a binding contract by simple
acceptance.” Id.
Thor’s advertising at issue in the 2009 Trademark Ac-
tion did not constitute an “offer for sale” for purposes of
patent infringement because it contains no price terms.
See J.A. 148–50. It cannot be the “operative fact” that
gives rise to Superior’s patent infringement claim. To be
sure, Superior’s complaint for patent infringement refers
to the same advertisements for the Thor Undercarriage
Technology that were at issue in the 2009 Trademark
Action, as well as to Thor’s admissions in that action that
it sold such undercarriage systems in the United States
before Superior’s use of the FB trademark (and prior to
issuance of the ’101 Patent). While these are not the
operative facts that give rise to Superior’s claim for patent
infringement, they may support the inference that, after
Superior’s ’101 and ’231 Patents issued, Thor continued to
sell, offer for sale, or import into the United States the
allegedly infringing goods.
SUPERIOR INDUSTRIES v. THOR GLOBAL 12
In sum, Superior’s claims for trademark infringement
and patent infringement constitute separate causes of
action. Because the district court erred in concluding that
claim preclusion barred Superior’s claim for infringement
of the ’101 Patent, this court reverses and remands for
further proceedings.
IV
The district court dismissed Superior’s claim for in-
fringement of the ’231 Patent under Rule 12(b)(6), finding
Superior failed to plead sufficient factual matter to state a
claim for relief that is plausible on its face. Superior,
2011 WL 3100335, at *6; see Zutz v. Nelson, 601 F.3d 842,
848 (8th Cir. 2010).
In a complaint for patent infringement under § 271(a),
Form 18 of the Federal Rules of Civil Procedure provides
the pleading standard. In re Bill of Lading Transmission
& Processing Sys. Patent Litig. (R+L Carriers, Inc. v.
DriverTech LLC), 681 F.3d 1323, 1334 (Fed. Cir. 2012).
Form 18 requires “(1) an allegation of jurisdiction; (2) a
statement that the plaintiff owns the patent; (3) a state-
ment that defendant has been infringing the patent ‘by
making, selling, and using [the device] embodying the
patent’; (4) a statement that the plaintiff has given the
defendant notice of its infringement; and (5) a demand for
an injunction and damages.” Id. (quoting McZeal v.
Sprint Nextel Corp., 501 F.3d 1354, 1357 (Fed. Cir. 2007)
(alteration in original)). Although the parties do not
discuss the Form 18 pleading standard, this court ac-
knowledges that standard to review the dismissal. Id.
Superior’s First Amended Complaint (1) alleges juris-
diction, J.A. 109 ¶¶ 3–5; (2) states that Superior owns the
’101 and ’231 Patents, J.A. 110–11 ¶¶ 8–10; (3) states that
Thor is infringing the ’101 and ’231 patents by selling,
offering to sell, or importing “a telescoping conveyor
13 SUPERIOR INDUSTRIES v. THOR GLOBAL
having the Thor Undercarriage Technology” into the
United States, J.A. 112–13, ¶¶ 17, 22, and Thor’s press
releases attached to the complaint provide model numbers
for the accused products, J.A. 148–150; (4) gives Thor
notice of its infringement, see 35 U.S.C. § 287(a); and (5)
includes a prayer for relief in the form of an injunction
and damages, J.A. 114. In addition, Superior's First
Amended Compliant indicates that Thor also received
written notice of its alleged infringement through com-
munications from Superior in 2010. J.A. 112 ¶ 15 (“Sub-
sequent communications in April and May 2010 by and
between Superior and Thor to confirm whether Thor was
selling, offering for sale and/or importing Thor Undercar-
riage Technology into the United States were met with
evasive responses and conclusory opinions from Thor that
the Thor Undercarriage Technology did not infringe
Superior's patents.”) (emphasis added). This correspon-
dence also served to give Thor notice of Superior's claim of
infringement. The complaint therefore adequately pleads
direct infringement of the ’101 and ’231 Patents. This
allegation contains each element of a claim for direct
patent infringement.
The complaint also alleges induced and contributory
infringement of the ’101 and ’231 Patents. Form 18 does
not determine the sufficiency of pleading for claims of
indirect infringement. R+L Carriers, 681 F.3d at 1336.
Rather, the pleading requirements set forth in Bell Atl.
Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v.
Iqbal, 556 U.S. 662 (2009) apply to such claims. Id. This
court finds Superior’s complaint falls far short of pleading
facts necessary to state a plausible claim for either in-
duced or contributory infringement.
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
SUPERIOR INDUSTRIES v. THOR GLOBAL 14
commodity of commerce suitable for substantial nonin-
fringing use” as required by 35 U.S.C. § 271(c). Similarly,
Superior does not allege any facts to support a reasonable
inference that Thor specifically intended to induce in-
fringement of the ’231 Patent or that it knew it had
induced acts that constitute infringement. See R+L
Carriers, 681 F.3d at 1339. This court therefore affirms
the dismissal of Superior’s claims of indirect infringement
under 35 U.S.C. §§ 271(b) and (c).
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.
V
Accordingly, the judgment of the district court is af-
firmed-in-part, reversed-in-part, and remanded.
AFFIRMED-IN-PART, REVERSED-IN-PART, AND
REMANDED
COSTS
Costs to Superior.
United States Court of Appeals
for the Federal Circuit
__________________________
SUPERIOR INDUSTRIES, LLC,
Plaintiff-Appellant,
v.
THOR GLOBAL ENTERPRISES LTD.,
Defendant-Appellee.
__________________________
2011-1549
__________________________
Appeal from the United States District Court for the
District of Minnesota in case no. 10-CV-2524, Chief Judge
Michael J. Davis.
__________________________
MAYER, Circuit Judge, dissenting.
I respectfully dissent. Res judicata bars the patent in-
fringement 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.
I.
“A final judgment on the merits of an action precludes
the parties or their privies from relitigating issues that
were or could have been raised in that action.” Federated
Dep’t Stores, Inc. v. Moitie, 452 U.S. 394, 398 (1981)
(emphasis added); see also Salazar v. Buono, 130 S. Ct.
SUPERIOR INDUSTRIES v. THOR GLOBAL 2
1803, 1815 (2010) (Res judicata applies “not only as to
every matter which was offered and received to sustain or
defeat [a] claim or demand, but as to any other admissible
matter which might have been offered for that purpose.”
(citations and internal quotation marks omitted) (empha-
sis added)); Migra v. Warren City Sch. Dist. Bd. of Educ.,
465 U.S. 75, 77 n.1 (1984) (“Claim preclusion refers to the
effect of a judgment in foreclosing litigation of a matter
that never has been litigated, because of a determination
that it should have been advanced in an earlier suit.”
(emphasis added)). Res judicata bars Superior’s claims of
infringement based upon U.S. Patent No. 7,470,101 (the
“’101 patent”) because those claims could and should have
been asserted during the 2009 trademark infringement
action it brought against Thor.*
In October 2007, Thor, a Canadian company, posted a
press release on its website touting the advantages of its
“patent-pending” fully-braced undercarriage for portable
conveyor systems. Thor stated that its “FB (Fully Braced)
Undercarriage technology provides a lifting system that is
not only stronger by design, but has a structural integrity
beyond any other undercarriage on the market today.”
Thor further asserted that its “patent-pending FB tech-
nology will ‘once again revolutionize the way telescopic
stackers are made.’”
Superior subsequently registered the mark FB for
height-adjustable bulk material belt conveyors and un-
dercarriage assemblies. See U.S. Trademark Registration
No. 3,502,855. In 2009, Superior sent Thor a letter de-
manding that Thor cease further unauthorized use of its
* I express no view on the issue of whether the dis-
trict court correctly dismissed, pursuant to Rule 12(b)(6)
of the Federal Rules of Civil Procedure, Superior’s claim
alleging direct and indirect infringement of U.S. Patent
No. 7,618,231. See ante at 11-12.
3 SUPERIOR INDUSTRIES v. THOR GLOBAL
FB mark. Thor responded to the letter by stating that it
had superior rights to the FB mark because it had previ-
ously used that mark on “point-of-sale” displays which it
had “distributed to numerous established dealers and
sales contacts throughout the United States.” These
point-of-sale displays, like Thor’s previous press release,
described the advantages of its “patent-pending FB un-
dercarriage” technology.
On August 4, 2009, Superior brought a trademark in-
fringement action against Thor. Instead of including
patent infringement claims in its complaint, however,
Superior waited until June 2010—two months after it
obtained a consent judgment in the trademark action—
before bringing its patent infringement suit. Where, as
here, a litigant brings repetitive suits involving the same
alleged misconduct, res judicata serves to bar assertion of
the subsequently-filed claim. See Mills v. Des Arc Conva-
lescent Home, 872 F.2d 823, 826 (8th Cir. 1989) (Where
two claims “emerge from the same transaction and share
precisely the same nucleus of operative facts,” a litigant
“may not assert them serially, in successive actions, but
must advance all at once on pain of bar.” (citations and
internal quotation marks omitted)).
Res judicata applies when three requirements are
met: (1) there is identity of parties (or their privies); (2)
there has been an earlier final judgment on the merits of
a claim by a court of competent jurisdiction; and (3) two
claims involve “the same cause of action” in that they
arise from “the same nucleus of operative facts.” First
Nat’l Bank v. First Nat'l Bank S.D., 679 F.3d 763,
767 (8th Cir. 2012) (citations and internal quotation
marks omitted); see Banks v. Int’l Union Elec., Elec.,
Technical, Salaried & Mach. Workers, 390 F.3d 1049,
1052 (8th Cir. 2004); Lane v. Peterson, 899 F.2d 737, 742
(8th Cir. 1990). If these three elements are satisfied, “res
SUPERIOR INDUSTRIES v. THOR GLOBAL 4
judicata bars relitigation not only of those matters that
were actually litigated, but also those which could have
been litigated in the earlier proceeding.” King v. Hoover
Group, Inc., 958 F.2d 219, 223 (8th Cir. 1992).
As the majority correctly recognizes, the first two pre-
requisites for the application of res judicata are satisfied
here. There is no dispute that the same parties, Superior
and Thor, were involved in both the earlier trademark
action and in the current patent infringement proceed-
ings. Nor is there any doubt that the consent judgment in
the trademark case was a “final judgment on the merits”
for res judicata purposes. See Envtl. Prot. Agency v. City
of Green Forest, 921 F.2d 1394, 1404 (8th Cir. 1990); see
also Ford-Clifton v. Dep’t of Veterans Affairs, 661 F.3d
655, 660 (Fed. Cir. 2011) (“It is widely agreed that an
earlier dismissal based on a settlement agreement consti-
tutes a final judgment on the merits in a res judicata
analysis.”).
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. The fact that Superior’s trademark and patent
infringement claims are very closely aligned is evidenced
by the fact that Superior’s trademark complaint expressly
referenced U.S. Patent No. 7,284,947, which is the parent
of the ’101 patent. The ’101 patent was prosecuted by the
5 SUPERIOR INDUSTRIES v. THOR GLOBAL
same attorney who represented Superior in both the 2009
trademark action and in the present case. Accordingly, as
the district court correctly concluded, “the trademark and
patent claims would have formed a convenient trial unit,”
and should have been asserted in the same proceeding.
Superior Indus., L.L.C. v. Thor Global Enters. Ltd., No.
10-CV-2524, 2011 WL 3100335, at *5 (D. Minn. July 22,
2011) (“District Court Decision”); see also Mars Inc. v.
Nippon Conlux Kabushiki-Kaisha, 58 F.3d 616, 619 (Fed.
Cir. 1995) (“[A] party may not split a cause of action into
separate grounds of recovery and raise the separate
grounds in successive lawsuits; instead, a party must
raise in a single lawsuit all the grounds of recovery aris-
ing from a single transaction or series of transactions that
can be brought together.”).
II.
The majority asserts that res judicata should not be
applied to bar Superior’s patent claims because the evi-
dence required to prove trademark infringement is not
the same as that required to establish patent infringe-
ment. See ante at 10-11. To the contrary, however, a
party’s reliance “on different substantive law and new
legal theories does not preclude the operation of res
judicata.” Lane, 899 F.2d at 744; see Mills, 872 F.2d at
826-27 (concluding that a litigant’s previous Title VII
claim barred her subsequent claim under 42 U.S.C.
§ 1981); Chester v. St. Louis Hous. Auth., 873 F.2d 207,
208-09 (8th Cir. 1989) (concluding that a party’s previous
procedural due process claim barred his subsequent claim
alleging Title VII and equal protection clause violations);
Gregory v. Chehi, 843 F.2d 111, 117 (3d Cir. 1988) (ex-
plaining that for purposes of claim preclusion, a “‘[c]laim’
is defined broadly in transactional terms, regardless of
the number of substantive theories advanced in the
multiple suits by the plaintiff”). Thus, regardless of
SUPERIOR INDUSTRIES v. THOR GLOBAL 6
whether “a plaintiff fashions a new theory of recovery or
cites a new body of law that was arguably violated by a
defendant’s conduct, res judicata will still bar the second
claim if it is based on the same nucleus of operative facts
as the prior claim.” Lane, 899 F.2d at 744. Accordingly,
notwithstanding the fact that patent and trademark
infringement invoke different areas of substantive law,
Superior was required to bring its patent action concur-
rently with its trademark suit because both claims relate
to the same advertising materials that Thor distributed in
2007.
The majority asserts that Thor’s 2007 advertising ma-
terials could not be the “‘operative fact’” that gave rise to
its patent infringement claim because those materials did
not constitute “offers to sell.” Ante at 11. This reasoning
is not persuasive. Notwithstanding the fact that the 2007
advertising materials did not contain pricing information,
such materials were clearly sufficient to put Superior on
notice that it had a potential patent infringement claim.
The advertising materials, which were “distributed to
numerous established dealers and sales contacts through-
out the United States,” touted the advantages of Thor’s
fully-braced undercarriage system and contained pictures
as well as a detailed description of Thor’s products. Given
that Superior knew that: (1) there were clear similarities
between Thor’s advertised products and those disclosed in
the ’101 patent; and (2) advertisements describing Thor’s
“patent-pending [fully-braced] undercarriage” had been
widely distributed within the United States, Superior’s
argument that it was unaware, when it filed its trade-
mark action, that it had a potential claim for patent
infringement is simply not credible.
Superior did not need irrefutable proof that Thor had
offered to sell its products within the United States before
filing a patent infringement claim. See Coonts v. Potts,
7 SUPERIOR INDUSTRIES v. THOR GLOBAL
316 F.3d 745, 753 (8th Cir. 2003) (explaining that an
attorney is required to “conduct a reasonable inquiry of
the factual and legal basis for a claim before filing”).
Indeed, as Superior acknowledged when it was before the
trial court, “[t]he process is called discovery for a reason.”
Despite the fact that the 2007 advertising materials did
not contain pricing information, they evinced a clear
intent to make Thor’s products available for sale within
the United States and were more than sufficient to put
Superior on notice that it had a potential claim for patent
infringement. Superior has advanced no persuasive
justification for waiting until two months after its trade-
mark case settled to file its patent infringement suit.
Significantly, in responding to Thor’s first motion to
dismiss in the patent action, Superior emphasized that it
had a “plausible” basis for believing that Thor had offered
to sell its products within the United States based upon
“public information” from Thor’s “own website.” Superior
fails to explain why this “public information” from Thor’s
website did not give it a “plausible” basis for filing a
patent claim when it filed its trademark infringement suit
in 2009. Instead, as the district court correctly concluded,
“Superior could have easily asserted the patent infringe-
ment claim . . . when the trademark action was filed in
August 2009,” and “[t]he only reason the earlier suit did
not contain patent allegations is because Superior chose
not to make them.” District Court Decision, 2011 WL
3100335, at *5.
Acumed LLC v. Stryker Corp., 525 F.3d 1319, 1326
(Fed. Cir. 2008), upon which the majority relies, is inap-
posite. There we held that two claims for patent in-
fringement did not arise from the “same transactional
facts” because the claims involved different accused
devices. Id.; see also Florida Power & Light Co. v. United
States, 198 F.3d 1358, 1361 (Fed. Cir. 1999) (concluding
SUPERIOR INDUSTRIES v. THOR GLOBAL 8
that res judicata did not apply where the “two sets of
claims involve[d] not only different time periods, but also
different agencies with different contracting officers and
different statutory mandates regarding pricing policy”).
Here, by contrast, Superior’s patent and trademark
claims involve the same product, Thor’s fully-braced
undercarriage for portable conveyor systems.
Application of “res judicata is not a mere matter of
practice or procedure inherited from a more technical
time than ours. It is a rule of fundamental and substan-
tial justice, of public policy and of private peace, which
should be cordially regarded and enforced by the courts
. . . .” Federated, 452 U.S. at 401 (citations and internal
quotation marks omitted). Thor should not be forced to
endure a second round of litigation simply because Supe-
rior, for its own strategic reasons, chose to delay assertion
of its patent claims until after its trademark suit was
fully resolved. See Phillips/May Corp. v. United States,
524 F.3d 1264, 1271 (Fed. Cir. 2008) (explaining that
where two claims arise out of the same set of transac-
tional facts, a litigant may “not avoid the application of
res judicata through strategic delay”).