While the issue of claim preclusion is not particularly relevant for patent preparation or prosecution, it is important to note the distinction the court makes here between mere “advertising” and a true “offer for sale” sufficient to give rise to liability for patent infringement. An “offer for sale” must meet the traditional contract law definition of that term. 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.” Mere “advertising” is therefore generally not sufficient to give rise to liability for patent infringement.
Background / Facts: The patents here were directed to an improved undercarriage system that enables portable conveyors to safely and stably extend to, and operate at, heights above previous conveyors. The invention improves upon the prior art with cross bracing between the upper and lower support beams that does not interfere with the extension or retraction of the upper support beams. Superior also claims to have coined the term “fully braced” to refer to this new undercarriage, and owns the registered trademark “FB” for height-adjustable bulk material belt conveyors and undercarriage assemblies. After successfully suing to enjoin Thor’s use of the “FB” mark in various press releases and point-of-sale displays in connection with Thor’s undercarriage assemblies or portable conveyors, Superior initiated this suit for patent infringement by those same devices.
Issue(s): Whether the 2009 Trademark Action constitutes the “same cause of action” as the patent suit and therefore bars Superior’s claim for patent infringement via claim preclusion.
Holding(s): No. The 2009 Trademark Action does not preclude Superior’s patent infringement claim because the two claims arise from clearly separate transactions. 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 Undercarriage Technology in the United States. Stated another way, 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. 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. 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.