A divided Federal Circuit Court of Appeals panel has ruled that a patent infringement claim involving an undercarriage system for conveyor belts is not barred by claim preclusion even though the parties had previously litigated a trademark infringement action arising from advertisements for a product based on the patented technology. Superior Indus., LLC v. Thor Global Enters. Ltd., No. 2011-1549 (Fed. Cir., decided November 27, 2012). The panel majority concluded that because the advertisements did not include pricing information, they could not be construed as an “offer” that an offeree “could make into a binding contract by simple acceptance.” Thus, the defendant’s “advertising at issue in the 2009 Trademark Action did not constitute an ‘offer of sale’ for purposes of patent infringement because it contains no price terms.”

The dissenting judge disagreed, finding that the plaintiff’s patent infringement action was based “on the same nucleus of operative facts as its earlier trademark infringement suit . . . [because] both relate to [the defendant’s] fully-braced undercarriages for portable conveyor systems, which were advertised and allegedly offered for sale in 2007.” According to this jurist, “Notwithstanding the fact that the 2007 advertising materials did not contain pricing information, such materials were clearly sufficient to put [the plaintiff ] on notice that it had a potential patent infringement claim.” The dissenting judge added, “[the defendant] should not be forced to endure a second round of litigation simply because [the plaintiff ], for its own strategic reasons, chose to delay assertion of its patent claims until after its trademark suit was fully resolved.”