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 infringement complaint filed by Superior Industries, LLC (“Superior”) 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 complaint 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”) (collectively, 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 assembly. 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 Registration No. 3,502,855). 

Thor is a Canadian company that competes with Superior 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 ThorStack2TM series telescopic 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 infringement 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. Superior’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 unauthorized making, using, offering to sell, selling and/or 

importing a telescoping conveyor having the Thor Undercarriage 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 customers, 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 importing 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 infringement of the ’101 Patent on the basis of claim preclusion. The district court noted that Superior “referenced 

the ’947 Patent” in its complaint filed in the 2009 Trademark 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 distributed 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 Action. Id. The district court dismissed Superior’s claim 

based on Rule 12(b)(6) of the Federal Rules of Civil Procedure, 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 infringing 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 KabushikiKaisha, 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 “repetitive 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 jurisdiction; (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 operative 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 entity 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 (holding 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 resignation 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 involving 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 transactions than was at issue in a prior litigation between the 

same parties. 

In this case, the 2009 Trademark Action does not preclude 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 Undercarriage 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 services” 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 willingness 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 Action 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 infringement 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 statement 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 acknowledges that standard to review the dismissal. Id. 

Superior’s First Amended Complaint (1) alleges jurisdiction, 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 communications from Superior in 2010. J.A. 112 ¶ 15 (“Subsequent 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 Undercarriage 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 correspondence 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 induced 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 noninfringing 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 infringement 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 affirmed-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 infringement 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) (emphasis 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 technology will ‘once again revolutionize the way telescopic 

stackers are made.’”

Superior subsequently registered the mark FB for 

height-adjustable bulk material belt conveyors and undercarriage assemblies. See U.S. Trademark Registration 

No. 3,502,855. In 2009, Superior sent Thor a letter demanding that Thor cease further unauthorized use of its 

 * I express no view on the issue of whether the district 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 previously 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 undercarriage” technology. 

On August 4, 2009, Superior brought a trademark infringement 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 Convalescent 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 prerequisites 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 proceedings. 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 constitutes 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 infringement 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 convenient 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 fullybraced 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 arising 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 evidence required to prove trademark infringement is not 

the same as that required to establish patent infringement. 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) (explaining 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 concurrently 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 materials 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 throughout 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 trademark 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 trademark 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 infringement 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 inapposite. There we held that two claims for patent infringement 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 substantial 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 Superior, 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 transactional facts, a litigant may “not avoid the application of 

res judicata through strategic delay”).