Res Judicata Bars Patent Claims That Could Have Been Asserted in Earlier Trademark Case Involving the "Same Technology and the Same Accused Products"

The court granted in part defendant's motion to dismiss plaintiff's patent infringement claim as barred by res judicata as to one of the patents-in-suit where plaintiff previously sued defendant for trademark infringement. "[T]he same technology and the same accused products are involved in both actions. Under these circumstances, the Court agrees that the trademark and patent claims would have formed a convenient trial unit. . . . The only reason the earlier suit did not contain patent allegations is because [plaintiff] chose not to make them. [Plaintiff] cannot avoid claim preclusion by choosing to omit its then-available patent claims when it brought the earlier action. . . . The same is not true with respect to [one of the patents-in-suit]. [That] patent did not issue until . . . over three months after the trademark action was filed."

Superior Industries, LLC v. Thor Global Enterprises Ltd., 0-10-cv-02524 (MND July 22, 2011, Order) (Davis, J.)