Federal Circuit Finds Mere Response To RFP Does Not Constitute Offer To Sell Infringing Device

In FieldTurf Intr., Inc. et al. v. SprinTurf, Inc. et al. and SportFields LLC and Orion, 433 F.3d 1366, 77 U.S.P.Q.2D 1468 (Fed. Cir. 2006), the Federal Circuit affirmed a summary judgment of non-infringement in favor of SportFields LLC and Orion (collectively “SportFields”) and reversed summary judgment in favor of SportFields on its counterclaims of intentional interference with prospective economic advantage and unfair competition, and vacated the award of attorney fees.

Facts

This case related to a Request for Proposal (RFP) issued by a School District inCaliforniafor synthetic grass turf.  SportFields, a producer of synthetic turf, initially complained to the school district that the RFP specifications “sole sourced” the FieldTurf product such that other offerors could not provide a competing proposal using equivalent goods.  The RFP specifications were amended, but still contained claim elements of U.S. Patent No. 5,958,257 (the ‘257 patent) and U.S. Patent 6,338,885 (the ‘885 patent), owned by FieldTurf.  SportsFields on the amended RFP was the low bidder for award of the project. FieldTurf then advised theSchool Districtand Sportfields that SportsFields’ bid constituted an infringing “offer to sell’ of the ‘257 and ‘885 patents under 35 U.S.C. § 271(a). TheSchool Districtthen withdrew the RFP and further amended the RFP specification to depart from FieldTurf’s patents, with Fieldturf not bidding and the project being awarded to Sportfields. 

Offer ForSaleDependent on Product Actually Offered

On the issue of whether an offer for sale occurred, the District Court held that the bid to the withdrawn RFP did not constitute an infringing offer to sell under 35 U.S.C. § 271(a).  The Federal Circuit, in affirming District Court’s non-infringement determination, considered whether SportFields’ bid constituted an “offer to sell” an infringing product under 35 U.S.C. § 271(a) and, whether the District Court erred in considering the identity of the product that SportsFields actually intended to provide in its non-infringement determination.  The Federal Circuit held that the District Court did not err in considering the nature of the SportsFields product that was intended and understood to be the product that would be installed, in holding that Sportsfields’ bid was not an offer to sell an infringing product under 35 U.S.C. § 271(a).  The Federal Circuit stated that the District Court was not required to ignore these and other facts that showed that Sportsfields intended to offer and install its product, which was conceded not to literally infringe FieldTurf’s patent claims.

No unfair competition/intentional interference with contract where reasonable basis for allegation of infringement

On the issue of intentional interference with prospective economic advantage and unfair competition, the District Court’s had found in favor of SportFields.  The Federal Circuit reversed the District Court’s determination in favor of SportFields and considered whether SportsFields’ bid on the Request for Proposal (RFP) specifications, as initially written, constituted a reasonable belief that SportsFields was offering a product that infringed FieldTurf’s ‘257 and ‘885 patents.  The Federal Circuit held that at the time of SportsFields’ bid on the RFP specifications, as initially written, FieldTurf could reasonably have believed that SportsFields was offering a product that infringed FieldTurf’s patents.  The Federal Circuit further held that enforcement of a patent that is reasonably believed to be infringed is not an act of unfair competition, citing Mikohn Gaming Corp. v. Acres Gaming, Inc., 165 F.3d 891, 897 (Fed. Cir. 1998). The Federal Circuit also noted that it is not unfair competition for a patentee to enforce its patent against a competitor, citing Concrete Unlimited v. Cementcraft, Inc., 776 F.2d 1537, 1539 (Fed. Cir. 1985).  Thus, by asserting its patent rights on patents reasonably believed to be infringed, FieldTurf was not committing acts of unfair competition.

A copy of this case is available at FieldTurf Intr., Inc. et al. v. SprinTurf, Inc. et al. and SportFields LLC and Orion, 433 F.3d 1366; 77 U.S.P.Q.2D 1468 (Fed. Cir. 2006).

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