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An Offer to Sell a Noninfringing Product Does Not Constitute Infringement Under § 271(a)

January 05, 2006

Decision icon Decision

Last Month at the Federal Circuit - February 2006

Judges: Newman (author), Schall, and Dyk

In FieldTurf International, Inc. v. Sprinturf, Inc., No. 04-1553 (Fed. Cir. Jan. 5, 2006), the Federal Circuit affirmed the grant of SJ of noninfringement in favor of SportFields LLC and other related companies (collectively “SportFields,” as Sprinturf, Inc. was not a party to the appeal), reversed the grant of SJ of interference with prospective economic advantage and unfair competition, and vacated the award of attorney fees.

FieldTurf International, Inc. and its related company (collectively “FieldTurf”) manufactures a synthetic turf covered by two of its patents. A school district issued a Request for Proposal (“RFP”) for an athletic field, specifying a “[p]ro series soccer synthetic grass system manufactured by FieldTurf . . . or approved equal.” SportFields, a competitor and manufacturer of a noninfringing product, complained that listing FieldTurf’s patented product as a sole source in the RFP violated California law. In response, the school district deleted the language “FieldTurf . . . or approved equal” and added specific requirements directed to FieldTurf’s patented product. Although SportFields continued to protest that the amendments did not permit substitute products, it submitted a bid and was awarded the contract.

FieldTurf informed the school district and SportFields that SportFields’s bid was an infringing “offer to sell” under 35 U.S.C. § 271(a).In response, the school district withdrew the RFP, issued a new RFP omitting the requirements relating to FieldTurf’s patented product, and again awarded SportFields the contract.

FieldTurf sued SportFields for patent infringement, alleging that the first bid was an offer to sell under § 271(a), and further charging SportFields with commercial torts. SportFields denied infringement and counterclaimed, alleging intentional interference with prospective economic advantage and unfair competition. The district court awarded SportFields SJ of noninfringement because the bid, though an offer for sale, was an offer to sell a noninfringing product. The district court also granted SportFields SJ on its counterclaims and awarded attorney fees.

On appeal, the Federal Circuit affirmed the district court’s grant of SJ of noninfringement. Although a bid to supply a product in an RFP is traditionally an offer to sell, the Court reasoned that it was appropriate for the district court to consider SportFields’s intent to sell its noninfringing product despite the RFP specifications. The district court was not required to ignore that SportFields’s products differed from FieldTurf’s and that SportFields emphasized those differences to the school district.

The Federal Circuit reversed the grant of SJ on the state law claims that FieldTurf committed tortious interference and unfair competition. FieldTurf’s efforts to obtain specifications in the RFP that favored its patented product were not illegal absent fraud or deception, and it was not established as a matter of law that FieldTurf’s conduct was wrongful. Likewise, the Court concluded that FieldTurf’s infringement action was not an unfair business practice because it is not unlawful, unfair, or fraudulent business practice for a patentee to enforce its right to exclude others.

Additionally, the Federal Circuit vacated the district court’s award of attorney fees, concluding that FieldTurf’s patent position was not without support and that it had committed no egregious action. Therefore, this was not an exceptional case under 35 U.S.C. § 285 warranting the award of attorney fees.