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Archived updates for Tuesday, January 17, 2006

Efforts to Acheive Bid Specifications Covered by Patent Not Illegal

In Fieldturf International, Inc., et al. v. Sprinturf, Inc., et al. (Fed. Cir.; January 5, 2006) the School District wanted to use a synthetic turf similar to a patented FieldTurf installation in a local park. The Request for Proposal ("RFP"), prepared by the Architect for the School District, specified: "Pro series soccer synthetic grass system manufactured by FieldTurf . . . or approved equal." When FieldTurf stated that it would enforce its patents against SportFields and the School District, the School District then rejected all of the bids, withdrew the RFP, and made further changes in the specifications in order to avoid the Field Turf patents. FieldTurf then sued SportFields for patent infringement based on its first bid, as an offer to sell under '271(a), and also charged SportFields with the torts of intentional interference with prospective economic advantage.

According to the Federal Circuit:

We conclude that the district court did not err in law, in considering the
nature of the SportFields product that was intended and understood to be the
product that would be installed, in holding that the bid was not an offer to
sell an infringing product. The School District representatives were aware that
SportFields' product differed from that of FieldTurf — indeed, FieldTurf
emphasized those differences in its communications to the School District. The
district court was not required to ignore these and other facts that showed that
SportFields intended to offer and to install its PerfecTurf product, which is
conceded not to literally infringe FieldTurf's patent claims. It is also
relevant that when FieldTurf complained to the School District that SportFields'
bid was for the FieldTurf patented product, the School District withdrew the RFP
entirely and rejected all bids, thus avoiding the accrual of damages for
infringement. The district court also interpreted the California statute to
include an "or equal" provision when the specification designated a patented
product. If this interpretation is correct (an issue we need not decide) then
there was another reason for finding noninfringement.

On the undisputed facts and considering all of the circumstances, we affirm the district court's ruling that SportFields' bid was not an infringing offer to sell the FieldTurf product.

. . . Although the district court was properly concerned with the conduct of the
competition, we must [also] conclude that the legal requirements of the commercial
torts were not met. For example, accepting the district court's premise that
FieldTurf encouraged the School District to place the FieldTurf product
specifications in the RFP, the record shows that the School District and the
Architect strongly supported this action, and wished to install the same turf
system that FieldTurf had installed in a local park. Efforts of commercial
entities to achieve specifications that favor their product are not illegal,
absent fraud or deception.

Although the district court found that FieldTurf had misled the School District with respect to "open bidding," the contract documents permitted product substitution and the School District was represented by professionals. We conclude that tortious interference by FieldTurf was not established as a matter of law, for it was not shown that FieldTurfs' conduct was "wrongful by some legal measure other than the fact of interference itself," a criterion explained in Della Penna, 902 P.2d at 751.

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