“Offer To Sell” Requires Consideration Of Nature Of Intended Product

In Fieldturf International, Inc. v. Sprinturf and Empire and Associates, Inc. (No, 04-1553; January 5, 2006), the Federal Circuit affirms the Unites States District Court for the Eastern District of California's grant of summary judgment of noninfringement in favor of defendants (collectively “SportFields”).

Plaintiffs (collectively “FieldTurf”), manufacturers of synthetic turf, successfully persuaded the Folsom-Cordova Unified School District in California to include product characteristics embodied in FieldTurf's patented product in bid specifications for an RFP. The bid specifications also allowed for approved equals upon express approval. SportFields demonstrated its product to and exchanged correspondence with the school district that showed its product differed from the bid specifications. SportFields submitted a bid that was accepted by the school district. The bid did not include an express statement that SportFields product was an approved equal. FieldTurf sued, alleging that SportFields bid was an infringing “offer to sell” under 35 U.S.C. § 271(a), because SportFields made an unqualified offer to sell a product that met the School District's specifications, and thus on its face infringed FieldTurf's patents.

The Federal Circuit disagrees with FieldTurf's position that the district court erred in considering the identity of the product that SportFields actually intended to provide, and holds that the district court did not err by “considering the nature of the SportFields product that was intended and understood to be the product that would be installed.” The Federal Circuit also states that the school district was made aware by various means that SportFields' product differed from the bid specifications. Lastly, The Court reversed the district court's findings in favor of SportFields counterclaims of intentional interference with prospective business advantage and unfair competition, stating that “efforts of commercial entities to achieve specifications that favor their product are not illegal, absent fraud or deception.”