The grass is fake, but the legal dispute over who should own the rights to sell and install artificial turf in stadiums and practice facilities in Chicago – including at the Chicago Bears practice facility – is quite real.
FieldTurf USA targeted UBU Sports with a patent infringement complaint on May 25 in federal court in Chicago. According to the complaint, UBU should be barred from selling and installing its synthetic grass surfaces based on a patent dating to April 20, 2004. The company refers to the patent as “the ’412 patent” based on its final three digits.
The patent’s owner, by assignment, is Tarkett Inc., of East Farnham, Quebec, Canada. FieldTurf USA, which is incorporated in Florida but based in Montreal, is the exclusive licensee of that patent.
UBU is based in Downers Grove. Its local installations include the Chicago Bears Halas Hall practice facilities in Lake Forest.
FieldTurf also has performed work for NFL teams among its more than 8,000 installations worldwide, per the complaint. That widespread success, the company argued, “led several ‘me-too’ competitors” to try to infringe on the patent.
“Competitors have also tried to attack the validity and enforceability of the ’412 patent. Each of those attacks has failed,” FieldTurf’s complaint said.
The complaint noted a federal jury in October had awarded FieldTurf $30 million in its dispute with competitor AstroTurf.
“The Court in the AstroTurf case has also as of this date rejected AstroTurf’s defenses of invalidity of the ’412 patent for indefiniteness and lack of enablement, and has rejected AstroTurf’s allegations that the ’412 patent is unenforceable,” FieldTurf said.
FieldTurf said AstroTruf specifically violated the patent’s claim 12, which deals with blades of synthetic grass known as ribbons. The particulate matter used as infill between the ribbons is to be “substantially two-thirds the length of the ribbons.” The ruling in the AstroTurf action set a range of 61 to 72 percent.
FieldTurf said UBU’s Speed Series products, which “contain a particulate material that has a thickness of substantially 2/3 the length of the ribbons,” the same threshold which FieldTurf said tripped up AstroTurf in its contest of FieldTurf’s patent. There are six Speed Series turf products, all of which have infill percentages in the disputed range. The same is true of UBU’s Intensity, Balance and Accreditation series products, the complaint alleged.
UBU advertises on its website Speed Series installations at several NFL practice and game facilities, including Super Bowl sites such as Met Life Stadium in East Rutherford, N.J., and the Superdome in New Orleans.
The complaint also cited several request-for-proposal documents detailing ribbon height/infill depth specification requirements as evidence UBU’s products are manufactured in a way that violates FieldTurf’s patent rights.
FieldTurf said its lawyers sent UBU CEO Mark Nicholls a letter about the issue on Dec. 7, but received no response. A second letter, sent Feb. 12, also went unanswered.
FieldTurf seeks a court order declaring UBU to have infringed on the ’412 patent, a permanent injunction preventing any further sales or installations of any infringing product, damages and legal fees.
Representing FieldTurf in this matter are attorneys with the firm of Winston & Strawn, of Chicago.