The final score in a legal battle between two artificial turf manufacturers is a $780,000 win for the original patent holder.
On May 25, 2016, FieldTurf USA hit UBU Sports with a patent infringement complaint in federal court in Chicago. FieldTurf wanted UBU 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 on its registration.
On March 29, FieldTurf moved for default judgment, and on May 3, U.S. District Judge John Z. Lee, ruling in Chicago, granted that motion for final judgment in favor of FieldTurf. Though Lee awarded $780,000 to FieldTurf — a $260,000 award trebled by willful infringement — he denied a request for legal fees. Lee also agreed to dismiss UBU’s counterclaims.
On June 5, FieldTurf returned to court to file an unopposed motion for entry of final judgment. Winston & Strawn, LLP, which represented FieldTurf in the matter, said it made the request “in an abundance of caution, to resolve any possible doubts” regarding whether the minute entry fully satisfies legal requirements to resolve the matter.
According to the June 5 motion, UBU counsel Stan Sneeringer, of Pedersen & Houpt, P.C., Chicago, said UBU did not oppose the FieldTurf request.
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.
In October 2015, a federal jury awarded FieldTurf $30 million in a similar legal battle with AstroTurf. 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 initial complaint alleged.
“We are grateful for the court’s attention to our case and careful consideration of the record,” said Eric Daliere, Tarkett Sports president, in a company press release. “While litigation was a last resort, the result confirms the importance of the ’412 patent’s technology in delivering innovative artificial turf systems that provide optimum playability, and safety.”
“This victory reinforces our commitment to protect our intellectual property and innovation,” added Marie-France Nantel, Tarkett Sports general counsel.
FieldTurf was represented in the action by attorneys with the firm of Winston & Strawn, of Chicago.
UBU was represented by the firms of Pedersen & Houpt P.C., of Chicago; Williams Montgomery & John Ltd., of Chicago; and Harter, Secrest & Emery LLP, of Buffalo, N.Y.