The Supreme Court of the United States decision upholding the patent owned by Monsanto Co. was surprising only in its unanimous affirmation.
In Vernon Hugh Bowman v. Monsanto Co. et al., 11-796, the justices held that the doctrine of patent exhaustion does not permit a farmer to reproduce genetically modified seeds without the patent holder’s permission. Justice Elena Kagan delivered the opinion for the court.
“In the case at hand, Bowman planted Monsanto’s patented soybeans solely to make and market replicas of them, thus depriving the company of the reward patent law provides for the sale of each article,” Kagan wrote. “Patent exhaustion provides no haven for that conduct.”
The decision could indicate that the court ended up having second thoughts on accepting the case for review, said Mark Janis, director of the Center for Intellectual Property Research at Indiana University Maurer School of Law.
When Bowman petitioned for a writ of certiorari in December 2011, the solicitor general advised the court to deny the petition. The United States maintained that the petitioner’s primary argument – that the Federal Circuit’s “conditional sale” doctrine was inconsistent with the Supreme Court’s patent-exhaustion decisions – was not properly presented in this case.
The high court granted the writ anyway which, in cases involving patent law, usually indicates the Supreme Court will reverse the Federal Circuit’s decision, Janis said. However, the unanimous affirmation might be read as the court agreeing with the solicitor general’s view.
For eight years, Bowman, an Indiana farmer, planted two soybean crops. For his first soybean crop, Bowman purchased seeds created by Monsanto that were genetically modified to be resistant to Roundup Ready herbicide. He also signed the agreement limiting him to planting the seeds for one season only.
However, for a second crop planted late in the growing season, Bowman went to the grain elevator and bought commodity seeds. He discovered these seeds contained the same herbicide-resistant trait.
Monsanto sued, claiming Bowman was infringing on its patent. Bowman countered with a patent-exhaustion defense, arguing he was using the seeds in the normal way and allowing Monsanto to retain its patent right would “create an impermissible exception to the exhaustion doctrine.”
The Supreme Court ruled Bowman was making additional copies of patented soybeans without Monsanto’s permission, an activity that falls outside the protections of patent exhaustion.
“It is good to see that they confirmed that a plant reproducing a patented gene is something protectable,” said intellectual property attorney Jay Sanders, partner at Faegre Baker Daniels LLP. “I think in this case, they did a pretty good job of reading the facts before them.”
The court was careful to point out that its ruling was limited to the situation presented by Bowman in saving and replicating seeds. It does not apply to every case involving a self-replicating product.•