Self Replicating (and Alive) Inventions: Supreme Court Grants Certiorari in Monsanto v. Bowman

By Dennis Crouch

Mr. Bowman v. Monsanto Co., Docket No. 11-796 (Supreme Court 2012)

Beginning its 2013 term with a bang, the Supreme Court has granted Vernon Bowman’s petition for a writ of certiorari in the Indiana farmer’s longstanding battle against Monsanto Co. The patents at issue cover Monsanto’s genetically modified seed technology that protects broadleaf plants such as soybeans from being damaged by the application of the popular broadleaf herbicide glyphosate (another Monsanto invention known as RoundUp).

After losing at the Federal Circuit, Bowman presented the following questions to the Supreme Court:

Patent exhaustion delimits rights of patent holders by eliminating the right to control or prohibit use of the invention after an authorized sale. In this case, the Federal Circuit refused to find exhaustion where a farmer used seeds purchased in an authorized sale for their natural and foreseeable purpose – namely, for planting. The question presented is:

Whether the Federal Circuit erred by (1) refusing to find patent exhaustion in patented seeds even after an authorized sale and by (2) creating an exception to the doctrine of patent exhaustion for self-replicating technologies?

In its brief-in-opposition, Monsanto reformulated the question as follows:

Whether the Federal Circuit correctly ruled that Monsanto’s patent rights in biotechnology related to genetically modified plants (here, patented technologies that make soybeans resistant to glyphosate-based herbicides) are independently applicable to each generation of soybeans embodying the invention, such that a grower who, without authorization from Monsanto, creates a new generation of genetically modified soybeans infringes Monsanto’s patents.

When asked for commentary on the case, the Solicitor General advised the Supreme Court to deny certiorari. In doing so, however, the Solicitor was harshly critical of the Federal Circuit’s precedent on exhaustion – stating flatly that the Federal Circuit’s “conditional sale” doctrine is inconsistent with Supreme Court precedent.

73 thoughts on “Self Replicating (and Alive) Inventions: Supreme Court Grants Certiorari in Monsanto v. Bowman

  1. IBP, indeed, it does get complicated when, due to the nature of the invention, the sold seed may produce a plant that produces seed that may be planted, and so on.

    Congress, when it authorized patents on sexually reproduced plants,  granted exclusive rights only for the first sale, and not for replanting etc.  Perhaps we should look to Congress for guidance here.

  2. Anon & Ned–

    Another brief post.

    Anon, it IS about contracts, about the reasonable expectation of the parties, and on the understanding they reach.

    Ned was getting closer when he said “without restriction”. Restriction would be a contractual term or condition, and could be actual or implied by the circumstances surrounding the contract and industry custom. It is prima facie unreasonable to believe that the premium that any buyer pays for Monsanto’s seeds is the amount that Monsanto would charge for the sale of the entire patent.

    Another wrinkle on this, considered contractually, is what happens further downstream. Lots of downstream entites could “sell the patented soybeans”. If they do so, can/should they be considered to be infringing? Do they have/need a license to do so? Does “exhaustion” necessarily apply to ALL patent rights, in all situations? Importantly, what is the precise meaning and application of the concept of “substantial embodiment”, and does it end after the first generation? Does it even continue through the first generation? (yes, I know what the court said about this).

    More later.

  3. I am of mixed emotions for your upcoming post. If you maintain a view not based primarily in patent doctrine, I fear that most of your post will be in vain.

    I do hope you realize what the actual driver is for this issue, and that your upcoming post ‘arises under’ the correct doctrinal view.

  4. “You are trying to hard to have contract law ascendant over patent exhaustion law. Your focus is not on the right law.”

    Just a short comment right now, I will write a longer one later, referring to Univis Lens.

    The basis of patent law is commerce, which is effected through transactions, the details of which form a contract.

    The “first sale doctrine”, sometimes thought of as a “patent doctrine”, is more correctly conceived as a “commercial doctrine”. It is NOT directly concerned with patentability, examination, the PTO, or the PCT.

    OTOH, it IS directly concerned with the bargain made between contracting parties in a transaction, which is most certainly the province of contract law.

    More later.

  5. IANAE, I'm not quite sure I understood your point about "availability" for ownership.  Are you suggesting that the wild fox can be owned once it is captured?  With that I would agree.  But until it is captured, the wild fox is not owned, and anybody can capture the fox without liability to anybody else.  That is my point

  6. Regarding exhaustion and the improved fish… I thought exhaustion required an authorized sale.

    You don’t think that the patentee abandoning a particular article of manufacture to the public triggers exhaustion? Is there something magical about him receiving money for it?

    I think the real problem is that the fish is now in the public domain. Once in the public domain, every has full right of access to it for all purposes.

    Surely you know the difference between (availability for) ownership of an article on the one hand, and immunity from patent infringement on the other. Hint: all patent infringement cases are based on products owned by the defendant.

    For example, a movie is shown in a public park. Can the person who shows the movie collect the price of a ticket for all who pass by and who may watch the movie?

    No, but he might have a cause of action against someone who films the free screening and later charges admission to view it.

  7. Glad to hear the product of nature exception really is a prior art problem. I am not so sure, though.

    Regarding exhaustion and the improved fish… I thought exhaustion required an authorized sale.  

    I think the real problem is that the fish is now in the public domain.  Once in the public domain, every has full right of access to it for all purposes.

    For example, a movie is shown in a public park.  Can the person who shows the movie collect the price of a ticket for all who pass by and who may watch the movie?

  8. If you take a seed from nature and it has the patented gene…

    Then it’s not “from nature”, it’s “found outdoors”. If you find a $20 bill on the sidewalk, it’s not a product of nature.

    What does the product of nature exception mean?

    Not a blasted thing, far as I can tell.

    I breed the improved fish; throw it into the ocean. It’s genes spread. I then sue fisherman who catch the improved fish and sell them in the US.

    That’s probably a pretty solid case for exhaustion. Fishermen don’t breed the fish. They find something you’ve released into the wild, and sell it on. Fish farmers, on the other hand…

  9. No, IANAE, product of nature.  If you take a seed from nature and it has the patented gene…

    What does the product of nature exception mean?

    We I breed the improved fish; throw it into the ocean.  It's genes spread.  I then sue fisherman who catch the improved fish and sell them in the US.

    Is this right?

  10. In this case, Bowman knew they were patented because he tested the plants with RoundUp. By his own admission, he applied RoundUp to the plants “to determine whether the plants would exhibit glyphosate resistance”. He confirmed that many were so resistant, and saved some produced seeds for future planting.

    Monsanto seems to go after quite a few such people. Those people are just playing for time before they are inevitably made to pay for an obvious and unauthorized copying of a patented invention. I would never make a policy argument for protecting them from liability. There are legitimately innocent infringers out there, but Bowman isn’t one.

    I’m going to get a guarantee from them that the seeds are OK, and get them to indemnify me–or, I’ll pay less, and buy appropriate insurance for myself.

    If my personal stock somehow got contaminated, I would try to identify and sue the appropriate parties in trespass, while getting rid of the offending stock.

    Getting indemnity or suing someone else to cover your losses still isn’t as good as escaping liability in the first place, for those who deserve it. Your insurance is only as good as your insurer’s ability to pay, and that’s an even more doubtful resource when you’re suing the next farmer over who can no better absorb your losses than you can. Plus legal fees on both sides, of course.

    This is especially interesting, because the only elegant way to select the non-offending plants is to kill them with RoundUp, which defeats the very purpose of the selection process.

    Clever, isn’t it? Like a sort of Monsanto witch trial. If the seeds survive, you can’t use them.

    However, I think the basis of your point is allocation of risk, which is usually addressed via insurance.

    Sure, but there’s also the issue of allocation of reward. Even on the risk side, maybe we don’t want the poor farmers to have to endure litigation in the first place, since they have such trouble making ends meet as it is. These are the people who grow our food, you know. We need them.

  11. In this case, Bowman knew they were patented because he tested the plants with RoundUp. By his own admission, he applied RoundUp to the plants “to determine whether the plants would exhibit glyphosate resistance”. He confirmed that many were so resistant, and saved some produced seeds for future planting.

    What you seem to be getting at is allocation of risk. If I’m a guy like Bowman, I’m either saving seed stock that I know is OK because I’ve grown it myself, or I’m buying it from someone else, in which case I’m going to get a guarantee from them that the seeds are OK, and get them to indemnify me–or, I’ll pay less, and buy appropriate insurance for myself.

    If my personal stock somehow got contaminated, I would try to identify and sue the appropriate parties in trespass, while getting rid of the offending stock. You probably wouldn’t need to check regularly if you didn’t have any reasonable suspicion that contamination had in fact occurred–and if you ever find out, after you do find out, you turn over your field and eat the loss, or try to recover it on a trespass theory. I would still try to purchase appropriate insurance.

    This is especially interesting, because the only elegant way to select the non-offending plants is to kill them with RoundUp, which defeats the very purpose of the selection process.

    You raise an interesting point, mine are only preliminary thoughts on the subject. However, I think the basis of your point is allocation of risk, which is usually addressed via insurance.

  12. One more time, a seed is NOT “self-replicating” in the sense that it is incapable of just dividing into 2 or more identical sub-units, each genetically identical to the original.

    It’s self-replicating in the sense that if you deliberately put it in a particular environment and maintain that environment over a period of time, it will begin a long, solar-powered process that culminates in “dividing” into multiple genetically identical and probably visually indistinguishable units.

    It’s not that meaningful a distinction over, say, making a mold of a mechanical component and setting a casting process in action, resulting in the automated production of multiple functionally identical copies. You still have to go and do it, with the desire that the copying get carried out under your supervision and on your property.

    The real problem, as I see it, is that a farmer can’t expend reasonable effort to acquire a packet of infringement-free seeds for planting. He can’t pick out the patented ones, because they’re not marked and he doesn’t have access to the requisite DNA sequencing equipment. So what does it really mean to infringe, and what is the farmer to do?

  13. I thought there was a “product of nature” exception.

    I don’t think there’s a “product of Monsanto” exception. But I guess that’s for the Circuit en banc to decide?

  14. I have glossed over no concepts. It is you that seems to gloss over exactly what patent exhaustion is meant to cover.

  15. In this case, patented articles are employed in the making of further patented articles.

    As this is covered in the Use subject to exhaustion, the replication is considered self-replication and your position fails.

    You are trying to hard to have contract law ascendant over patent exhaustion law. Your focus is not on the right law.

  16. One more time, a seed is NOT “self-replicating” in the sense that it is incapable of just dividing into 2 or more identical sub-units, each genetically identical to the original.

    Production of soybeans, using as seed stock manufactured soybeans not in the first instance found in nature, can only be achieved through the intervention of man (the act of planting in a suitable environment and maintaining, enhancing, or optimizing that environment), whether intentional (Bowman plants the soybeans), or unintentional (soybeans fall off a truck into a fertile ditch).

    The seeds that Bowman purchased owe their existence to intervention of man at some point in their lineage.

    The patented soybeans were in the first instance NOT self-replicating.

  17. “The invention” does NOT self-replicate.

    In this case, patented articles are employed in the making of further patented articles.

    The particular sale of an individual patented article exhausts the patent owner’s right to control the use and disposition of only that individual article, NOT the use and disposition of other patented articles, and especially not the use and disposition of ALL OTHER patented articles–and the royalty fee charged reflects this reality, which is the reasonable understanding of the parties.

    When I said only a single opportunity to price the first and therefore only sale, I meant THE ONLY sale, ever. Under your construct, the first sale would be the sale of the entirety of the patent rights–which would be fine in a vacuum, if priced accordingly–but the problem is that such a scenario represents an unjustifiable restriction on the free market, because there could be only a single sale of the entirety of the patent right.

    Such an outcome is in no way a necessary consequence of the “type” of invention as “self-replicating” (which it isn’t, anyway). All that needs to be recognized is that the royalty paid reflects the rights gained.

    Think of it this way, instead. Somebody invents a new machining tool, which has the unique ability to impart heat to the worked object in a particular manner, enabled by a new heat treatment of the cutting surface. This tool, using this heat treatment, allows machining in half the time because it permits the use of a superior lubricating oil that repels contaminants.

    You purchase the tool, then use it either in the presence of the superior oil or not, to machine out other identical tools, which have the same heat-treated cutting surface as a result of heat having been imparted to the workpiece in the particular manner enabled by the initial tool.

    Do the newly-manufactured tools infringe in a way that entitles the patent owner to recovery?

  18. IBP, for exhaustion to apply, the thing sold has to embody the essential features of the invention. Once sold, without restriction, it passes beyond the control of the patentee or his licensee.

  19. Yes–make and profit from a single generation, if and only if you have first paid the required royalty.

    Please re-read my long post, and Univis.

  20. I know well the facts of the Bowman case.

    You are not proving that rights have been exhausted, you are merely stating it as though it were a fact.

    “For THIS invention” the make right is wed to the use right? What does that even mean?

    Please read closely my long post on this thread for a specific explanation of the concepts you seem to have glossed-over.

  21. I am very familiar with Univis Lens. That’s why I recommended to you to re read the case.

    Read it and focus on the patent aspects more so than on the contract aspects.

  22. Consider that there are many possible uses of the resulting soybean–as a raw material for the production of plastic panels, for instance, regardless of the fact that they contain the patented molecule, or are themselves patented.

    This is exactly the wrong thought pattern as it obfuscates the nexus of the patented invention and the reason of the exhausting sale. The reason why the first sale exhausts is precisely because the seed is NOT purchased for ANY of the ancillary uses, but precisely for the invented use that has the nexus with make and thus DEMANDS that the sale exhaust that right as well – at least from the very ITEM sold. Use of that item (including all subsequent make) is the point of the sale and thus is the focus – the rightful focus – of the exhaustion.

  23. which would mean that Monsanto would have only a single opportunity to price the first and therefore only sale appropriately

    Yes and that is exactly correct. That is the pinnacle idea behind exhaustion.

    That it makes it difficult for this type of invention does not change that pinnacle of exhaustion. That’s the breaks when you make an invention that self-replicates. If Monsanto wanted something else, they should invent a second generation seed that cannot replicate.

    Point in fact and in law – you sell once for use and that exhausts. If use – by design or otherwise) – but especially if by design – necessarily includes make for the purpose of the invention, you exhaust make as well.

  24. The “purpose of the patent” is most certainly NOT to make each transaction a sale of the entirety of the embodied patent rights

    You are strawmanning my position as well as getting the facts of the Bowman case incorrect.

    There was a bona fide first sale that exhausted the patent rights of “use.” For this invention, the patent right of make is wed to the patent right of use so that in this fact pattern, the right to make is also exhausted.

  25. This post better approaches the essence of this issue.

    See my response to your post above, while keeping in mind that if a buyer could make the invention, he could also sell it–which would mean that Monsanto would have only a single opportunity to price the first and therefore only sale appropriately–but of course, nobody would actually make that purchase, because any sale of product would have to be made at the same price as Monsanto charged, because such second sale would also effectively be the sale of the entirety of the patents rights.

  26. In a nutshell, it is unreasonable for any buyer to believe that they are purchasing the invention for the price of a single royalty payment.

    And that doesn’t even apply to Bowman, who didn’t even pay that single royalty payment. All Bowman did was make a patented invention without authorization.

  27. Ned–

    See my response to Anon below.

    “Embody the essential features of the invention” is NOT the key, “QUID PRO QUO” is the key.

    “Exhaustion” or “first-sale doctrine” is all about the TRANSACTION, and the fact that there is a patent involved is really only secondary to the concept of contractual proportionality.

  28. Anon–

    When somebody is granted patent rights, they are under no prima facie obligation whatsoever to practice “the invention”. Similarly, they are under no prima facie obligation whatsoever to authorize any other entity to practice “the invention”.

    “Making the invention” without either lawful excuse or authorization is unlawful. It is the Technology Agreement that authorizes that act. Bowman had no such authorization.

    Consider that there are many possible uses of the resulting soybean–as a raw material for the production of plastic panels, for instance, regardless of the fact that they contain the patented molecule, or are themselves patented.

    Let’s say that Monsanto cultivates their own soybeans, using their patented product and RoundUp, and then sells the beans. The patent rights would confer no advantage to buyers of the seeds versus non-patented seeds, when their ultimate use is considered…except in the case where they were cultivated and a second generation harvested.

    In all other cases, Monsanto would have to compete with other beans on price, quality, availability, etc., which are factors that could be affected by the patented “invention” (e.g. higher yields by cultivating with RoundUp, leading to lower prices for buyers)—–BUT by selling the beans, Monsanto would not be receiving any royalty on their patent rights.

    In the case where the use was cultivation and production of subsequent generations of seeds, those seeds will invariably contain the patented gene, and thus will be themselves patented articles, whether or not they are cultivated using RoundUp herbicide. In that case, what is the precise benefit of the patent rights to the buyer of the seeds?

    Nothing, other than the production of another generation of seeds!

    Therefore, unless a buyer intends to cultivate the seeds using RoundUp herbicide, there is no advantage to buying Monsanto seeds over any others, because yields will not be improved.

    So, it can be seen that while Monsanto receives a royalty from the sale, the buyer receives the benefit of the patented “invention” through an increased yield over a generation of cultivation.

    THAT is the quid pro quo. The buyer receives greater profits in exchange for paying a royalty.

    QUID PRO QUO is what “exhaustion” or “first sale doctrine” is all about, and it is usually framed in terms of royalties for convenience.

    The royalties in this case are the quid pro quo for increased profits from cultivation. The alternative–to characterize the “royalties” as being the entire value of the patent rights–would be an absurdity, because clearly, over the lifetime of the patent, the value realized by the buyers through increased yields would vastly exceed the value of the one-time royalty payment made to Monsanto.

    So, getting back to your point, “the purpose of the patent” is to enable buyers of the patented product to achieve greater profits than they would realize if they were to use competing products. As you said, “that’s what it is made for and what it is sold for”. As a result, the royalty charged is based upon, and is therefore proportional to, the benefit thereby gained by the buyers over a single generation of cultivation.

    The “purpose of the patent” is most certainly NOT to make each transaction a sale of the entirety of the embodied patent rights, when the royalty involved in that transaction is based upon and proportional to the benefit gained by the buyers over a single generation of cultivation.

  29. One cannot and should not be able to make an infringement planting seed from the wild just because it might have the patented gene.

    One certainly could. Those seeds are only in the wild because man invented them and put them there. If you stumble upon an abandoned factory, press the big red button, and it starts churning out patented deep-fryers, you’re an infringer, aren’t you?

    Whether one should is another question. Maybe we need a new general theory of infringement for cases when the person skilled in the art of using the invention can’t easily recognize when the invention is present. Monsanto didn’t invent the self-replicating seed, did they? Suppose you don’t infringe a patent to a seed having a novel herbicide-resistant gene till you start spraying herbicide. Someone please explain how that would completely break the patent system.

  30. Sold for use exhausts – even (especially) if that use also makes. The lesson here is that if you have an invention that includes replication as a feature of the invention, you better price that first sale in such a way as to capture the gist of the invention.

  31. You are confusing legal effect or right with the purpose of the invention (what I meant by “patent” – and what the Justices will be looking at – as should have been evident from the rest of my post).

  32. Ned:

    “If the thing embodies the invention, it may be…used to make the invention.”

    Not a chance.

    “If the thing embodies the invention, it may be…used in a process that is necessarily implemented by the thing sold.”

    EVEN IF this is true, it is irrelevant in the instant case, where the process implemented by Bowman was in no way “necessarily” implemented by the seed. It could have been implemented in an infinite number of other ways.

  33. Exhaustion does indeed require that the thing sold embody the essential feature of the invention.  So if the thing sold can be used in a completely different process not embodying the essential features, then there would be no exhaustion of that invention.

    Embody the essential features of the invention.  

    The key.

  34. IBP, Oh, most assuredly it does.  That was the whole point.  If the thing sold embodies the invention, it may be used thereafter, sold thereafter, used to complete (make) the invention, and used in a process that is necessarily implemented by the thing sold.

    The crabbed thinking of the Federal Circuit on exhaustion was emphatically overruled in Quanta.  They will, once again, be soundly taken to the woodshed on the "seed" issue.

  35. Ned–

    That post is very confusing. Instead of trying to unravel it, I will offer the following:

    I think you’re getting turned-around here because of the artifact that the patent involved in “exhaustion” happens to be the same patent as that involved in “infringement”.

    Consider, for example, if the patented seed were used to produce a completely different patented article (e.g. a composite building material made of crushed seeds + binder). Bowman’s activities would clearly still infringe the second patent, even though the 1st patent rights in the seeds may have been exhausted.

  36. Quanta most certainly does not authorize acts that constitute patent infringement, regardless of whether or not those acts operate on or with articles embodying an invention in which patent rights have been exhausted.

  37. Might I add, that exhaustion extends to contributory infringement.  Selling a component that embodies the invention does not carry with it any authority to use the component in making the invention.

  38. Ned–

    I don’t think it does.

    The seed can be used for any lawful purpose.

    Making a patented invention without authority is unlawful pursuant to 271(a).

    It’s got nothing to do with exhaustion. Notice that the patent owner cannot derive profit more than once from the patented articles–for instance, if Bowman were to have used the seeds as feed, Monsanto would not profit from any sort of fee attendant to that use. Similarly, Monsanto does not profit in any way as a result of Bowman planting those seeds and producing another generation.

  39. “The essence of the invention here is that the original seed is explicitly invented in order to be used in the manner that Bowman used it.”

    EVEN IF that is true, so what? That is an infringing use, and Bowman’s activities were not authorized by the patent owner Monsanto. The Technology Agreement can be construed as a single-season license to perform certain activities that would otherwise be infringing. Bowman had no such license.

  40. The “purpose” of the patent is to enable the patent owner to prevent others from making, using, selling, etc. the patented article or method without permission–a purpose which was most certainly given effect by the outcome at the CAFC.

  41. Mark–

    Wrong. The CAFC held that in having planted the seed (presumably in such a manner that it would germinate), the grower (Bowman) creates “a newly infringing article”. (Not to mention the fact that he contributed to the thriving of the resulting plant by applying glyphosate herbicide to competing plants, and likely also contributed thereto by irrigation and/or fertilization of the plant.)

    Therefore, according to the CAFC (and also to logic, in my opinion) “the farmer” DID make a patented article. Remember, according to the claims, patented articles include molecules, plant cells, and seeds of those plants.

    (Not to mention that Bowman appears to have admitted to having infringed the method claim 130.)

    “In this case Monsanto is [correctly] claiming that [but for the actions of defendant Bowman, the seeds in question would have contributed nothing to the production of infringing articles].

  42. IBP, the seed is sold without any restriction on its use.  Yet you say he needs an express license to use the seed?  

    This flies in the face of every exhaustion case there is.

    Every one.

  43. Are you suggesting that any infringement done outside the control of the patent holder is “OK?”

    LOL. Are you arguing that any infringement done outside the control of the patent holder is not okay? That would be an interesting admission, anon. Are you ready to make it?

    [grabs popcorn]

  44. The essence of the invention here is that the original seed is explicitly invented in order to be used in the manner that Bowman used it.

    News flash: Bowman did not invent self-replicating seeds so that is surely not the “essence of the invention here.”

    Try again, anon.

  45. Yes, he is an infringer, if but for the act of planting, a patent claim would not be infringed, and if he does not hold a valid license to engage in the otherwise-offending activity…however, the patent owner will not be able to recover damages unless they can prove notice.

    In this case, the CAFC found that Bowman had actual notice as of June 11, 1999.

  46. The problem with “control” is that it is illusory for any patented item.

    Are you suggesting that any infringement done outside the control of the patent holder is “OK?”

    Think about it.

  47. Living/inanimate is hardly the point here.  The issue is control and that is heavily implicated by the nature of the patented plant/animal.  Expose a sexually reproduced animal to the wild and it will reproduce there. 

  48. Not only “might” consider, I would post that Congress is the appropriate place to so consider.

    This is exactly the type of far-reaching policy type decision that the Courts should abstain from.

    As mentioned above – and as noted in Chakrabarty – the real issue for the court is NOT the living/non-living distinction. The law itself simply does not cover that, and thus it is off limits to the Court.

  49. Ned,

    Respectfully, you are off in the weeds again.

    I will grant you though that this patch of weeds is closer to the manufactured lawn than your usual frolic, as “control” does seem to be a viable issue. It’s just not the issue presented here (and nor will it be the issue briefed or argued or decisive). Hence anything from the Justices said to your “larger issue” will be non-controlling dicta (dicta the lower courts are free to ignore – note that I am not saying they will ignore, just that legally they can ignore – like, for example, the anti-software rant of Stevens in Benson.

  50. Malcolm, see my post above at 12:10 for more. But this case really raises the same kind of issue as was raised in Prometheus. Patenting the information there made every doctor practicing the prior art infringers simply by virtue of his knowing about the information. Here, the seed spreads naturally. It gets into the wild and goes everywhere. One cannot and should not be able to make an infringement planting seed from the wild just because it might have the patented gene.

    While we might allow the patenting of sexually reproduced plants, we need to limit theories of infringement. So as to prevent the patenting from owning the public domain and preventing the practice of the prior art.

  51. Flann, I think that with wild things, that the essence of a property right resides in control, even with patents. Once a crop is grown, pollen spreads it genome into the public domain. It cannot be infringement to plant wild seed, or seed purchased from commodity bins that may contain wild seed, just because some seed might have the patented gene.

    If such were the case, Monsanto would have every incentive to contaminate whole regions with its wild seed. It would then be able to say that every crop in every field is infringing regardless that the farmer did nothing different.

    Exhaustion has something to do with this case, but there are larger issues. Much larger. It has to do with the nature of the patented plant. It reproduces sexually.

  52. People can unlawfully use something, but the use itself is not unlawful.

    Guns don’t kill people. People kill people.

  53. Shouldn’t Monsanto have to show that in every reproduced seed – the child, grandchild, etc. – the gene that is the subject of the patent(s) has not mutated, and thus are no longer subject to the patent?

    Of course, it would be impossible for Monsanto to do this, there being zillions of offspring. Which is one reason why Monsanto should not be entitled to the presumption that the genes have NOT mutated.

    I am surrounded by 150 acres of feed corn and soybeans, so have taken a personal interest in the Monsanto cases in the US and Canada. Seed bags do indeed post warnings about unauthorized use.

  54. The mechanism of self-replication (here generally a living thing and specifically a plant-living thing) should be divorced from the equation. As in Chakrabarty, the focus in patent law is not on a living/non-living distinction.

    The Supreme Court has taken a notion of “essence of the invention” in recent years. The essence of the invention here is that the original seed is explicitly invented in order to be used in the manner that Bowman used it. The fact that ancillary uses exist is immaterial to the invention.

    While the Court decision will rest to a certain degree on the performance of counsel in making their arguments, I believe that at the start, the case leans in Mr. Bowman’s favor. Monsanto simply was not in the business of selling seed for chickens. That was not a use contemplated by the invention, and has no nexus with the invention.

  55. Since the patent at issue is a utility patent, those other sections should expressly NOT be considered potentially instructive.

    Monsanto could have chosen those other paths if Monsanto wanted the protections afforded by those other paths.

  56. Does 35 USCS Section 2541 provide any any suggestion for resolution of this case??? Or is this a utility patent issue only… and the Plant Variety Protection Act should not be considered as potentially instructive ???

  57. The purpose of the patent is replication – that’s what it is made for and what it is sold for. You don’t buy such seed to NOT grow it or feed it to chickens.

  58. You confuse several things. The farmer did not make a copy of a patented object. Nature did. (or for the religious, “God” did.)

    The patent holder does not have the rights to bar nature from doing anything.

    Uses are NEVER illegal. People can unlawfully use something, but the use itself is not unlawful. Let’s take everyone’s favorite “copying” “crime” — copying a copyright-protected piece of music without any of the exceptions present in the copyright act (fair use, etc.) nor permission nor license from the copyright holder. That isn’t an “unlawful use of a hard disk drive.” It’s not “an unlawful use of a computer.” In legal terms there’s NO SUCH THING as unlawful use. There are, however, penalties for the PEOPLE who do those things.

    In this case Monsanto is erroneously claiming that FARMERS cause seed to create other seed. Unfortunately for them that is, once again, nature.

    Finally to end your fantasy, “unauthorized copies” is a non-legal phrase created by the Big Content industry (and now being used by your masters at Monsanto). Copies are NEVER unauthorized — RIGHT for SPECIFIC ones to be made ARE.

    Which brings us, full circle, to whether Nature, having had seeds planted in her Earth, had the RIGHT to make new seeds.

    That’s how it works in this lifetime, “Z”.

    E

  59. The issue is the fact that the farmer made a copy of a patented object. The patent holder has the right to bar others from making his object. First Sale Doctrine does not matter if the patent persists and is embodied in the child seeds.

    Just because something can be used for some purpose doesn’t make that use legal. A seed can be used for chicken feed or to grow plants or for kindergarten kids to glue to paper. Two of those things are legal, one is not.

    Even if the only use for the seed is to plant it and make more seeds, that does not give the holder of it a legal right to make unauthorized copies. It also does not invalidate the usefulness of the patent, since the seeds are very useful to whoever is authorized to use them.

  60. One buys a seed of a patented plant from the patentee at his store. The seed and packaging are unmarked. There are no signs restricting its use.

    One plants the seed.

    Is he an infringer? I would hope not, but that is essentially what the Feds held.

  61. Monsanto position is that, having purchased a soybean, you cannot let it grow and produce any more soybeans without infringing. That is, the new generation of soy beans, which was the only reason for buying the first soy bean, infringes the patent. That’s nuts, not beans.

  62. Hopefully SCOTUS reverses the Fed. Cir. and we return to sanity.

    There are two reasons Monsanto should lose:
    1. The first sale should exhaust the patent rights notwithstanding the “technology” agreement. A tangible good sold on the market and used for the purpose it was intended should exhaust the patent rights of the owner who made the sale.

    2. Even if you want to allow tangible goods to be subject to the license, Monsanto’s agreement did not prevent Bowman from buying the commodity seeds WITHOUT restriction. Accordingly, the patent rights in the next generation were exhausted.

    *crosses fingers*

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