Patent Exhaustion for GM Seeds

By Dennis Crouch

Bowman v. Monsanto (SCOTUS 2012)  Download 11-796 ts

The farmer Vernon Bowman has filed his opening merits brief explaining his exhaustion defense against Monsanto's patent infringement charges. The case involves Monsanto's patented soybeans that have been genetically modified to be resistant to the broadleaf herbicide glyphosate, i.e., RoundUp Ready. U.S. Patent Nos. 5,352,605 and RE 39,247.

According to the statement of facts, Bowman purchased genetically modified soybeans on the commodity markets from a third party vender. It is assumed for the case that those seeds were grown and sold by farmers pursuant to a contract with Monsanto. As such, under traditional patent exhaustion principles, Monsanto's patents conferred no more control over the use, destruction, or distribution of those soybeans. This would have allowed Bowman to use the soybeans as feed or for biodiesel. However, Bowman chose to use the soybeans as seeds to grow a second generation of soybeans. Because soybeans self-fertilize, beans from the second and subsequent generations are genetically identical to the first generation and thus fit within the scope of Monsanto's patents. Although perhaps irrelevant to this case, Bowman admittedly purchased the commodity seeds with the hope that they were glyphosate resistant and then relied upon glyphosate resistance in the growing process. At the same time, he took pains to ensure that he was not violating any contract with Monsanto or pushing the grain dealer to violate such a contract.

Monsanto sued Bowman for patent infringement and won.

Exhaustion: Both the district court and the Court of Appeals for the Federal Circuit held that the exhaustion doctrine does not apply to new copies of a patented product created by the accused infringer. Monsanto sees its seed patents as akin to a book covered by copyright. When the publisher sells copies of the book, the copyright in those copies is exhausted — allowing the purchaser to resell or distribute the copies without reprisal. However, there is a major limitation to the exhaustion doctrine — copyright still protects against using the legitimate copy to make further unauthorized copies. For Monsanto, the fact that the patent is exhausted vis-à-vis a first generation of seeds says nothing about whether the patent is exhausted for the second or subsequent generation. Unlike the copyright laws, the patent law of exhaustion has not been codified, but the two doctrines are largely in step. The Supreme Court is currently considering a copyright exhaustion case, Kirtsaeng v. John Wiley & Sons, Inc. However, the outcome of that case is unlikely to impact Bowman's.

Monsanto also relies upon a property-law defense that limitations-on-use placed on the sale of patented goods operate as conditions that also bind subsequent purchasers. Here the original farmers were bound by contract not to replant the soybeans. Following the rule of derivative title, Monsanto argued (and the lower courts agreed) that "farmers could not convey to the grain dealers what they did not possess themselves." And further, that the grain dealers could only transfer to Bowman as much right as they possessed — that right being ownership of the soybeans without the right to use them as seed.

Pathway to Victory: Bowman's pathway to a Supreme Court victory seems to rest on two necessary holdings: (1) that the patent rights were fully exhausted in the seeds Bowman purchased and (2) that the exhaustion applies to subsequent generations of seeds. In my view, the first principle is will be easier to accomplish. The second is more difficult.

In Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008), the Supreme Court confirmed that "[t]he longstanding doctrine of patent exhaustion provides that the initial authorized sale of a patented item terminates all patent rights to that item." The correct view is here is that a condition on use does not bind subsequent purchasers of personalty unless those buyers agree by contract to be so bound. This is the ordinary rule that courts follow involving personal property and I see no reason to change that rule based upon the fact that the personal property happens to be covered by a patent.

Subsequent Copies: The fact that a patented product is the subject of a legitimate sale that exhausts the patent rights does not give the purchaser the right to use that original as the source for generating subsequent copies. Rather, the creation of those additional copies will be deemed counterfeit and infringing. Bowman does not challenge these basic principles. Rather, Bowman argues that soybeans are different because they are self-replicating seeds. Bowman writes:

If patent rights in seeds sold in an authorized sale are exhausted, patent rights in seeds grown by lawful planting must be exhausted as well. Due to the self-replicating nature of the invention, subsequent generations of seeds are embodied in previous generations . . . because seeds will self-replicate by normal use.

The farmers that I know largely side with Bowman on the issues, but they would quarrel with the idea of self-replication. In fact, farmers do an incredible about of work to grow a commercially viable crop. At a minimum for a good crop, the seeds need to be planted in sufficiently fertilized soil, watered (hopefully by rain), weeded (perhaps with glyphosate), and harvested. The timing must be right to ensure sufficient light and heat, and the fields must be protected from invading wildlife. In this sense, Bowman's statement that "Roundup Ready® seeds have been engineered to include everything one needs to practice the invention" is disingenuous. In any event, it takes much more outside input to grow a second generation of soybeans than it does to distribute electronic copies of my copyrighted writings or deliver electronic copies of non-patent prior art to the USPTO. In fact, we teach in law school that the ease of replication is an important factor in understanding the role of intellectual property rights. In an e-mail, David Snively, executive vice president and general counsel for Monsanto agrees with this point, writing that the "patent system protects – and should protect – the rights to easily replicated technologies like herbicide-tolerant seeds, just as it does for those who invent computers or life-saving medicines."

Perhaps the self-replication difference is not about energy input, but more about the nature of the product (a living organism in the form of a seed) and the fact that living organisms reproduce as part of their natural life cycle. Monsanto added an important element to its soybeans (glyphosate resistance), but Monsanto started with an incredible life form with the ability to reproduce in our natural world. Monsanto did not change or enhance any of those reproductive abilities and its attempt to control reproduction is could be seen as akin to the improper tying arguments. The fact that Monsanto made a big claim (the seed itself) doesn't change the fact that its contribution is far less than 1% of the genetic material important for a soybean's life cycle.

Finally, the hook on the argument may be that self-replication is the "normal use" of a product. This market expectation is important and could win the day. In the brief, Bowman takes pains to establish that replanting is an important normal use of commodity seeds. It is unclear to me whether the court will buy this factual argument and would be an important gap that could be filled by an amicus filing.

Growing not Making: Bowman also suggests an interesting additional argument – that growing the seeds does not constitute "making" seeds under 35 U.S.C. § 271(a). Bowman writes:

The seeds at issue here will self-replicate or "sprout" unless stored in a controlled manner to prevent this natural occurrence. Humans can (and most often do) assist in the process of self-replication. For instance, Bowman planted Roundup Ready® seeds and treated them with glyphosate. This activity led in part to the creation of new soybeans having the patented Roundup Ready® trait. But it was the planted soybean, not Bowman, that "physically connected" all elements of the claimed invention into an "operable whole."

Referencing and quoting Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518 (1972). While important, this argument seemingly would not offer a complete win for Bowman because he may also be liable for using or selling the second generation.

One interesting rhetorical element of Bowman's brief is the way that it claims the middle ground by arguing that the court "should not create an exception to the traditional exhaustion doctrine for self-replicating technologies." (Bold in original). The starting point depends upon your perspective and I suspect that Monsanto will have a similar statement arguing that Bowman is asking for the exception.

Monsanto's brief of the merits is due January 16, 2013. Oral arguments and a decision will follow.

146 thoughts on “Patent Exhaustion for GM Seeds

  1. Guynnster, you are misapplying your efforts. You seek pleasure in proving someone wrong when you should be putting more effort into understanding the actual issues at hand.

    As to the fallacy of “hides behind the skirt of anonymity” – LOL – focusing on the who instead of the what is a clear indication of someone realizing that they are not “winning” the battle of the what.

    Reconstruction simply is a non-sequitur to the issue at hand. Thus it matters not the axiomatic nature of “reconstruction is infringement,” and you have added to the bad lawyering by resting your case on your (inapt and unsupported) conclusion, instead of looking at the particular case itself.

    And I note that you still have not addressed the second question put to the Court.

  2. If reconstruction is infringement it is axiomatic that new manufacture is infringement.  Since anon hides behind the skirt of anonymity we will never know who we had the pleasure of proving wrong when the actual decision comes out.

    Sent from my iPad

  3. Reconstruction is a non-sequitur to the current issue.

    Growing seeds is NOT even worse, and quite the contrary, what grows is contained in the item already sold. Thus no exception needed – and I am not depending on one. (You still haven’t addressed the second question to the Supreme Court).

    There is indeed “bad lawyering” – but it is coming from Guynnster.

  4. Must be bad lawyering because currently there is no exception for people manufacturing infringing goods just because they start with a few parts from a broken gadget.  Reconstruction is infringing activity.  Growing infringing seeds without authorization is even worse.  You need to find a big exception for that one and so far no case provides one.  But you can dogmatically think as you like.

    Sent from my iPad

  5. But you are relying on an exception

    Quite the contrary – I am relying on the doctrine of exhaustion as it stands.

    Did you not see the second question put to the Supreme Court? It is your side of the discussion seeking to create and rely on an exception.

  6. You are welcome to your opinion.  But you are relying on an exception that making infringing seeds is somehow excused just because someone else purchased single use seeds upstream from the infringing activity in question.  According to Mallincrodt single use restrictions are valid and consistent with patent exhaustion.  You had better read this case a little more carefully and then consider the use of the term "implied license" in Univis before declaring yourself to be the only who truly understands the issues.

    Sent from my iPad

  7. Guynnster,

    You are completely ignoring the fact that use = make and is intimately tied to the very invention and the reason these seeds are sold in the first place.
    Until you can recognize these things and understand how they fit into the fundamental concept of the patent exhaustion doctrine, you will – of necessity – keep waiting. For others, the ability to reasons through these things act as a precursor to the Supreme’s decision (btw, have you listened to the oral arguments on the other exhaustion case before the Supremes yet?)

  8. You bet I noticed I used the term license because there is a whole line of patent exhaustion case that talk about patent exhaustion as creating an implied license, such as Univis.  And single seed planting restrictions are eerily similar to single use restrictions in Malloncrodt, which were upheld as valid.  And I have no idea why you think there needs to be an exception to the rule of patent exhaustion for self replicating organisms, which seeds aren't exactly.  In fact seeds don't divide and make other seeds but they make plants.  The farmer, along with soil, fertilizer, air and sun, and of course plants, is what makes new seeds.  This action creates an infringing product.  And unless the farmer has a license to replant them,he can't.  By contract the patent may and did provide a license to use the seeds for most purposes, amount which planting them was expressly restricted.  With no license the planting is an infringement IMHO.  You are welcome to think otherwise and I'm sure we'll all be enlightened when the decision comes down.

    Sent from my iPad

  9. Everyone has made some really good arguments from both sides. But my main concern is: with the number of acres controlled by Monsanto’s technology is a very significant part of our food source for this country. It bothers me that we are dependent on wether or not they will allow us to use their technology. Can you imagine one day them deciding they don’t want to sell it to us or what would we do if they decided they want 300.00 for a bag of corn seed. Oh wait they already have……. Maybe we will quit supporting them with our money until they get to 500.00 per bag.

  10. anon, but you "philosophy" flies in the face of law so well established as to not even be subject to question.

    If one sells an animal or plant to another, the person owns its offspring.  You are suggesting that this is not the law, or at least, should not be the law.

  11. It’s only nexus is for being planted to make more seed. It’s the only reason why that patented invention is sold.

    Don’t you ever ask yourself why they keep planting the stuff year after year, at such great personal expense? Maybe they’re trying to set the world’s record for the largest pile of soybeans.

  12. because the normal use of the seed can also be considered a making

    Because it bears repeating and emphasis: the normal use of the patented seed must consider the making.

    The patented seed has no nexus with being used as feed for chickens or for making tofu. It’s only nexus is for being planted to make more seed. It’s the only reason why that patented invention is sold.

  13. Four more additional days and nothing of substantive nature MM.

    It clearly appears that you are running away from yet another dialogue, but this one is one that you said you would gladly join.

    Curious isn’t it how you never seem to be able to provide answers or substantive points outside of a very narrow range of your own pet wacky theories?

    It’s like you have a one track mind, and that track leads straight to oblivion.

  14. Guynnster,

    You do not seem to be grasping the notion of exhaustion. Once a patent is exhausted, there are no more patent rights to give implied licenses to. (Your statement “Purchasers don’t ever have patent rights” is a non-sequitur. I suggest you look into the history of secondary markets.

    The notion of self-replicating is indeed not in Univis Lens, but exhaustion is. The second question put before the Supreme Court is whether a NEW exception should be put in place for self-replicating inventions. Currently, there is no such exception.

    I recommend that you listen to the oral arguments before the Supreme Court in the other exhaustion case (Kirtsaeng).

    link to patentlyo.com

  15. anon, to your other point, patent holders have patent rights, and buyers have implied licenses under the patent as a result of a legitimate purchase from an authorized seller.  Purchasers don't ever have patent rights.  Without the implied license they would be infringers.

    Sent from my iPad

  16. Hi Anon,
    I read a summary of Univis Lens and don't agree that it's holding is as sweeping and applicable to self replicating seeds as you have argued.  At it's core is the issue of price fixing, very disfavored at the time of the opinion (1942), and the holding clearly relates to the sale of one blank to make one lens, and then the right to incorporate the one lens into any finished article.  It has nothing to do with self replicating organisms that make exact copies of themselves.  Thus the Monsanto case will be mostly a case of first impression. Until the decision I can express my beliefs as to what the holding ought to be because I don't agree that the holding and facts of Univis are close and exactly controlling as you seem to think.  But it will be interesting to see the outcome.

    Sent from my iPad

  17. Guynnster,

    Notice how you use the phrase “licence” as opposed to patent right (you should recognize that you are mixing in contract issues with patent exhaustion doctrine, and that should be your first clue that something in your thought pattern is amiss). Whether “combined effort” or not, the invention is contained in the first sale completely and that first sale exhausts the patent right. Now, contractually (i.e. your use of the term license), brings a different wrinkle than the legal discussion of patent right exhaustion. Think of it this way: if there was no concern with patent exhaustion, then no contractual limitation would be needed!

    You example of the DVD burner is inapposite. The multi-replication capability of seed is within its natural function and use (and the very use exhausted in the first sale – as I have said, that first sale is directly tied to what the invention is about – planting and thus making – no one buys the originating seed to feed chickens or make tofu), and is quite apart from the claimed invention – and cannot be contained by the claimed invention.

    Your example falls apart when you consider that you are comparing a DVD (not a DVD burner) with a seed. You have added an extraneous factor. Seeds do in fact quite naturally make more seeds. DVDs on the other hand do NOT in fact naturally make more DVDs. The difference defeats your own argument.

    Read Univis Lens. Listen to the oral arguments before the Supreme Court. Broaden your thinking beyond what you currently think “ought to be.”

    I get what you think the result “ought” to be, but your ought is mired in an incomplete understanding of patent exhaustion doctrine.

  18. That part you put in bold – I suppose you have some authority for it being good law?

    Did you read my comment? Did you read Univis Lens? Please stop confusing “make as many as you want” with the natural use of a seed – that’s preventing you from understanding the situation. With seeds, the progeny is within the original item. That’s actually a “bug” with self-replicating technologies, not a “feature.”

  19. Anon,
    I have different opinions regarding what the court might do versus what I think the doctrine ought to be.  My understanding is I'm responding to people's opinions regarding what they think the law ought to be.  Therefore that is what I am providing.  Seeds are not self replicating in the sense that cells self replicate.  A seed does not divide into another seed spontaneously.  Rather I sees only produces a plant, which must be nurtured by the farmer over a long period of time in hopes the plant will reach maturity and produce seeds.  It is the combined action of the plant and the farmer that make next generation  genetically modified seeds.  By the time the new seeds are made the original sprouted seed is long gone.  It fulfilled it's purpose and with its departure so went the licensed rights granted to the farmer to plant it.  The combined efforts of the plant and farmer nurturing are like a little manufacturing plant that produces infringing product. The farmer then has the right to do anything it wants with the seeds-all except plant them.  That to me is the correct result. Otherwise it's just like buying one DVD, making endless copies and then acting as if the one license for one DVD now applies to all DVDs.  Licenses are not self replicating.  If the one seed were destroyed while making one new seed you might have a point, much like making a legitimate backup copy of the DVD before it gets scratched up and destroyed.  But one seed produces not one seed, but hundreds or thousands, albeit indirectly, much like a DVD burner can produce many copies of the DVD.

    So I believe one license to plant one seed mean just that.  One license doesn't replicate itself into many licenses any more than one DVD purchase.  Just my humble opinion as to what I thnk ought to be the result.

    Sent from my iPad

  20. the first sale exhausting the patent rights to the seed and its progeny

    That part you put in bold – I suppose you have some authority for it being good law? Because I’m pretty sure I’ve never seen the caselaw on being allowed to make as many as you like if you’ve bought one.

    I’m sure it would have come up in Global-Tech, but nobody even raised it. Hey, the guy bought one from the patentee, so why couldn’t he sell its progeny?

  21. I am not satisfied by “proclaiming victory,”, but rather, the victory will be had if the exhaustion doctrine – as understood today – is simply applied.

    Take a look at the Univis Lens case. Exhaustion from the sale of an article is induced even if the actual article sold is “not complete” but contains enough of the patented item.

    So too with the seed (as pertains to any progeny).

    The fact that the seed self-replicates has no impact on the first sale exhausting the patent rights to the seed and its progeny (so, in essence you are incorrect in your assumption that second generation seeds are not affected by the first sale – once exhausted, the item in ALL of its natural uses is fair game). To hold otherwise is to change the current law and understanding of the exhaustion doctrine (hence the second question to the SC sounds in that very aspect). The problem you have with self-replicating items is that to create such a loophole promises to swallow the exhaustion doctrine completely. To reach your view, you have to assume the answer you want to have, which in fact is different than what the current law is. Take a listen again to the oral arguments in front of the SC. The position you are espousing was absolutely trounced there.

  22. Hi anon.  I know it's always satisfying to proclaim victory, but the flaw in your argument is that the seed one buys from Monsanto is not the same seed that is made from the plant derived from the first seed.  The first sale doctrine allows the buyer to plant, eat, or discard the seed.  But it confers no rights with regard to what the farmer may do with second generation seed, which was not sold by Monsanto.  Because the first sale does not apply to seeds not sold by Monsanto, planting second generation seed is an infringement, whether by the unauthorized first buyer or an unauthorized third party.  Because the buyer can't plant second gen seed, a third party cannot magically have rights that the first buyer lacks.

    Sent from my iPad

  23. I Agee that if Monsanto sells you the seed you can plant it.

    This admission allows the whole use=plant=make counter position to destroy any post sale controls of the patented item (its the basic premise behind the exhaustion doctrine).

  24. Accept the second sale is without limitation of any kind (and Monsanto not only agreed to such, but testified to this as well).

  25. Hi Anon.  I actually didn't forget what the sale was for.  But the sale is contingent on only planting once and then using the crop for purposes that do not involve planting, which would be a new infringement because the user made the second gen seed.  It was not sold by Monsanto.  Therefore it is clearly an infringement to use it beyond the license that is applicable as a result of the first sale.

    Sent from my iPad

  26. I Agee that if Monsanto sells you the seed you can plant it.  But I thought the issue here concerns a party to whom Monsanto did not sell seed.  You cannot divorce the actual sale by the patent holder from the first sale doctrine, especially when the sale was contingent to the purchaser.  Monsanto sold the seed older condition that it only be planted once.  If the first sale doctrine does not shield the buyer from infringement when replanting second generation seed I don't see ow it can shield a third party.  As I learned in property law:  non doc qui non habit (or something like that) meaning you can't give more than you have.  A thief cannot give good title to stolen property to a third party.

    Sent from my iPad

  27. Actually, I am “running away” from your frivolous off-track frolic, and it is you that is running away from the substantive, actually in context discussion.

    As to trying to make myself clear, I have provided additional source materials on more than one occasion so clearly the lack of effort is not on my behalf. Quite the reverse, actually since it is you that has not even bothered to try. You seem too pre-occupied with your frolics to notice either the content or any efforts to make you aware of the content – your immediate comment that I refuse to make myself clear is actually a condemnation of your gamesmanship, as clearly I have repeatedly attempted to educate you.

  28. It kind of looks like you’re running away from a substantive discussion, though. That’s fine. After all, I told you that I didn’t expect to ever understand you. Your refusal to even try to make yourself clear is of course the reason why.

  29. Yes you have.

    But OK, let’s talk about contract law again. What is it that I’m supposed to understand from the links you provided? I don’t see anything in there telling me that the Patently-O Terms of Use prohibit Ned from telling lies in the comment section. Is that what we are talking about?

  30. So you are no longer denying that you’ve been mischaracterizing my comments? I just want to make sure I know where we are before we change topics again.

  31. I don’t understand why you place such importance on “your expectations.”

    You care to understand, or you do not. Your actions in not understanding speak more than anything else. You have ignored the items I placed at your disposal for you to understand the proper context of the discussion and you continue (here, above at 1:11 PM Dec 06, you careen out of context and then accuse me of dodging your out of context path (the 2:40, 2:57 and on comments).

    You keep shooting arrows that miss the target and then wonder why you are missing the target.

  32. How is your answer of “I don’t, anon, I don’t.” – with no more – to my question of “how do you ever expect to understand anything I say?” a mischaracterization that you don’t care to understand?

    This can’t possibly be what you meant to say, can it? Nobody said that my answer is a mischaracterization of anything.

    Perhaps you meant to say “How is it a mischaracterization to say that your answer of ‘I don’t’ to my question of ‘how do you ever expect to understand’ indicates that you don’t care to understand”?

    If that was what you meant then my response is that not expecting to ever understand you is quite different than not caring to. For the record, however, I don’t really have strong feelings one way or the other. But your latest comment doesn’t do much to change my expectations.

  33. How is your answer of “I don’t, anon, I don’t.” – with no more – to my question of “how do you ever expect to understand anything I say?” a mischaracterization that you don’t care to understand?

    If you wanted to say more about understanding, would you not have done so?

    If you wanted to actually understand, you would have already looked into the links provided and understood the context.

    Clearly, you have done neither. Instead of understanding me, you continue to shoot ineffectual arrows.

    It may be a supposition of mine regarding your (lack of) action, but “mischacterization” is not the right word.

    Fascinating it is that you attempt to label my behavior as bad behavior, while your behavior is seemingly accepted as perfectly normal – and yet I have even provided assistance to you in order to properly understand the context of the discussion. Assistance you have chosen to ignore.

  34. Oh that’s right – you don’t care to understand.

    That’s not what I said. You can’t go three sentences without mischaracterizing others’ comments, can you? And yet you’re the one lecturing others on bad behavior. Fascinating.

  35. no credit for this, as you’re weaseling it up a bit.

    There is no “weaseling it up” – the discussion is as stated – I am providing the context of that discussion, not “weaseling.” If anything, your desire to NOT see this in context is where the “weaseling” is going on.

    I note too, that you still haven’t shown that you understand what a web site’s Terms of Use signify (even after I have provided helpful links).

    Oh that’s right – you don’t care to understand.

    I guess if you only want to troll, actually understanding would get in the way, wouldn’t it?

  36. May I remind you that the good professor thanked me for the comment in which I gently asked you to “shut up”?”

    I didn’t say it did, did I?

    You did.

  37. I wasn’t making it up – I just don’t have time to day to look it up.

    You’ve already been shown wrong in what you think the Prof. was thanking you for (gently telling me to shut up) – chances are good that you are wrong on the other as well.

  38. You are way too full of yourself – the Prof.’s thanking had NOTHING to do with you telling me to shut up, no matter how “gentle” you think you were.

    I didn’t say it did, did I?

    Speaking of refusing to acknowledge points made in this thread, I’m still waiting for you to supply the link to the time when I allegedly denied that Professor Crouch said “no lying”. You weren’t making that up, were you? Because Professor Crouch doesn’t like lying.

  39. LOL – you have taken Prof. Crouch’s comment at 3:29 PM out of context. The “thanking” was the fact that we had already started moving forward (my end of the prisoner’s dilemma in fact), or at the very most regards your comment about the Prof. being active. Further, even after that post you apologized: “My use of “shut up” was a poor way to express my point – I apologize to both of you.” Would you apologize if you thought you were gentle? Really?

    You are way too full of yourself – the Prof.’s thanking had NOTHING to do with you telling me to shut up, no matter how “gentle” you think you were. Again – you were telling the wrong person to shut up.

    You still are.

    101 Integration Expert’s following post on that thread hits the nail on the head:

    But the annoyance is most accurately directed at the person refusing to answer the questions, or evading them, rather than toward the one asking.

    As I explained in my suggestions for making the dialogue better, those who refuse to acknowledge points made (in the immediate thread that would be IANAE) for whatever reason – for commercial or for philosophical reasons – are the ones that destroy any chance at a true dialogue. It is those that purposefully refuse to admit points made, that obfuscate, and that do not engage who are the ones you should be directing your arrows at. Funny thing, is that your arrows are almost always only pointed at me. Now on this immediate thread, you do indicate both IANAE and me, but you quite miss the point that IANANE (and only IANAE) repeatedly is ignoring important parts of the discussion for no other reason than those points wreck his position. That is not dialogue. The better enjoinder by you would be to ask IANAE to address those valid points, not to try to shut down the discussion with those valid points being ignored.

    Your lack of objectivity is something that you should work on.

  40. LOL on myself

    Let me make that last post clear:

    I asked, What do you hope to accomplish?

    The evident answer is that you are just trolling me (as has been pointed out – since you ask basically no one else to shut up, when the candidates for doing so are plentiful).

  41. anon, the Canadian opinion is interesting in that it totally rejected the idea that the farmer “made” anything by planting the seed. That was a act of nature, entirely.

    Infringement was found, however. The farmer was found to have “used” the invention by retaining seed, and planting it.

  42. Anon, I urge you to read Bowman’s brief. Once a sale is made, it passes beyond the control of the patentee under the patent laws. The patentee cannot impose any “restriction” on use that is enforceable by infringement action. The patentee’s sole remedy is by breach of contract.

  43. Moocow, buys a bag of chicken feed.

    Buys a bag.

    Buys.

    Exhaustion only requires a sale. Thereafter, the patentee cannot impose any restriction requirement on the buyer that might be enforceable under the patent laws.

  44. We have a doctrine that patents cannot cover products of nature. Why is a sexually reproduced plant or a seed not a product of nature?

    I know this issue has already been decided by the Supreme Court. JEM Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 US 124 – Supreme Court 2001. But something really is amiss here, because we know that once released into the wild, sexually reproduced plants and animals return to nature.

  45. Miles, thanks for the link.

    All, here, the farmer originally bought seed from Monsanto, retained seed, planted it and discovered that 60% was Roundup Ready resistant. He then continued to replant retained seed thereafter with a 95% purity rate.

    The court found him liable for “using” the invention.

    The dissent said the invention itself, to the extent it covered a plant, was not patentable subject matter. The dissent would have limited the scope of the claims to the use of the patented plant DNA to engineer RR resistant plant varieties.

  46. If you don’t expect to understand, and yet want to debate the point, what pray tell, do you hope to accomplish?

  47. May I remind you that the good professor thanked me for the comment in which I gently asked you to “shut up”?

    I doubt that very much (on two levels – first, you were not so”gentle” and second, the Prof. does not espouse rudeness).

    Can you supply the link to this so-called event?

  48. I don’t, anon, I don’t.

    And thanks for the reminder. May I remind you that the good professor thanked me for the comment in which I gently asked you to “shut up”?

  49. You missed a few points Leopold.

    As to “but I don’t presume to speak for him” which implicates that I do, may I remind you that I was personally asked how to make the blog better and that my suggestions do not “presume” anything on Prof. Crouch’s part. The fact that he has a Terms of Use still clearly escapes significance for you.

    I cannot force you to take the effort to understand what that significance is, but if you insist on debating a point with me that you refuse to understand at the onset, how do you ever expect to understand anything I say?

  50. The topic was your misunderstanding of what this website’s Terms of Use signify.

    LOL. Good effort, though – I’m impressed.

    I affirmatively stated that the basis for Prof. Crouch’s “no lying” policy was in the Terms of Use.

    Ah – no credit for this, as you’re weaseling it up a bit. That’s not what you said, actually. You said that the Terms of Use prohibit lying. You’re still incorrect, but we’ve been over that.

    I also affirmatively stated that the commercial views of certain posters violated those same Terms of Use.

    I’m really impressed now, as you did indeed say that. You’re still wrong, of course, for the reasons I gave during that “beatdown” I received, but that’s fine. Full credit here.

    You, for some unknown reason, even fought and denied that Prof. Crouch even said “no lying.”

    Completely false. Not only do you receive no credit for this answer, you lose all of the credit you had earned.

    Instead, you told me in no uncertain terms to “just shut up.” I shot back that you were (and you still are) telling the wrong person to “just shut up.”

    Also completely false, if you’re saying that this occurred during our discussion about the Terms of Use. Would you care to clarify?

    I would fully join Prof. Crouch in a move to have a three strikes bad behavior ban for the listed activities above.

    LOL again. Professor Crouch can do whatever he likes – I doubt that he cares very much whether I “join him”. I also suspect that he has a very different idea than you of what “bad behavior” is, but I don’t presume to speak for him.

  51. None of the items in my post above are imaginary.

    On the other hand, “running away” by you on substantive points is very much real.

  52. Meanwhile, we’re still waiting

    to quote MM, “Ohnoes!!!

    Sorry MM, the ball is in your court on that thread since you said, now four days ago, that you would gladly post something of substantive value during my afternoon naps.

    Still haven’t seen anything of substantive value from you.

  53. political, racial, and se_ual allusions

    Oh noes!!! What is this country coming to??!?!

    Meanwhile, we’re still waiting for anon to explain the “pro-choice” relevance of granting claims to novel catheters.

  54. I guess that’s the other flaccid “arrow” in anon’s tiny “quiver”: when all else fails, simply refer over and over and over again to some imaginary event wherein anon issued a “beatdown” and his adversaries “ran away”, humiliated. Because everyone knows that if you repeat something often enough, why, it becomes the truth!

    And that’s why anon “owns us” all, at least in anon’s awesome brain.

  55. The topic was your misunderstanding of what this website’s Terms of Use signify.

    I affirmatively stated that the basis for Prof. Crouch’s “no lying” policy was in the Terms of Use.

    I also affirmatively stated that the commercial views of certain posters violated those same Terms of Use.

    I was also the first to affirmatively state that my opinions are my personal opinions and not related to, subsidized by, or in any way connected to a commercial cause.

    I also explained that both of these types of violations led directly to poor (or nonexistent) dialogues because both led to posts that did not want any dialogues, that ran away from valid counter points made, and that made getting to any real heart of a matter of law (or of fact) far too arduous for most contributors. I explained that I was personally asked by Prof. Crouch for my ideas on how to make this a better blog and my answers sounded in policies that he had already in place.

    You, for some unknown reason, even fought and denied that Prof. Crouch even said “no lying.” (although your 1:11 PM post here finally gets it right. Instead, you told me in no uncertain terms to “just shut up.” I shot back that you were (and you still are) telling the wrong person to “just shut up.” My guess is that that hurt your feelings.

    As to the dead prisoners line, which you love to mock, I also alluded to the fact that I was perfectly willing to help make this a better blog, but that a classic “prisoner’s dilemma” situation existed – and still does exist. Granted, the direct lies of MM have stopped – after he ventured into a substantive discussion with David Stein and your truly, but the prisoners’ lives are still being sacrificed by the usual tactics of strawmanning, accusing others of what MM does, and liberal does of insults and non-professional political, racial, and se_ual allusions.

    The fact that MM’s posts are agenda driven is not debatable. And there is nothing wrong with having an agenda, per se. Getting him to own up to it, to drop the insults when others get the better of him (which is quite often, since he is afraid to venture into substantive matters), to constrain himself to act in a professional manner….

    …well, I’ve given my view on that as well. I would fully join Prof. Crouch in a move to have a three strikes bad behavior ban for the listed activities above.

    Would you?

    I didn’t think so.

  56. Inventor, Monsanto “could” require that all crop seed be returned to it, or could allow it to be “replanted” for a fee. If a farmer breached, Monsanto would have a remedy, but under the law of contracts.

  57. Anon, on dicta, yes. But the holding of the SC over 150 years on this topic is more than clear. Once a sale is made, the article sold passes beyond the patent laws, or for that matter, the copyright laws. The two legal regimes are read together on this point.

    Thus, violation of a “notice” restricting use of a sold item does not make the resulting sale or use infringing. If there is a remedy, it is under the law of contracts. As a corollary, the patent laws do not justify post-sale activity that might be a violation of the antitrust laws.

    When Monsanto (or it authorized vendor) sells seed, it can no longer resort to the patent laws according to the Supreme Court. This is where the Supreme Court and the Federal Circuit part company. The lower court seems to think that post sale use restrictions can be enforced under the patent laws.

  58. I recognize that you are still a little sore from the beatdown I gave you on that topic…

    Exactly which topic was that, anon? I bet you can’t or won’t even clearly articulate what that topic was. Can you repeat one affirmative statement made by you in that discussion that you are willing to stand behind? Just one?

    I didn’t think so.

    Free the dead prisoners!

  59. Still with the utter refusal to answer even the simplest of questions, anon?

    That’s anon’s game: say something incoherent with an insult riding on top of it. When you press him to clarify, you get accused of “avoiding the issue.” When you take a reasonable stab at understanding what he is talking about, or when you just take him literally and point out the logical problems, you are “twisting his words to suit your agenda.”

    I don’t think there’s anything more complicated than that. It’s sad, in a way, because every so often anon makes a comment that suggests he does know something about patent law. It’s just that instead of carefully articulating his position, he relies on capitalization and bolding. And then, no matter how inocuous or academic the issue being addressed, he poisons it with insulting references to everyone else’s “agenda.”

  60. Still with the utter refusal to answer even the simplest of questions, anon?

    Obviously, you are still dodging any attempt to pin you down on anything, by replying with hopelessly vague expressions like “meaning and context of Terms of Use.”

    Keep trolling, my friend.

  61. Still with the incorrect contract angle, Leopold?

    Obviously, you have not looked into the meaning and context of Terms of Use (and also ignoring the context of the express request to make the blog a better site), and you are still clinging to some errant view.

    Aim higher my friend.

  62. He did indeed say that. But I’m sure that you will not disagree that parol evidence is inadmissible to contradict or augment a contract that appears to be whole, right?

  63. So that he stops his incorrect postings, of course.

    LOL – i just had to throw that wishful thinking out there.

    Actually, more in line with how MM has had his postings “altered” with the no-flat-out-lies policy of the new Patently-O, if IANAE recognizes the actual points here, and persists in misrepresenting them, he too would violate the terms of use of the blog.

    Have you checked into the context of Terms of Use that were so confusing to you yet? Even lacking that, I am sure that you will not disagree that Prof. Crouch explicitly said that lying is not allowed in comments on this blog, right?

  64. I think you two have articulated the two perspectives on this case quite well. Now, why don’t we wait and see what SCOTUS has to say, instead of just repeating the same things over and over again.

  65. Exhaustion does “give” the right to use (more correctly, wipes out the right of the patent holder to exclude use) – even in that ancient art called agriculture.

    Yet again you neglect to look at the nexus of the patented invention and the point, the very reason of the sale (hint, originating seed was not sold to feed chickens or make tofu).

  66. unless of course, that patented seed has been exhausted by prior sale…

    Exhaustion doesn’t give the right to copy. Never has.

  67. until you start doing it with someone else’s patented seed.

    unless of course, that patented seed has been exhausted by prior sale…

    Your attempted interjection of the copyright hypothetical is not on point (for a number of reasons, including the fact that two people painting the same outdoor scene is not ‘copying,’ and your strawman is showing in your forcing a pure-copy scenario to be “displayed outdoors” – which has nothing to do with anything). As to your attempted new defining of “using”, it is not clear what parallels to the present case you are trying to make.

  68. which may be used for any number of purposes

    Ah, good, we’re making progress here. Too bad the word “primarily” was lost on you, but that’s to be expected. Not like you were going to agree with me just because we think the same thing.

    INCLUDING late season planting (which has been done for generations)

    Which is perfectly acceptable until you start doing it with someone else’s patented seed.

    You might as well say that because someone is a landscape painter they can go around and paint an exact copy of someone’s copyright artwork that is being displayed outdoors, simply because landscape painting has been done for generations. Yes, it’s a perfectly acceptable activity, until someone else has a right to exclude you from copying. And no, “using” the work by looking at it and painting another doesn’t make the whole thing okay.

  69. We’re talking here about commodity seed which is sold primarily for use as animal feed and the like

    We are talking about commodity seed (the third sale in the extant fact pattern with no K terms attached) which may be used for any number of purposes INCLUDING late season planting (which has been done for generations)…

    So clearly, you don’t know jack about the facts at play here.

    Please remove the Calvinball from your face before your next post.

  70. to use the seed that was sold, you have to put it into the ground and thus “make” is simply not divorcable from the purpose of the sale.

    We’re talking here about commodity seed which is sold primarily for use as animal feed and the like. So clearly there’s no possible way to use the stuff without burying it underground in neat little rows, watering it, fertilizing it, weeding it, and hoping it “self”-replicates.

  71. Read slower so that YOU understand.

    Read again the question you quoted above and then the question you think I dodged. Think about it for awhile. Let me know when comprehension dawns on you.

  72. No, because to use the seed that was sold, you have to put it into the ground and thus “make” is simply not divorcable from the purpose of the sale. What you do after that “make” is what you are trying to emphasize, and like IANAE’ a ‘agriculture’, you both are missing that critical first use.

  73. Anon,
    You misread. Of course Monsanto doesn’t sell its seed, and farmers don’t buy it, as chicken feed.
    So let me rephrase: “the very purpose of selling seed it is to enable farmers to grow food. The purpose of selling seed is not to grow more seed.”
    Better?

  74. Conversely, this sounds in the position that Monsanto HAS exhausted their ties with the sale. Is that the position you are taking in your question?

    Very well, I’ll type slower so you can understand.

    Trespass, on these facts, depends on the patentee owning the article.

    Infringement, whether exhausted or not, depends on the patentee not owning the article.

    I dodged no questions.

    “what does Monsanto own that could make Monsanto liable in trespass?”

  75. Moocow, then are you surrendering the “make” argument that the seed growing in the ditch “makes” more seed?

  76. Steven,
    there can only be patent infringement if somebody makes, uses, or sells the patented thing. Just because something fell off your neighbor’s truck and grows in the ditch on your property doesn’t mean you’ve infringed a patent.

  77. Moocow,

    I am not wrong. This invented seed was sold to make more seed. You MUST keep in mind what the invention was and tie that into the sale – go back and review exhaustion doctrine basics.

    You “much more apt description” is simply wrong. Monsanto would not have created this invention to take the originating seeds and use them as chicken seed. That simply makes no sense whatsoever.

  78. You forgot use.

    And in this case, the explicit use tied to the very essence of the invention is use as planting – ergo, that use implicates make.

    While you say “Not one of them permits a subsequent purchaser of those patented products to make additional copies by operation of exhaustion,” you have once again conflated lines of thought and applied them inappropriately.

    As just pointed out, when use involves make, your statement is simply flat out wrong. You cannot deny the inventive concept in this patent is only good for use as planting, which necessarily implicates the make feature. This patented invention is not for feed or for tofu – there is nothing saying that you could not use it so – but that’s not why the invention was created.

  79. Do you trespass if you do not have an ownership interest in what is said to be trespassing? Conversely, this sounds in the position that Monsanto HAS exhausted their ties with the sale. Is that the position you are taking in your question?

    While you’re dodging questions

    I dodged no questions. Why are you accusing me of something I am not doing.

    The exhaustion doctrine is critical to the entire discussion thread, including the sub threads of trespass to land. Why would you think otherwise?

  80. I think you’re wrong there. Seed simply isn’t sold “to make more seed.” A much more apt description would be to say that the very first purpose of the seed sale was to enable the production of poultry feed.

    Maybe it helps to look at soybeans for what they really are: chicken feed. Say the farmer buys a bag of patented chicken feed. Instead of feeding it to his chickens, he copies the product and starts selling infringing brown-bag chicken feed. Why would that not be infringement?

  81. Copying is not a valid “use” of a patented article, no matter how good your title.

    Unless of course the sale of the originating seed was for the express purpose (use) of planting it (and thus making more seed by default).

    Somehow you keep on missing this critical point.

  82. Guy, but I think you seem to ignore that when you plant a plant, the plant automatically produces new seed. If you have a right to plant the plant, you cannot buy that very act also be an infringer.

    This is why I said the situation is somewhat complicated because the normal use of the seed can also be considered a making. Lourie was right that making new copies of the patented product is not within the ambit of the rights given to the rightful owner of the patented product. However, the exhaustion doctrine does give the owner of the patented product a right to use it in a normal use of the product is, in the case of the seed, the plant it.

    This is why you have to take a look at the situation without any contracts. If Monsanto sold the seed to the farmer, naturally one would think that the farmer would have a right to plant it. Not so?

    If this is a legal act, then it does not become the legal because the plant produced by the seed after planting automatically produces new seed. That cannot be an infringement.

  83. Guy, I have just replied in in the same fashion to IANAE. But I will repeat this. If Monsanto sells you a seed, I say you have a right to plant it.

    What say you?

  84. IANAE, listen to what you just said in response to my statement that the owner of the seed as a right to plant it. You said that the owner of the seed does not have a right to use the seed to replicate the seed in numbers. But this is a natural consequence of using the seed for the purposes of planting.

    In essence what you have just said is that Monsanto can sell you seed and you cannot plant it. That is what you said. This is totally illogical.

  85. You forget the very first purpose of the sale was to make more seed.

    Most every patent license is for the purpose of manufacture and sale of a patented product. Not one of them permits a subsequent purchaser of those patented products to make additional copies by operation of exhaustion.

  86. Keeping in mind that I am NOT a lawyer, and I have not read the patent…

    I started a reply, then understood your point. But I think there is still perhaps something here. I recall some other patent susceptible to a similar argument, but there, the novel item was itself dubiously patentable material. If the gene-inserted-in-soybeans is a patentable thing, then it is no surprise if its primary advantage is that it solves pre-existing problem more efficiently and cheaply, and that seems like it could be a dependent claim.

    Alternately, perhaps they could patent the actual (biomolecular) process by which the gene deactivates glyphosate in soybean plants. Then, the farmer only infringes when he (1) plants the GM soybeans and then (2) supplies them with glyphosate to deactivate. The transformation is applied to the herbicide, in the field, by the genetic machinery invented by Monsanto. Better?

  87. You forget the very first purpose of the sale was to make more seed.

    You MUST keep in mind why that first sale was undertaken (and it was not undertaken to sell the invention for feeding to pigs or to make into tofu. Exhaustion cannot be divorced from that very first sale, the purpose of that sale and the nexus with the invention. All these “other uses” only serve to kick up dust.

  88. if you ignore the exhaustion doctrine

    While you’re dodging questions, here’s another. How is the “exhaustion doctrine” the least bit relevant to a question about trespass to land?

  89. Think hard. It’s a tricky question, because the answer isn’t what you want the answer to be

    It’s only a tricky question if you ignore the exhaustion doctrine or attempt to create an exception (ass stated in the questions to the Court. Otherwise. just not that tricky.

  90. These “what if” arguments are in the realm of accidental and de minimus activity. That’s not Bowman’s argument but your post makes for light albeit irrelevant reading.

  91. The notion that a good patent means contracts are never needed ignores the fact that it’s easier to enforce a contract than a patent and that’s why people bind licensees with all kinds of contractual limitations all the time. But the fact there are contract provisions does not mean the patent doesn’t also apply. In this case it is a patent violation to make genetically modified seeds of the type claimed. Patent exhaustion applies to uses of the seed that don’t involve making it. Exhaustion never excuses one from making a patented product any more than the first sale doctrine permits a book owner to copy the book. Copying is one use of a book just like planting a seed to make more seeds is one use. They both happen to be barred by copyright or patent right.

  92. patent exhaustion covers more than the mere selling of a pretty bunch of paper

    Yes, selling. Very good. This particular one covers the selling of seed.

    Now, once Monsanto sells the seed (i.e., transfers its ownership in the seed to not-Monsanto), what does Monsanto own (i.e., “Monsanto’s property”) that could make Monsanto liable in trespass?

    Think hard. It’s a tricky question, because the answer isn’t what you want the answer to be.

  93. Using and making are not exactly tied together in the case of seeds. No one plants seeds just so they can keep planting seeds into the endless future. Everyone knows the vast majority of seeds are valuable for lots of other uses, such as food or energy. The fact that Bowman could have legally used the seeds any way he want as long as he doesn’t make more seeds is the proof in the pudding. He was permittined to use the patented seeds because the the patent exhaustion doctrine. However, he is not permitted to make new patented seeds on his own because that act infringes the patents. The distinctions are so clear it’s hard to see how Bowman could win. The book analogy is very apt. I can buy used books all I want and then do anything I want with it: read it, tear out pages I don’t like, burn it, use it as a door stop, etc., all of which are uses. The one thing I can’t do is make a new book by copying the old one. It is the unique words of the book that cause the copyright violation. Likewise it is the unique genetic code of the seeds that causes the patent violation.

  94. IANAE, maybe you can patent your pedantic (mis)treatment of the issues…

    (I’m pretty sure that patent exhaustion covers more than the mere selling of a pretty bunch of paper with a ribbon on it called a letters patent)

  95. Is it a trespass by Monsanto’s property?

    Monsanto doesn’t own anything in your hypothetical. Apart from the patent, but the patent presumably isn’t on Farmer Bob’s land.

  96. Strict liability requires an intentional act

    Really? You might want to check that. I’m pretty sure that you are confusing things here and reading “an intentional act” into the act of infringement – in other words, you are conflating things.

  97. What mistake do you have in mind that would affect their rights in this case?

    You can sell the seed you harvest to any commodity broker with no strings attached.

    It’s not a privity issue.

    It’s not a privity issue expressly because Monsanto made it so.

    Their mistake.

    It’s kind of like when you lease a car, you can’t go and sell the car to a third party because it’s not yours to sell

    It’s kind of not. For obvious (factual) reasons. It’s the legal reasons that will be nailed down shortly.

    Because patents, believe it or not, can be asserted against unlicensed third parties.

    No one is saying otherwise. Nice strawman (and yes, this is a strawman).

  98. It’s funny Troll boy how biased you are. Your troll brain uses policy to decide all issues. Here, this must be part of your rice bowl so Troll boy sees this as black and white issue in its favor.

    It’s too bad you aren’t capable of real discussions on patent law.

    In this case, it is pretty clear that seeds present a special problem in patent law. It isn’t really black and white how to deal with this and it is pretty clear that policy is going to have to decide the issue.

  99. I own a patented seed. I have no restriction on its use. I plant the seed.

    I own a patented (whatever). I have no restriction on its use. I use the (whatever) to make lots of copies of it.

    You can’t use “I have no restriction on its use” to justify a blatant commercial copying that happens to implicate the original in the copying process. Doesn’t work in copyright either, incidentally.

    I don’t know how many times I have to tell you. Agriculture is, and has always been, the human-engineered process of deliberately copying living things for use and sale of the copies. Copying is not a valid “use” of a patented article, no matter how good your title.

  100. the drafting is by them so mistakes go against them

    What mistake do you have in mind that would affect their rights in this case? Feel free to make specific reference to their standard agreement, which is readily available online.

    the inability to contract with in associated third parties

    The idea is whether or not their contract enables the other contracting party to pass along a license to third parties. It’s not a privity issue. It’s kind of like when you lease a car, you can’t go and sell the car to a third party because it’s not yours to sell, whether or not the dealership has a contract with that third party.

    Because patents, believe it or not, can be asserted against unlicensed third parties.

  101. Direct patent infringement is akin to strict liability.

    Strict liability requires an intentional act.

    Any other compelling points you wish to make?

  102. What if the seeds make it to a unaware neighbor farmer. Is that farmer infringing the patent just by having the seeds growing on his/her land? Is it a trespass by Monsanto’s property?

  103. Your readers might be curious about Canadian treatment of these issues (although I find the analysis rather unsatisfying): link to canlii.org

    The Canadian Patent Act was originally modeled on the American, although it’s seen some departures. Canadian law on IP exhaustion is extremely underdeveloped (there is simply a suggestion that it may exist: link to canlii.org)

  104. Interesting argument. I wonder if such a patent could hold up though. Glyphosate has been out of patent for years, and there are centuries (if not more) worth of prior art for the basic agricultural process of “apply a pest-killing substance that doesn’t kill the crops to a field of said crops.” There’s nothing novel about using glyphosate on soyboans; the novel bit of the invention is a soybean that doesn’t die when sprayed with glyphosate, which is what Monsanto has patented here.

    What would the actual transformative result of the process you describe be? Presumably, either a bunch of soybeans containing the gene in question (in other words, Monstanto’s invention here) or a weed-free field full of dead plants (a method for killing an entire field of expensive soybean plants might be patentable, but it probably has limited commercial application).

    Given Quanta (and if anyone actually understands Quanta, it isn’t me, so keep that in mind), it seems that the sale of the genetically modified seed (the only novel part of the invention) would exhaust your proposed method patent under Bowman’s argument just as effectively. Simply recasting the invention as a method is insufficient to avoid exhaustion when the only novel part of the method is the genetically modified seeds themselves.

  105. What about the incentives to invent?

    Depending on seed yield ratios & time to next generation, “effective exclusion” may be lost in a few years; unrelated to and well before the patent term ends.

    How much incentive would remain to invent with this business model?

  106. It would appear to me that farmer Bob’s crop had be contaminated with Farmer Dan’s and could therefore claim compensation for the contamination?
    Is this view valid?

  107. Ned,

    Wasn’t it you that provided the article explaining the dangers of following dictum as law? (Understanding the difference between dicta and holding)

    It appears that you are advocating the opposite of that here. Don’t we have enough troubles with the Courts acting as legislators anyway?

  108. Dennis, the brief is great. I don’t think you mentioned that the brief goes far beyond looking to whether the sale of commodity seed was conditional; it openly calls for a repudiation of Mallinckrodt (Newman) and ITS progeny as an open defiance of well settled Supreme Court case law. Is shows in detail just how Newman got it all wrong. A conditional sale is a sale nevertheless. The law of exhaustion prevents the enforcement of any post sale conditions under the patent laws.

    I think Richard Stern will be quite please as the brief quotes his article noting the open defiance of the Federal Circuit.

    “Under this reasoning, the Federal Circuit dismissed
    the broader application of this Court’s exhaustion cases
    to any authorized sale, characterizing the cases as
    including language “of exceedingly broad reach” and
    saying “general expressions, in every opinion . . . ought
    not to control the judgment in a subsequent suit when
    the very point is presented for decision.” Id. at 708 n.8.
    Otherwise stated, the Federal Circuit read this Court’s
    exhaustion cases as including substantial dicta. But when
    the Federal Circuit in Mallinckrodt “says that this is
    dictum, it is merely saying in a peculiar manner that it
    does not like the Supreme Court’s reasoning and thinks
    that the Court should have held something else—that it
    should have reached its end result by a different conceptual
    route.” Richard H. Stern, The Unobserved Demise of the
    Exhaustion Doctrine in U.S. Patent Law: Mallinckrodt
    v. Medipart, 15 Eur. Intell. Prop. Rev. 460, 465 (1993).”

    Warms the heart.

    Time and again the Federal Circuit and its predecessor court, the CCPA have openly defied the Supreme Court, most famously in the case of patentable subject matter. That long defiance was lead by Rich, but found fellow travelers in Newman and Rader. Their time is now over.

    Exhaustion is just another example defiance by certain members of the court. They really need to be taken down a peg, IMHO.

  109. Slight problem there David as Monsanto’s patent on glyphosate expired about the year 2000.

    It now belongs in Nature’s Warehouse.

  110. But what if, David, the farmer bought glyphosate from Monsanto without any restriction with respect to what kind of crops it could be used with. Under the law of exhaustion, the farmer would have the right to use glyphosate without restriction.

  111. If the patent is written to cover the use of glyphosate on soybeans containing the particular gene, it gives a neater definition of infringing behavior, and allows Bob free use of the seeds he collects regardless of their genetic content, provided that he does not use glyphosate on them (in a way that would kill the bean crop if it were not GM).

  112. dr2chase, indeed, a central problem it appears is that in certain regions of Indiana, almost all soybeans grown are of the patented variety, so that if one simply does nothing other than replant seed from his own crop, and did nothing but that, never buying anything from anyone else, he would be made into an infringer by natural processes.

    That cannot be right or legal under the law. There is a major, major problem with patenting sexually reproduced plants and animals and allowing them to be exposed to nature.

    My favorite example is patenting the improved fish, throwing a few into the lake or ocean, where they spread naturally, and then suing any fisherman who catches and sells thereafter, something they seemingly had a right to do.

    In the resent case of Prometheus, we look at the patent owners infringement theory to discover the theory that anyone using an old drug for the old therapeutic purpose was an infringer once he learned of the new “ranges,” which he might learn if he read the patent or even went to medical school and read the required texts. In other words, innocent acts, long in the public domain, became infringing by the spread of information.

    That cannot be. Such a legal regime is impossible; which is a reason, I think that the Supreme Court intervened in that case.

    I think it has to the same thing here and address the larger picture as well. In the case of things of nature, how can we charge rent for their use? From, of all cases, Pierson v. Post we learn this: one has to control the thing of nature before we can claim ownership. That fox was no one’s property in the wild. It had to be possessed and controlled before one could call it one’s own. Lose control, and you lose your right to charge rent.

  113. Dennis,

    Assume no contracts.

    Monsanto sells the patented seed. No restrictions are imposed in any manner by notice or by contract.

    What are its right under the patent laws under these circumstances with respect to the seeds it sells, the plants produced by the seed, and the seeds produced by the plants of the seed?

  114. MAKE, USE or SELL.

    I own a patented seed. I have no restriction on its use. I plant the seed. The seed grows into a plant. The plant produces seed.

    Now, you said that the seed of the plant I planted with a right to do so is infringing. How so?

    MAKE USE SELL.

    I own a patented car. Do I infringe if I drive it?

    The car maker has a patent on a method of driving a car that depends critically on certain apparatus.

    I buy a car from the patent owner with the apparatus the only use for which is in the patented method. Do I infringe when I drive the car?

    MAKE USE SELL

    I plant the seed with right. Is the resulting plant an infringement? No. Is the resulting seed an infringement?

    MAKE USE SELL

    Now if I own the seed of the plant of the seed I have the right to plant, what restrict me from planting or selling that seed. The owner of a patented product by right has the legal right to use and sell.

    Analysis please, and do it under the law.

  115. Note that though it takes effort to grow soybeans from seed, it takes the same effort whether the newly created beans are destined for feed or for seed. And if someone intends to plant newly obtained soybeans, it takes the same effort whether they were purchased, or grown.

    So relative to their intended use, diversion for seed use takes almost no effort.

    Similarly, if Farmer Bob were simply to guess that their nominally non-GM beans had picked up some GM pollen over the years from Farmer Dan upwind (*), that also takes no effort at all relative to the normal cultivation of soybeans; simply spray them with glyphosate, and then harvest what (if anything) survives. This muddles “intent” rather much; Bob did not intend for Dan to plant the GM seeds, Bob did not intend for the wind to carry the pollen, and Bob should not be forbidden from setting aside seeds from his own crop, since he did not intend for them to become GM. Till he sprays his crop with glyphosate, he doesn’t even know for sure that some of his seeds have become GM.

    (*) I’d swear that I had read somewhere that one of the rules for use of GM seed was that it not be planted immediately adjacent to other people’s fields, for just this reason, but I cannot recall for sure.

    As to what the law says about all this, I cannot tell.

  116. Does it matter where and when the intent is formed?

    A) Bowman plants the seeds in a desert parcel owned by Bowman, intending for the seeds to grow. However, the desert receives too little moisture for the seeds to grow. The seeds do not grow….Bowman sells his desert parcel. 5 years later, climate change disrupts prevailing weather patterns and enough moisture falls in the desert to support seed growth. The seed sprouts into a seedling, grows into a plant, and eventually produces an infringing seed on the new owner’s parcel.

    B) Bowman likes a green lawn. Bowman plants his lawn with roundup ready turf grasses. Instead of letting the turf grasses grow to the point of seeding, Bowman mows his lawn with a lawnmower – preventing the turf grasses from producing infringing seeds. Bowman intends to keep his lawn cut short. Bowman hires a landscaping service to mow his lawn while he goes on a two month vacation where he visits other commodity exchanges across the world. While Bowman is out the country, the landscaping service does not mow his lawn. The turf grasses grow into mature plants and produce infringing seeds.

  117. Dennis, that really goes to the point of whether there is an implicit condition on the sale of the commodity seed that runs with the seed, so to speak.

    I think you will find some difficulties for Monsanto on the contract analysis path (including, for example, the drafting is by them so mistakes go against them and the inability to contract with in associated third parties).

    Have at Mr. Troll if you want to nitpick.

  118. Direct patent infringement is akin to strict liability.

    Was that point too difficult for you to fathom? Or are you just on a troll-roll?

  119. Direct infringement does not require intent.

    No, but it does require an intentional act. Which, if you’ve studied law at all, is a whole different thing.

    Put it this way: if someone farms a bunch of Roundup-Ready canola on your land while you’re not looking, are you an infringer and why? Feel free to assume that he used your own seed that you were planning to feed to your livestock.

  120. Direct infringement does not require intent. In the examples given then, Prof. Crouch, are you saying that these are not cases of direct infringement?

  121. The brief goes into the repair/reconstruction distinction, but those line of cases seem like they don’t really fit here. If anything, growing new seeds is beyond reconstruction.

  122. Patent infringement normally requires that the accused infringer have intended the actions that resulted in infringement. Thus, B, C, and D seem like they don’t count as infringing actions.

  123. Where, I think the Supreme Court should address the whole issue of downstream activity as well.

    Under the law, the unrestricted owner of a patented product has a right to use and sell that product. In the case of seed, the normal use of the seed is to plant.

    But what happens next is intriguing, indeed.

  124. A) Bowman plants the seed, provides water, co2, and other minerals. The seed grows into a seedling. Bowman sprays the area with Roundup, killing weeds that otherwise would have consumed beneficial minerals and nutrients. The seedling grows into a plant and produces an infringing seed. Bowman plucks the seed from the plant.

    B) Bowman spills a bag of seeds (maybe his dog jumped on the bag?). Despite his hard work, Bowman is only able to recover 99% of the seeds that spilled. A few unrecovered seeds sprout into seedlings, grow into plants and later produce an infringing seed.

    C) Bowman feeds the seeds to livestock. At least one seed manages to make its way unscathed through the digestive track of a livestock animal and is deposited in a fertile mineral rich patty. The seed sprouts into a seedling, eventually growing into a plant that produces an infringing seed.

    D) On the way home from the commodity market, a seed purchased by Bowman is eaten by a Canadian Goose. On the way back to Canada, and prior to crossing the US/Canadian border, the goose defecates mid-flight, causing the seed to fall 492 feet to the US ground…the bird keeps flying. The seed sprouts and eventually grows into a plant that produces an infringing seed.

  125. Dennis, that really goes to the point of whether there is an implicit condition on the sale of the commodity seed that runs with the seed, so to speak.

    But, I hardly think the Supreme Court will take a case to decide whether there is such an implicit condition in commodity seeds. I think they took the case on the assumption that the sale of the commodity seed imposed no use restrictions on the buyer. What then?

    The seed can be used according the law of exhaustion. But its use makes the new plant and the new seed. Is that infringement?

    We don’t really have to address what happens to the seed of the crop just made if the court holds that the use of the seed to plant is among the rights of the buyer. However, it might help avoid the next case for the court to offer guidance in that arena as well. Does the farmer have the right to plant seed from plants grown from seed he had the right to plant in the first place.

    Note, that if the patent laws provided all these downstream rights, Monsanto wouldn’t have to use contracts at all. They could simply sell the seed to farmers and sue them if they replanted or sold the seed crop to others. Now think about THAT for a second, the havoc it would create in the real world.

  126. Ned – I don't think that is correct, especially for commodity soybeans that are rarely "used" for seeds but rather are primarily used as food for humans and other animals.   

  127. The central difficulty is that use and make, in the case of seeds and plants, merge.

    They are the same thing.

    If one has the right to use, one necessarily has the right to make.

  128. It seems more likely to me that he has reconstructed the patented seeds rather than repairing them, to invoke the Aro cases.

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