US Government Brief: Farmer who Purchases Commodity Soybeans Cannot Replant Those Beans Without Committing Patent Infringement

By Dennis Crouch

Bowman v. Monsanto (SCOTUS 2013)

In its newly filed brief, the US Government has agreed with Bowman that violation of use restrictions on commodity GM soybeans cannot result in patent infringement. However, the Government ultimately sides with Monsanto in arguing that the progeny beans grown by Bowman represent an infringing "mak[ing]" of Monsanto's patented invention.

Briefing continues in the GM seed case between the Indiana farmer Vernon Bowman and the developer of GM glyphosate resistant "RoundUp Ready" soybeans Monsanto. Monsanto holds two patents that clearly and literally cover the seeds in question. U.S. Patent Nos. 5,352,605 and RE39,247E. For several years, Bowman had been looking for a legitimate way to grow RoundUp Ready soybeans without paying the large license fee charged by Monsanto. What he did was find a seeming loophole in the Monsanto license agreement that allowed farmers to sell soybeans to the commodity market without any ongoing restrictions on the use of those beans. Call these "authorized sales" because the unrestricted sale of GM seeds to commodity market was authorized by the patentee, Monsanto. Normally, those commodity beans are purchased by CAFO and public school lunch operators, but Bowman purchased them with the intent of growing more soybeans. The nice thing about soybeans is that they self-pollinate and thus apart from mutation, soybean progeny are genetically identical to their forebears. The US commodity marketplace does not normally distinguish between GM and non-GM soybeans. However, Bowman relied on his reasonable assumption that most of the beans would be RoundUp Ready because of Monsanto's deep market penetration. Bowman planted the beans and fond that the bulk were resistant to the glyphosate herbicide. Bowman saved some of his harvest for replanting and sold the rest back to the commodity market. This continued for several years until Monsanto sued Bowman alleging patent infringement – arguing that Bowman's operation was "making" new infringing seeds in violation of the Patent Act. 35 U.S.C. 271(a) ("whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States … during the term of the patent therefor, infringes the patent").

Thus far, courts are siding with Monsanto, but now the Supreme Court will weigh in on whether those Monsanto-authorized sales should be seen as exhausting the patent rights in the progeny. The judicially created doctrine of exhaustion is designed to better ensure free alienation of goods and a robust secondary market. Exhaustion fits within the centuries long common law history of rejecting covenants and conditions that unduly limit the alienability (resale) and use of property rights. Although much of the property case-law has focused on real estate, the rules against unreasonable limits on alienation and use are at their peak in the context personal property, such as the soybeans at issue in this case. For the most part, restrictions on use and resale of personal property will not be enforceable against a bona fide purchaser. Under the patent exhaustion doctrine, patent rights are said to be exhausted for goods that enter the stream of commerce with the patentee's authorization and without restriction. Thus, when Ricoh sells a patented copier to a customer, the patent rights are exhausted and Ricoh cannot later assert patent infringement when the customer sells the copier to a third party or when that third party uses the copier. Unauthorized sale and use can each constitute patent infringement, but Ricoh would have no case here because its patent would be deemed exhausted. Final point on exhaustion is that it normally applies on an item-by-item basis. The fact that a customer owns an authorized Ricoh copier whose patent is exhausted does not provide the customer with any authority to build another copier that infringes the patent. Making that new copier would constitute patent infringement.

The case at hand is unique because of the self-replicating nature of soybeans (and life in general). In its brief, the US Gov't frames the issue as:

Whether the authorized sale of one generation of a patented plant seed exhausts a patentee's right to control subsequent generations of that seed.

In his framing of the question, Bowman identifies the Federal Circuit's decision as creating a loophole for self-replicating technologies.

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?

Monsanto took its turn by presenting questions in apparently ad absurdum form:

1. Whether the first-sale doctrine grants the purchaser of a patented article the right to make, use, and sell an unlimited number of new copies of the patented invention that have never been sold.

2. Whether patent treats as per se unenforceable all restrictions imposed by license on the use of a patented article following an authorized sale.

There is some amount of cross-talk in these questions presented. Each party accuses the other of seeking an exceptional rule for self-replicated technology. Monsanto here also attempts to bring-in an additional factual question regarding whether the commodity seeds were actually sold without use restrictions.

As suggested above, the key briefs have now been filed (except Bowman's reply brief) and oral arguments are set for February 19, 2013.

I previously discussed Bowman's brief here: http://www.patentlyo.com/patent/2012/12/patent-exhaustion-gmo.html

U.S. Government Brief: The most important brief filed in the case is most likely that of the US Government filed as a joint effort by both Department of Justice and the US Patent Office. That brief fully supports the Federal Circuit's holding that patent exhaustion does not apply to the progeny because the progeny are new articles of manufacture. The brief cites case-after-case where Supreme Court has indicated that exhaustion only applies to the article sold and does not permit the purchaser to make new copies. Unfortunately, the Government brief does not seriously engage the peculiarity of this case – that the patented article is life form that self-replicates by its nature- other than by noting that Bowman "creat[ed]" the progeny "through planting and cultivation." In his brief, Bowman disputes that growing crops constitutes "making" because seeds that fall to earth will naturally sprout and grow without human intervention. The Government also tries to make a distinction based upon elements of the PVPA, but I don't believe those hold water.

On one element, the US Government agreed with Bowman – that the Federal Circuit rule that a patentee's conditional sale of patented goods binds subsequent downstream purchasers. The Government writes that the proper rule, under Supreme Court precedent, is that downstream purchasers will not be liable patent infringement based upon failure to comply with use restrictions placed on the original authorized sale.

Restrictions on downstream use or resale may be enforceable as a matter of state contract law, but a purchaser's failure to comply with such restrictions does not constitute patent infringement.

Although agreeing in principle with Bowman, the Government then reiterated that Bowman is liable for the progeny that are not exhausted.

Read the brief: /media/docs/2013/01/11-796_affirmance_usa.authcheckdam.pdf

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

264 thoughts on “US Government Brief: Farmer who Purchases Commodity Soybeans Cannot Replant Those Beans Without Committing Patent Infringement

  1. Moreover, in this case, it is clear that Monsanto authorizes that the seed may be sold to grain elevators [a second sale] where they may be mixed with seed generally and sold for ANY purpose.[a third sale]”

    These are FACTS.

    I notice that those who would spin facts, and find that they cannot spin particular facts, tend to try to ignore those particular facts (much like those that try to kick dust over the exhaustion doctrine to begin with).

    I would be curious (perhaps morbidly so) to see how these facts are spun.

  2. Malcolm, you make the assumption that every seed that has the patented gene is, in effect, "owned" by Monsanto such that it can dictate what the "possessor" of the seed may lawfully do with the it.  The problem with this of course is that once the patented plant is exposed to nature, it spreads naturally.  Moreover, if the farmer does nothing with his the seeds from his crop, simply leaving them in the field, they will reproduce on their own and spread far and wide.  Simply identifying that there is a seed, or a whole field of seeds, having the patented gene in the particular location proves nothing about whether those seeds came from Monsanto or from nature.

    Moreover, in this case, it is clear that Monsanto authorizes that the seed may be sold to grain elevators where they may be mixed with seed generally and sold for any purpose.  Farmers have for generations been using such commodity seed for late-season crops.  How can Monsanto with a straight face say that having authorized the sale of such seed for such purposes now say that the farmer must pay.  This is the same thing as if a manufacturer sent you a "free gift" in the mail and demanded that you pay for it.  There is no difference.

    Only if Monsanto can demonstrate that no seed in a field could have come from anything but an infringement, would I ever agree with the principle that Monsanto could prove infringement simply by doing a DNA analysis on the seeds or crops in a field.

  3. In fact, the seeds here are readily identifiable as belonging to Monsanto by numerous observations

    BZZZT – wrong.

    Two sacks of such seeds on a table, one having just been sold by Monsanto (patent exhaustion in play), and the other “made” through a second generation planting (patent exhaustion likely in play – not the point of this hypothetical, so let’s stay out of those weeds).

    Two sacks. What are the “readily identifiable numerous observations that you are going to use to tell the difference.

    Throw a third sack on the table, exactly like the first sack, but not yet sold by Monsanto. Same question.

    Re: “aware of any court that would force” – BZZZT – strawman answer. You have jumped past the infringement question (wherein exahsution is in play) right to damages. You can’t even get there unless you determine whether infringement has happened.

  4. Do you believe it’s going to turn out well for Bowman?

    Let’s be clear. Are you asking me if the law will be followed, or if the Supreme Court will change the law?

    Whether this turns out well for Bowman will depend on which question you are asking.

  5. If a colt shows up, outside the fence, without a brand? Who owns it?

    In fact, the seeds here are readily identifiable as belonging to Monsanto by numerous observations. And it’s not a “single colt” we’re talking about. We’re talking about thousands of colts showing up at the same time. What happens when a thousand colts whose identity can be easily determined “show up outside the fence”? What does your case law say about sacrificing all those colts to make clones of each of them and then selling the clones? Does the owner of the original colts get compensated?

    in the case of seeds or animals that breed naturally when exposed to the environment, we need to ask more of the patentee. Otherwise, they just can drop the seed from planes, release the patented fish into the lakes and rivers, or release the patented animal into the forest and then expect farmers, fisherman or hunters to pay.

    I am not aware of any court that would force any “infringer” to pay any damages under those circumstances. I think it’s far more likely that the patentee will end up in prison or pay civil penalties for such actions.

  6. MM, I think the answer has to be in some form of maintenance of control by the patent owner. If the patent owner sells the patented self replicating whatever to the public without any restrictions at all, I think he may lose the control necessary.

    Normally, a rancher fences his animals. Alternatively, a rancher brands his horses so they can run the range without fences.

    If a colt shows up, outside the fence, without a brand? Who owns it? What if the rancher takes the colt, raises it and breeds it with his other horses? Can the patentee later claim ownership or infringement?

    In the case of biological drugs, I will assume they must be cultured by man to survive in any useful form. The petri dish is then like a fence. If a competitor develops a rival culture, he must have done something beyond nature to build it.

    But in the case of seeds or animals that breed naturally when exposed to the environment, we need to ask more of the patentee. Otherwise, they just can drop the seed from planes, release the patented fish into the lakes and rivers, or release the patented animal into the forest and then expect farmers, fisherman or hunters to pay.

  7. The same issue is discussed in the government’s brief:

    The government includes in this section of the brief the potential for a contrary decision by the Court for consequences “not limited to genetically modified crops,” including “enforcement of patents for man-made cell lines, DNA molecules, some nanotechnologies, and other technologies that involve self-replicating features.” These consequences would be visited on the numerous companies [that] have marketed patented recombinant plasmids and transformed cell lines capable of replication with limited human intervention” rendered patentable under the Court’s Chakrabarty decision. “These patents would lose much of their value if purchasers of patented bacteria or other self-replicating products could reproduce and sell those items free from the restraints of patent law,” according to the government. Finally, the brief rejects Farmer Bowman’s argument that contractual remedies are sufficient, because “[c]ontractual remedies are ineffective against downstream purchasers not in privity with the patent holder. . . [a]nd patent law provides remedies unavailable under contract law, including injunctive relief and enhanced damages,” citing 35 U.S.C. §§ 283-285.

    Did Kevin help write that brief, too?

    I’m starting to get a strong feeling that this case isn’t going to turn out the way you think “current law” says it should, anon. Do you believe it’s going to turn out well for Bowman? Let us know.

  8. Somehow, the natural use of a seed for planting is forbidden.

    Somehow, the reason with complete nexus to the gist of the patent and the very reason for the sale of the seed (for planting) is forbidden.

    No one – and I mean no one – has yet addressed this critical factor.

    Let’s squelch the dust clouds and at least try to address the point at hand, people.

  9. Jananne, do you perceive any problem with a broadcaster demanding payment for people actually watching their programming?

    What about a company that mails products, unrequested, to people who keep them. Can the company sue for payment?

    If you put up a website with a song you compose, and track people who visit the website and listen to the song, can you send them a bill, let’s say, for $1million for each time they listen and if they refuse to pay, have some right of action against them?

    You go to central park and act out Hamlet with some friends. Can you charge passersby a fee for watching?

    You patent the improved fish and put it in a lake where it breeds with other fish. Soon most fish are of the patented variety. Can you sue fisherman who fish the patented fish for selling them?

    You patent the improved cat. One escapes and soon every cat in a region has the improved gene. Can you sue every cat owner for infringement if they breed or sell their patented cats?

    And the beat goes on.

  10. Can one sell seed and own the resulting crop?

    Can one “sell” the patented bull and own all offspring, granting the rancher a limited right to use the offspring for producing milk?

    Can one sell a lawbook to a student and restrain his subsequent sale of that lawbook? What if the condition subsequent was limited to sales for a price greater than or equal to the prevailing price for new lawbooks?

    Can one sell a patent and still retain the right to approve whom may be sued?

    I have a seed. I own the seed. What may I do with that seed?

  11. Les, but Kirk is responsible for a whole lot of infringement because he allowed the Tribbles to multiply.  His duty to the patent owner was to prevent multiplication.  His act of not acting was an infringement!!!

  12. Restraints on alienation (in the form of conditions subsequent) of personal property after sale are VOID under common law.

    link to jstor.org

    According to copyright law, Bobbs Merrill and by statute, the owner of a copy has the right to sell it. Presumably, the owner also has a right to use it.

    Who owns the plants in the field, and the seed of that plant?

    Who?

    According to property law, the person who owns the land owns the crop, and the seed of that crop.

    The owner of the plant, the owner of the seed of the plant, have a right to sell it under common law.

    We cannot and should not even attempt to decide the issues involved in this case in a legal vacuum. Absent a statute that expressly overrules common law, the result must be dictated by common law.

    The patent law protects man made products. Man made. Thus, an infringer is one who actively combines substances to produce the patented product. These are products of man.

    But, products of nature, of the land? The patent laws cannot or should not extend to these.

  13. I’m not sure Kirk fed any of them. As I recall, they got into the replicators, and other ships systems themselves and started wreaking havoc. And it was Scotty that beamed the lot of them to the Klingon Engine room, “where they’ll be no tribble at all.” That might be viewed as exporting, but I don’t think exporting is an infringement…..

  14. in the words of Chief Medical Officer Dr. McCoy, “they are born pregnant”

    In other words, the first sale encapsulates the entire gist of the invention (including the “self”-replicating gist) – the fact that later generations occur is quite besides the point.

    As mentioned, the case on point, Univis Lens deeals with the sale of an item that encapsulated the entire gist of the invention (and there, needed someone else to take an affirmative step in order to actually “make” the invention – AFTER the initial sale. The Patent holder attempted to control things after a legitimate first sale for something that had the gist of the invention.

    The Court would have none of such shenanigans.

    The first sale exhausted the patent rights (regardless of any later “make”).

  15. I’m not sure if it has a bearing on the over all discussion, but you have to feed Tribbles to get more tribbles…Air and water are probably not enough…. and we have no evidence that either is needed. It was whoever put the tribbles in the quadro-triticale that may or may not have “made” more tribbles. That indeed, is the trouble with tribbles, if you feed them, you get more tribbles.

  16. Once again, your ego is in the way.

    Dr. Noonan is too polite and will not put you in the place you deserve. You mistake that kindness. I have no such reservation.

  17. I have to touch it when I pick it up off the ground (after my rapier wit separates it from your shoulders).

    Your concern is noted, but you shouldn’t worry – I wear gloves when I pick it up.

    Of course, if you were truly concerned, you would post in an intellectually honest manner. But it appears that that is too difficult for you.

  18. by weird hang-up, you mean the habit of handing your head back to you?

    No, I mean your habit of needing to touch my head all the time.

  19. you do know who helped write that brief, right?

    Of course. Kevin’s a smart guy. That’s why his head-in-the-sand behavior during the Prometheus kerfuffle was so disappointing.

  20. don’t think it misses the point either, NWPA. Everything anon has written suggests that he believes that (2) is the right answer

    BZZZZT. Wrong.

    It misses the point.

    It does not deal with the fact that exhaustion nullifies the question.

    I have not refused to engage – I have engaged with the proper question of law.

    As your favorite president used to say, “Well, there you go again” – twisting and spinning.

    You have to ask the right questions.

    anon has some very weird hang-ups when it comes to discussing patent law

    LOL – by weird hang-up, you mean the habit of handing your head back to you? It’s not that weird, and you make it pretty easy to do. What’s weird, is that you don’t seem to learn how to discuss the law properly.

  21. How about saying why it misses the point? I don’t think it does.

    I don’t think it misses the point either, NWPA. Everything anon has written suggests that he believes that (2) is the right answer (or at least the correct answer in view of “current law”). We went through the same exercise up thread with the same result (he refuses to engage).

    As everyone knows, anon has some very weird hang-ups when it comes to discussing patent law. Have fun “rewriting your focus”, NWPA, and trying to please him. And oh yes: welcome to “the circle”! 😉

  22. Looks like the IPO amicus brief answered my question:

    link to patentdocs.org

    “Pointing to erythropoietin-producing recombinant cells in Amgen, Inc. v. Elanex Pharms., Inc., No. C93-1483D, 1996 U.S. Dist. LEXIS 22015, at *9 (W.D. Wash. Feb. 6, 1996), the brief notes that “[p]atented seeds are not the only technologies where ‘making’ has properly been considered as a separate infringing activity.” The brief then argues that:

    If the doctrine of patent exhaustion were improperly extended to the routine growth of recombinant host cells, this could have a devastating effect on investment in the production of new biologic drugs made from recombinant cells. If patents on recombinant cells used to make new drugs could be easily circumvented by reliance on the exhaustion doctrine, the deleterious effects on the pharmaceutical industry could be even greater than in the agricultural arena.

    Guarantee you at least some of the Supremes will be wanting to talk more about this.

  23. So, in effect, patented seeds that spread de facto forbid farmers of doing what they have been done for millenia, and you do not have any problem with that because it will open a new market, the market of “clean seeds” ? As for me, I’d rather see the patent law reflecting some common sense in this matter.

  24. Jay, imagine that CBS wanted to charge you money for watching their shows using antennas? They broadcast their programming. You, you PIRATE, deign to watch it without paying for it. You thief.

    What would you say to that?

  25. then have someone use it without giving them back some of the profit.

    Except that’s not quite the case here, as Monsanto releases the item in the first sale at its chosen price, and the issue (exhaustion) applies regardless of the technology. In reality, this has nothing to do with your “not keeping up” theory.

    But your theory does sound pretty.

  26. I think the chief problem is that the law has not kept up with technology. Just like there are antiquated laws on the books, there are also new situations that there aren’t any laws for, as far as I am concerned.

    that leads to people struggling to find laws that protect their rights. I can understand the issue that someone has when they take the time to develop a new product- as they see it- and then have someone use it without giving them back some of the profit.

    This problem is similar to the one that people face often on the internet, with respect to images from movies etc.

  27. IANAE, use is not infringement to the owner — by definition.  The owner has the right to use.  The right.  Free of the patent laws.

    Nature generates a seed to germinate — to make new plants and to make new seed.  Germination consumes the seed, but makes new seed.  Germination is not an infringement as it is not an act of man, but of nature.

    In order to shoehorn infringement into this context, you have to change basic patent law.  You have to say that basic patent law does not apply to seeds.

    We have to ask ourselves this question:  Do we need to overturn fundamental precepts of law, of patent law, of direct infringement (and impose a mens rea requirement) in order to accommodate the business practices of Monsanto?

    The law:

    The owner of an article has a right to use it.

    One cannot impose use restraints that operate on personal property via property law, or via IP law.  

    Monsanto can impose use restraints by contract.  Their remedy is breach of contract.  Their remedy does not include patent infringement for using the sold seed.

    The owner of an article has a right to use it.

    The natural process of nature cannot be an infringement of the patent laws.  They are acts of nature, not of man.

  28. if the use is licensed by the patentee. Exhaustion is one way that can happen

    Your ignorance is showing. Exhaustion supercedes licensing and contracts.

    Try to at least fake it that you know what you are talking about IANAE.

  29. But it is a defense

    cite please.

    Is it next to “the dog ate my homework” defense?

    It’s a dubious fact position to take

    It’s a dubious argument to make – corrected.

    You are welcome.

    now that they’re using a patented hammer?

    unles of course, llike, they bought the hammer.

    (and please if you want to avoid using recycled straw – that would be a self-replicating hammer)

    I own the factory and the metal” – LOL, bakc to that derailment? Again, to avoid the strawman incomplete analogy, that better be a self-replicating factory that was initially sold in order to replicate factories.

    even exhaustion doesn’t give him the right to copy for profit

    It does when the sale’s nexus is the use = copy. It’s the sine qua non to exhaustion.

  30. The owner has a right to use it.

    Use is an act of infringement. The “owner” only has the right if the use is licensed by the patentee. Exhaustion is one way that can happen, but it still needs to be proven. It’s his license, not his title, that permits him to use it.

    The rightful owner of the seed has a right to use it.

    Sure, provided he bought seed that could be traced back to the patentee’s authorized seed, which he also can’t prove.

    But still not to copy it. Which has also been the law for centuries.

    In Global-Tech, the rightful owner of the patented deep fryer didn’t have the right to copy it for resale, and it wasn’t even controversial. The point wasn’t even argued. Farming is how you copy seed for resale. It’s an unlicensed act of infringement, even if you own the seed.

  31. IANAE, 

    Hammer, if he owns the hammer, it is beyond the patent.  The owner has a right to use it.

    Ditto seed.

    The rightful owner of the seed has a right to use it.

    You  still have not accepted this statement of law.  It is been the law for centuries.

  32. If the car is parked, it is given a ticket. it is not a defense to the owner of the car that, for example, his daughter parked it there and that she took the car without permission.

    It’s a dubious fact position to take, which is why actual theft is a more convenient hypothetical. But it is a defense, and it’s not a mens rea defense. Try the speeding ticket hypothetical instead, if this is how hard you’re going to work to miss my point.

    Farmers from time immemorial have been planting saved seed. Now, explain to me why this is an infringement?

    Because from time immemorial those seeds were not patented. Now they’re using seeds that are.

    You might as well say that carpenters have been banging in nails since time immemorial, so how can it suddenly be infringement now that they’re using a patented hammer? The patent makes the difference. It’s kind of a sine qua non to patent infringement.

    The farmer owns the seeds. But he has no right to plant them?

    Why?

    Because “I own the factory and the metal” is no defense to “your factory is churning out patent-infringing product”. Similarly, “I own the seed and the land” is no defense to “you made a bunch of copies of the seed and now you’re selling them in infringement of my seed patent”. If ownership was a defense to infringement, there would never be liability for infringement. Yes, the owner has the right to use by exhaustion, but even exhaustion doesn’t give him the right to copy for profit when somebody else has a patent.

  33. IANAE, Parking Ticket?

    I don't recall any cases on point, but I think the ticket is given to the owner of the car.  If the car is parked, it is given a ticket.  it is not a defense to the owner of the car that, for example, his daughter parked it there and that she took the car without permission.  Give me a break.

    Think IANAE.

    Farmers from time immemorial have been planting saved seed.  Now, explain to me why this is an infringement?  The seeds that made the plants were purchased from Monsanto or its agents.  The farmer owns the plants.  The farmer owns the seeds.  But he has no right to plant them?

    Why?

    The rightful owner of a copy has the right to use it, and to sell it.  It is his.  Under common law, the rightful owner of a copy is free from the patent or copyright and may use the copy, and may sell it.

    What has been done here by the Federal Circuit is in direct violation of Quanta, and of historic common law.  It is a perversion of law. It upends centuries of well accepted law.  It is unconscionable in the extreme.

    I don't understand the Government's position, but can only explain it by noting the involvement of the PTO.  This is Kappos position, plain and simple.  

  34. Amen to that Night.

    The CAFC has it’s own share of Activist as well. Let’s hope Rader and company stay strong enough to beat them down as we prepare to inevitably go back to the Court for Bilski II and the Ultimate Software Showdown!

  35. “I am not ceratin what you are making up at this point, MM.”

    Isn’t that all MM ever does is make stuff up? At least Ned is now beginning to state the statutes he wants changed so that they support his theories/ideas.

    MM is still citing Prometheus 9-0 as if it actually held his whacky theories as law.

  36. Do. Those. Periods. Really. Work. When. You. Are. Attempting. To. Derail. The. Conversation. From. The. Actual. Substantive. Legal. Question?

    (you might try seeing if you actually get to a parking ticket type question if you address the exhaustion question first)

  37. You should notice that he is actually avoiding talking about infringement too (with IANAE’s known pro-infringer bias, this is almost a given).

    Note his nod to MM – and how both want to avoid actually talking about the substantive legal question here.

    Just another example of that “high-quality (not) mature, adult, intellectually honest conversation that one can expect from those two.

  38. I know.  He constantly  goes back to mens rea, although that is,  or at least, should be,  legally irrelevant for direct infringement.

    I just asked him to carve out all the mens rea consisderations from his infringement argument.  As such, without  mens rea considerations, the farmer, as he has done for years, buys commodity seed and plants it for late season crops.  He is sued by Monsanto because his field contains some patented plants.  Is he an infringer?  If planting is an infringement, the next question is just how the patented seed got into the commodity seed.

  39. There you go again with Bowman's guilty knowledge.  This has to be legally irrelevant.

    Posture this case as one against a farmer who has been buying commodity seed for late season crops for generations, as is commonplace in his community.  He is sued by Monsanto because they found patented plants in his field.

    How did the patented seed get there?

    Monsanto green lighted the sale to commodity seed resellers.

    Now, discuss your case.

  40. It’s also why the word “unintentional” isn’t strictly appropriate,

    LOL – strictly? Try “at all.”

    But MM knows the answer: “Whatever

  41. for doing no more than he what he has done from time immemorial.

    If you’re wrong anywhere, that’s where you’re wrong.

    Doing an old thing with a new, patented material can properly be an infringement.

    Of course, Bowman was doing much more than that. He has no legitimate claim to simply buying seed and planting it the way he’s always done. He knew he was using Roundup-Ready seed. He selected for Roundup-Ready seed. He sprayed Roundup. He did this for years. He’s not the poster child for an innocent infringement exception. And an exception it would be, because introducing into your “since time immemorial” seed-copying business a patented seed for the very reason it was invented is a textbook case of patent infringement.

    You have to add in knowledge and intent or otherwise everybody is an infringer.

    Answer. The. Parking. Ticket. Question.

  42. Criminy, let me hold your hand:

    In the Univis case, what was actually made? At what point was that item made? To what point did the court go?

    Here’s a hint: the court only followed the chain as far as they needed – no further.

    Obtuse. Is it on purpose? (said in the best Andy Dusfrene tones)

  43. IANAE, hold it.

    It is my understanding, and correct me if I'm wrong, that almost every farmer plants commodity seed purchased from grain elevators for late season crops.  This is not a new practice, but a practice that has been going on for a very long time, if not for centuries.  In areas where Monsanto is selling the patented seed, the commodity seat will be contaminated with the patented seed.  If simply planting commodity seed contaminated with Monsanto patented seed is an infringement, then every farmer in an area where Monsanto is selling the patented seed suddenly becomes an infringer for doing no more than he what he has done from time immemorial.  The Supreme Court, in my humble opinion, will not consider such ts to be an infringement.

    You have to add in knowledge and intent or otherwise everybody is an infringer.  But knowledge and intent applies only to inducement, and there is no direct infringer.  Everything is FUBAR about this case.

  44. If the innocent planting of seeds not known to be patented seeds is an infringement, the Supreme Court will want to know.

    They might want to know someday, in the highly speculative future, when a case or controversy turns on that question.

    The facts of this case are nowhere near that hypothetical. The question is moot, and it’s not one that should be decided in this case, any more than it would have been proper for Bilski to speak for all business method patents.

    Holding Bowman liable for his blatant and deliberate infringement has absolutely no implications for the poor innocent farmer who had crafty Monsanto operatives sneak onto his acres of an evening and replace all his conventional crop with Roundup-Ready crop.

    Now, answer the parking ticket question. It’s an astonishingly simple one to go unanswered for so long on a blog full of lawyers. I know MM knows the answer.

  45. That discussion of inadvertent infringement is more important than you think.  If the innocent planting of seeds not known to be patented seeds is an infringement, the Supreme Court will want to know.  You can see, from the recent oral argument concerning international exhaustion of copyrights, that the Supreme Court is very concerned about the consequences of its holdings, particularly in situations involving the doctrine of exhaustion.

    Quanta:
    link to scholar.google.com

  46. Les, long ago, in cases such as Bobbs Merrill, the Supreme Court recognized the substance of a sale such that a sale could not be camouflaged as a license when considering exhaustion.  If the product "licensed" is not required to be maintained or returned, it truly is not licensed, but it is sold.  Thus the law of exhaustion will apply regardless of whether the particular contract is denominated as a sale or license.

  47. All your discussion about Bowman’s knowledge and intent is completely and totally irrelevant to direct infringement.

    I’m not discussing his knowledge or his intent, nor are Monsanto or the government, other than pointing out that his infringement was blatantly intentional and it’s silly to even be discussing whether lesser degrees of intent are enough.

    But, according to the government brief, mens rea seems to be required in order to infringe.

    I don’t know what part of the brief you’re getting that from. All they said was that it’s pure speculation (and contrary to Monsanto’s stated policy) for Monsanto to sue inadvertent infringers. Does “inadvertent” give you any clues that “unintentional” doesn’t?

    I’m not talking about mens rea either. Think about the parking ticket example. Just think about it for a second. It’s an offense without any mens rea requirement, so lack of mens rea is no defense. Your car is clearly where it’s not allowed to be. What’s your valid argument for beating the ticket?

    This isn’t an inducement case, and this isn’t an intent case. This is a case where a farmer planted many acres of herbicide-resistant seed, on purpose for money, and used copious quantities of that herbicide. For something like eight years. His infringement couldn’t be more blatant or direct if he assembled the seeds by hand, one nucleoside at a time.

  48. Well… I don’t know Quanta…but it seems to me Dupont might not sell soy beans so much as license them for use in making a crop to be used as food or as a raw material in a non-crop product, such as automotive foam but not used as input or raw material in making a second generation crop… so…. I don’t know if the line is as bright as you say….

  49. IANAE, I think you are beginning to see the problem.  Direct infringement only requires an act.  It does not require intent to infringe, i.e. knowledge of the patent.  All your discussion about Bowman's knowledge and intent is completely and totally irrelevant to direct infringement.

    But, according to the government brief, mens rea seems to be required in order to infringe.  But mens rea is a is required only inducement or contributory infringement.  There is something fundamentally flawed in the government's theory of infringement. 

    Again, inducement, for liability, requires direct infringement by a person.  However, what is being induced here is a seed.  A seed is not a person.

  50. Which page of the infringers’ handbook is this accidental infringement notion covered on?

    Probably the page that discusses how damages are calculated.

  51. You still haven’t identified any conflict between what I wrote at 10:48 and your personal views.

    I didn’t think there was a conflict. Good to know.

    Here it is again:

    use = make unlimited generations of beans = sale of first bean exhausts patent with respect to beans generated through propagation of the originally purchased beans and through propagation of any progeny beans, regardless of how many generations have passed

    I don’t think it’s an unreasonable view, necessarily. But it is your view. I’m not sure why you feel so embarassed to admit it.

  52. Direct infringement simply requires that you do the act.

    Yes, that’s why these aren’t mens rea questions. It’s also why the word “unintentional” isn’t strictly appropriate, and might be confusing you.

    If I steal your car and park it by an expired meter, why don’t you have to pay the parking ticket? Is it because you lack mens rea for the offense, or is it for some more fundamental reason?

    Of course people who plant patented crops are direct infringers. Leaving a seed in a field where that same type of seed is cultivated is tantamount to planting it. Yes, nature ultimately takes its course, just like nature causes metal to retain its shape when stamped, and nature causes rubber to heat and cool in the mold.

    I hope you’re not suggesting that a person can’t be liable as a direct infringer if his actions knowingly set in motion natural processes that result in infringement. Diehr held that you can have a perfectly valid patent claim to a process performed by man that happens to rely on the laws of physics. It’s well known by now that everything we do is done by interacting with the universe around us in accordance with the laws of nature. And yet, there is such a thing as direct infringement.

    Farmers don’t persuade or induce seeds to grow. Farmers cause seeds to grow. It’s called “agriculture”. And they’d like some credit for it, please. It’s not like they can get any other kind of credit.

  53. Exactly.

    And, even if the seller imposes restrictions, the Supreme Court held in Quanta that the restrictions are not enforceable in patent law.  Exhaustion occurs nevertheless – such that even if the contract said that if Eve reproduced, a further royalty was due, that contract might be enforceable, but Able, her offspring, would not be infringement.

  54. IANAE,  but what you seem to ignore is that the government does not consider unintentional seed planting to be infringement and it assures the Supreme Court that Monsanto does not intend to bring such cases.

    Direct infringement simply requires that you do the act.  Whether you would know of the patent or not is irrelevant.  Does all this talk about guilt and mens rea has nothing to do with direct infringement.  The government theory sounds in inducement.

    The only remaining problem seems to be that one is inducing a seed to infringe a seed cannot be a direct infringer.

  55. No. It wasn’t. That case just tracked the ffacts to the actual make – most definitely not through the econominic life-cycle.

    Try to keep up.

    Better trolling please.

  56. B-b-b-ut your honor, it was accidental

    Which page of the infringers’ handbook is this accidental infringement notion covered on?

    LOL – nothing like recycled straw.

  57. Yes. Let’s. Specifically, the one inwhich you crowed about the Office’s response with the link to the Integration doctrine.

    LOL – massive (and continual) MM FAIL.

  58. No, the article is not self- replicating. The printer replicated it.

    Is a C-note placed in a photo-copier self replicating? I’m pretty sure Treasury comes down like a tone o’ bricks on the guy or gal that placed it in the copier, and not on the bill or the copier

  59. The legal issue is not concerned with the entire economic life-cycle.

    Hmmm. Seems like the economic life-cycle was considered by the court in your beloved Univys Lens case.

  60. If Eve was sold by the patent owner or a licensee as a self replicating android, and Bowman used her as advertised to replicate, I say exhaustion applies as Bowman only used Eve for the purpose for which she was sold.

    To rule otherwise would be akin to selling copyrighted recordings and alleging infringement each time they are played.

  61. the law gets smudged at the Supreme Court.

    Sometimes. Sometimes it gets “smudged” in a way that is predictable by people who don’t bury their heads in the sand.

    9-0. I’m still loving it. Shall we revisit some of your commentary in the Prometheus threads to remind ourselves of your deep insight into the “law”?

  62. MM, if Bowman simply left the seed in the fields while harvesting the plants, what then?

    Then we have a different set of facts, most likely the lawsuit is never filed, but if it is Bowman can try to argue the infringement was accidental. It’s still infringement, of course, but I’m sure you understand how these facts change things a bit.

  63. “But microbes are not a commodity and have little use outside off replicating in a Petrie dish.”

    Really? Ever eat cheese? yougurt?, bread? drink beer, burbon? vodka? whiskey? take penicillin? clean an oil spill? digest something? mulch much?

  64. IANAE,

    Is this where your “silence” is to show everyne who’s boss?

    You might want to rethink your tactics. They are not working too well for you.

  65. Keeping the virus alive – by itself – may sound in the repair/reconstruction doctrine.

    That doctrine is simply inapposite in discussing replication.

    Let’s leave that red herring to die on its own.

  66. If you have seed in your field and it naturally reproduces, you infringe under the government’s theory if you KNOW that it is patented.

    Yup. Just like in real life. That’s how patents work. Your factory churns out stuff. You know it’s happening. You can’t blame the factory for your infringement.

    Parking tickets don’t have mens rea either. You didn’t pave the parking spot or put in the meter (they’re “natural”), but if you parked your car there, you have a problem.

    But if someone else parked your car there, you don’t have a problem. Why not? Can’t be because you lack mens rea.

  67. you are confusing direct infringement with inducement.

    We can definitely agree that one of us is confusing those two things.

  68. What if Bowman, instead of replanting his seed, dumped the seed in a nearby river where they spread far and wide, so that every farmer along the river for a 1000 miles now had the patented seed growing naturally on his land.

    Apart from the obvious problem that a for-profit farmer is chucking his profits in the river (i.e., the actual facts of the case are much more clear-cut), none of the other farmers along the river would be infringers by the mere fact that seed washed up on their farm. This is not even a mens rea issue. Bowman might still be an infringer for “throwing his seeds away” if he knows what’s downriver, but that’s a question of fact.

    If those farmers notice that they have some RoundUp-Ready seed in their harvest, and select that seed to plant the following year, then they’re direct infringers.

  69. IANAE, I think we are talking here about inducement.  The seeds grow naturally and so long as the farmer does nothing, he should not be guilty of anything.  If he actively cultivates the next crop knowing it to be patented, perhaps you might be guilty of inducement.

    But the charge here is not inducement, but direct infringement.  Direct infringement does not require any knowledge or guilt.  The government's theory, indeed the whole case against Bowman, may screw up patent law tremendously if it succeeds.

  70. If this is infringement by man, we can only be talking about inducement.

    The metal cooled all by itself. Naturally. All I did was pour it into the mold. I’m not a direct infringer, right?

  71. Regarding the virus, perhaps body's reaction to the virus creates immunity elsewhere, or creates antibodies that attack cancer.

    But once administered, the virus would replicate naturally.  If every such replication was an infringement, for government's theory, the person who received the virus would be infringing as it replicated.

    All this shows is that the government's theory about infringement doesn't make sense.  I have explained elsewhere that the government's theory sounds in the inducement and not in direct infringement.  In the case of the virus, an infringer would have to do something to keep the virus alive and reproducing to the extent that its normal life would be ending – not too dissimilar to the repair/reconstruction doctrine.
     

  72. What if Bowman, instead of replanting his seed, dumped the seed in a nearby river where they spread far and wide, so that every farmer along the river for a 1000 miles now had the patented seed growing naturally on his land.  None of those farmers intentionally do anything to make the patented seed grow other than what they've always done.  Bowman didn't plant those seeds either.  He is tossed them.

    Is Bowman guilty of a direct infringement by throwing his seeds away?

    Is nature, a direct infringer when the seeds for 1000 miles grow naturally?

    One can instantly see that the government's theory seems to be inducement.

  73. Growing, again, you are talking about inducement, and not direct infringement.  It is the seed it makes plant, and the plant that makes the seed.  All man does is assist.

  74. Growing, all this is inducement, not direct infringement.  All the farmer did was to assist the seed.  The seed produces a plant, and further seed, naturally.

    But the charges not inducement.  It is direct infringement.  And that is where I have the problem.

  75. The seed is destroyed when it grows into a plant and in that process a new seed is made.  This is a process of nature, but it is assisted by man.  If this is infringement by man, we can only be talking about inducement.

    As we know, inducement requires "knowledge" of the patent and intent to infringe.  If inducement were the charge here against Bowman, proof of knowledge and intent would be apropos.  If the charge were inducement, and not direct infringement, I would have less objection to the government's infringement theory, because it seems so critically to depend upon guiltly knowledge and intent.

  76. so the seeds can be sold to people who will eat them.

    Way to assume a premise that would need to be proven (and one that simply ignores an actual use fully cognizant in the market place). Point in fact is that “to eat” is not a required use for exhaustion to take place, and is not even required for the fact pattern here in the reality of this case. To artificially force that constraint, you still are not on planet Earth.

    Now if you actually return to the conversation under discussion – the particular facet of law under scrutiny, which is the exhaustion doctrine, you can leave behind all that playing with strawmen (and clean your hands from all that fertilizer you’ve been throwing around).

  77. The natural and unstoppable course of the first generation of virus has to be covered by the implied license.

    Under what legal theory do you posit that this “has to be covered?” The additional “make” is still going on past the first “officially sanctioned” make. Try to keep in mind (notwithstanding the Infringers’ Handbook), that direct infringement does not require intent or “making happen on purpose.” That dust cloud, while pretty, should be wetted down to improve visibility of your legal analysis.

    (Hint: you might review the exhaustion doctrine).

  78. You’ll need to make a much stronger case for accidental infringement

    Which page of the infringers’ handbook is this accidental infringement notion covered on?

  79. But you’d have a different situation if you somehow obtained a sample of the virus from the patient (it’s still in his stomach, right? Yuck!) and administered it to another patient.

    link to nytimes.com

  80. These are of course all deliberate acts by the farmer, not accidental and spontaneous occurances and surprises.

    In particular, the entire point of all of these patents, and the reason they’re such a big deal, is that they make weeding easier. If you weren’t weeding Monsanto’s way, you wouldn’t even know you were using patented seed.

    This is very much an invention specifically for farmers, to make it cheaper and easier for them to farm, so they can grow lots of seeds on purpose, so the seeds can be sold to people who will eat them.

    If you’re talking about seed spontaneously self-replicating and catching all these innocent farmers completely by surprise, you’re not even on the same planet as the point of this conversation.

  81. Is placing the pill into the stomach using the pill or making the patented product?

    Yes. Both.

    Thus, the patentee sells you the pill. Can you use it?

    I think that’s about as strongly as you can possibly imply a license. Yes.

    Does the user infringe each time the patented virus reproduces such that once a patient takes the pills he must continue to pay royalties…. or be enjoined?

    I don’t think you can reasonably enjoin the patient at that point. The natural and unstoppable course of the first generation of virus has to be covered by the implied license.

    But you’d have a different situation if you somehow obtained a sample of the virus from the patient (it’s still in his stomach, right? Yuck!) and administered it to another patient. I don’t think that use would be exhausted by the sale of the original pill.

    Seed crop is different. Farmers do their level best to not leave seed behind in the fields. If they have another field full of patented crop the following season, they made that happen on purpose. A hypothetical farmer who harvests the stalks and leaves the seed behind wouldn’t be a soybean farmer at all. He would be some sort of … straw man or something.

  82. Had Bowman not picked the seed up, the seed would have naturally reproduced.

    The seed he originally grew, on land that he continues to fertilize and irrigate to make sure soybeans grow and thrive? You’ll need to make a much stronger case for accidental infringement than that. That’s about as “accidental” as leaving a roll of sheet metal in a factory that “self-“replicates car parts. Oopsie, had no idea that’s what happens to metal I leave there.

  83. You are jumping to the endgame and losing track of the legal issue that raises up before you get there. It simply is a non-sequitur that the final use at the end of the chain is for and by consumers. Monsanto does not sell that final endgame item. The doctrine of exhaustion is not focused on that final endgame item. Your 99% is quite simply, legally immaterial.

    Your allusion to Ponzi scheme fails. The legal issue is not concerned with the entire economic life-cycle.

    It just isn’t.

  84. I guess you think that if something is repeated enough times it becomes true

    I see that you are familiar with that tactic, as you have repeated your mantra many times.

    It’s too bad that your mantra in not correct – legally.

    When I say use = make, I don’t need that to be an exclusive arrangement. Yes, use may include other things, but from the legal standpoint, and thus for all intents and purposes for the legal issue under consideration, use is make. When you look at the field (lol), the invention, how the applicant has characterized the invention (and even how the government in their brief have characterized the legal issue, one cannot escape that may statement is the legally accurate one. You have to accept that the nexus between the invention and the sale centers around the invention and must include the progeny having the same traits.

    As to the Univis Lens case, that case too, does say what I indicate and that case does support my position. Clearly, the first sale of the lens blank exhausts the patent right even though that first sale did not technically make the final product. Just as the lens blank captured the gist of the invention at the time of sale, so too does Monasanto’s first sale capture their invention at the time of the first sale. Like it or not, if an invention is self-replicating (and you are off on a frolic trying too hard to split hairs about the degree of self-replication), the gist of the invention is captured in the item first sold. The very purpose of the sale was to utilize the invention and that includes the generation of progeny with like characteristics. The seller has parted with the control of his invention – on his own terms. The seller can choose to part on different terms, but as the law NOW stands, the sale exhausts the patent rights (again, look at the gist of the invention and the realistic nexus to the sale), and for this invention, that exhaustion includes use = make.

  85. Simple. The farmer is using the product AS INTENDED; by nature. It was not disabled by the seller, it was able to reproduce, and that is a feature of the product.

  86. Prometheus was not patent eligible because it claimed a bare law of nature to the point no one else could use the LoN for future innovation.

    However, had the LoN been “integrated” in the process as a whole the claims would have passed 101.

    Case closed.

    Nothing to do with your mental steps/point of novelty/dissections theories were held by the Court.

    You predicted nothing.

    You won nothing.

    Deal with it.

  87. You are forgetting Monsanto’s targeted audience is farmers not end users. But that does not make the end users go away. And it’s not a little ironic that you only focus on the licensed seeds, which are marketed to farmers, not second generation seeds, which are intended for consumption (at least 99% of them) not growing. knowing that second generation seeds, which are not licensed for planting, can be used to plant more crops, it’s no wonder Monsanto’s targeted audience for patent infringement suits are the cheater not the consumer.

  88. Like I said, if no one ever ate the beans but their only purpose was to make more plants the entire exercise would be futile and would soon collapse as an exonomic enterprise. Just like a ponzu scheme if no one ultimately uses the product for its intended end use.

  89. I guess you think that if something is repeated enough times it becomes true. Exhaustion never applies to the manufacture of new products however much you want it to apply to the manufacture of new generation seeds, which as new as a new widget and as different In substance and material as a new widget is from a template widget. A plant is simply a seed making machine just like a machine to make widgets. And please dont forget that, unlike cells, seeds are not self replicating (how many silos have more seeds than we’re put in?). Seeds don’t divide and make more seeds. They sprout and make plants. Plants, under ideal conditions provided by the farmer make seeds. It’s no different than providing the power to the widget making machine.

  90. Your logic is sophomoric. For starters, the statement that use = make is not a sound argument. The “uses” of a seed are many, including eating, processing into refined foods, squeezing for oil, etc. etc. Certainly “eating” does not equal “making” (except for farts maybe) but eating = using. Because eating does not equal making, but is an *example* of using, the argument that use = make is unsound. At best, “make” is only arguably an example of using, But even that falls apart because seeds, unlike microbes, do not self replicate (I.e. by cell division). Seeds do not and cannot make seeds. They only make plants. Plants make seeds, but only under ideal conditions. Seeds improperly planted do not make plants that make seeds (cf. parable of the sower where seeds were cast upon hard ground, shallow soil, or soil with choking weeds).

  91. If it were only that easy to farm who would invest in plows, irrigation equipment, fertilizers, and harvesters? I doubt if Monsanto sues anyone for crop failure.

  92. Why would anyone take a pill with a patented virus? Why would the patent holder care if he made money on the pill. Does the pill taker have to anything to make more viruses, ulike a farmer who must do many things to get a crop rather than crop failure?

  93. there are differences between microbes and beans

    I know that. I highlighted the differences, as well as the similarities.

    But microbes are not a commodity and have little use outside off replicating in a Petrie dish.

    Um … it’s 2012, not 1912. Where have you been?

    Unlike microbes, beans don’t spontaneously replicate themselves

    Microbes also need food, energy and water to replicate. You see: they are living organisms. Like soybean plants.

    the act of planting and making new beans is not covered by exhaustion but is a new infringement

    If so, then the act of culturing and making new microbes is not covered by exhaustion but is a new infringement. The point I’m raising is I’m a bit surprised this case just comes up now, in the context of soybeans. I believe there were other utility patents covering “self-replicating” organism commodities prior to Monsanto’s patent. Happy to be wrong about that, though.

  94. So if I am allowed to make one copy of sheet music but then just leave the music on the copier and allow it to keep making copies, arent the subsequent copies infringing products? Why would a farmer leave seeds in his field without an expectation they would grow? Is he a fool or just lazy?

  95. I don’t think beans are strictly “self replicating”. You can’t put them in a silo, for example, and expect to double or triple your harvest. They will just sit there unless and until you, the farmer, performs the deliberate acts of planting, watering, plowing, weeding and harvesting the seeds. Thus, the farmer performs almost all of the critical activities to make more seeds. The farmer is in essence making seed making machines called plants that, once set up properly, will “do their thing” and make new seeds. No one in their right mind would argue that I could make a machine that make infringing widgets and, because new widgets are produced “spontaneously” once the machine is set up, that the widgets aren’t infringing products.

  96. I don’t think a soybean does its thing without a lot of help from the farmer, like planting in rows, watering, weeding, and of course harvesting. These are of course all deliberate acts by the farmer, not accidental and spontaneous occurances and surprises.

  97. I don’t think you can reasonabky argue that planting seeds and growing entirely new seeds is a “repair” or a “reconstruction” of the original seed. The original seed is obliterated when germinating. Plants don’t “eat dirt” (including leftovers from seeds) but manufacture essentially all of the new plant substance through photosynthesis. Whatever nitrogen and other elements required to make new seeds is supplied by chemical fertilizers. Thus, the substance and essence of next generation seeds are entirely new made from different atoms.

    And there is certainly no stepwise disassembly and reassembly of the original seed. Instead, many phase of plant growth and maturation occur long before any new seeds are created. About the only thing the old and new seeds have in common is the information contained in the genetic code, and even then the carbons, hydrogens and nitrogens are all different atoms taken from different sources. And the fact that one seed can result in hundreds or thousands further emphasizes the point.

    The first seed is merely a template used to make many infringing copies. That’s how I see it.

  98. I’m not sure I entirely understand your point, but there are differences between microbes and beans, not the least of which is that beans, unlike microbes, are human food and have millions of uses besides being used to make more beans. The exhaustion doctrine seems to say that once the beans are sold, they can be sold and resold unless times, which makes sense when you have a commodity. But microbes are not a commodity and have little use outside off replicating in a Petrie dish. Thus, exhaustion is less likely to apply and moreover, it is unlikely microbes will be sold and resold numerous times without replicating and dying off along the way. Unlike microbes, beans don’t spontaneously replicate themselves but must be carefully planted and attended to in order to make more beans. Not sure how it addresses your point, but I can understand the governments position that the exhaustion doctrine applies to any resale of the beans for any use, and also that the act of planting and making new beans is not covered by exhaustion but is a new infringement. That’s exactly how I’d predict it should come out.

  99. I know that you don’t think it does – hence your repeated inability to grasp the true legal issue here.

    Unless you open your eyes, you will not see.

  100. No it is not.

    I think this is another major flaw in the government's position.  What is essentially going on here is continuing the give Monsanto profits on the sale of Roundup Ready even though it is off patent.

  101. IANAE, assume a pill dissolves in the stomach and produces, in combination with stomach fluids, the patented product.

    Is placing the pill into the stomach using the pill or making the patented product?

    Thus, the patentee sells you the pill.  Can you use it?

    Now, let us make the further assumption that the patented product is a self-replicating virus.  Once the first virus is formed in the stomach, it automatically reproduces.  Does the user infringe each time the patented virus reproduces such that once a patient takes the pills he must continue to pay royalties…. or be enjoined?  Note, the patient "continues" to benefit from reproduced viruses.

  102. IANAE, you require both that Bowman pick the seeds from the field and then put them back, in neatly plowed rows, spaced properly.

    But, what does all that have to do with making?  The seed itself makes the new plant.  All Bowman did was select the time and location  where the seed did its thing.

    Had  Bowman not picked the seed up, the seed would have naturally reproduced.

      

  103. How about saying why it misses the point? I don’t think it does. Exhaustion is properly seen as merely some right of the patent holder no longer being able to be enforced. So, 1 and 2 are asking what right do you think you have when you have the bean.

  104. LOL – Look up the definition of a strawman and then see why your insistence on not having a self-replicating screwdriver is one massive FAIL for your attempted analogy.

  105. As you so nicely (self-defeat) pointed out, the law gets smudged at the Supreme Court.

    Depending on such then to attempt to prove a point that I am not the master of the facts and law here simply avails you NOT.

    Of course, you would see that if you had ever taken up the challenge of squaring Prometheus with the cases itself pointed out as most on point. You failed to do so – and that’s for sure.

    Better trolling please.

  106. my better command of facts and law prevail

    I don’t remember your views “prevailing” in any of the recent Supreme Court cases. Remind us again in which case your views of the outcome “prevailed.” It wasn’t Prometheus, that’s for sure.

  107. Just like when you leave metal in a factory

    Does it create little factories that then turn around and make more little factories?

    Because if it doesn’t your argument goes off the rails (and yes, we both know that to be the case).

    Calvinball time?

  108. my being right just blah blah blah blah

    Have you identified any conflict between what I wrote at 10:48 and your personal views, anon? I didn’t think you would be able to do that. Maybe time to stop digging. Or not. Your choice.

  109. It better not be – that patent is known to be expired.

    You aren’t about to be illegally trying to extend patent rights, are you?

  110. MM, the making of the new screwdriver is an independent act that has nothing to do with using a screwdriver.

    Ned, I’m merely pointing out that your earlier statement (“Once the item is sold, the patent is exhausted in that item. Any use is lawful under the patent laws“) was erroneous. It was too broad. You can introduce your own additional caveats if you like. I merely identified an obvious major one that occurred to me.

    Also, you don’t get to change the facts in the hypothetical. As I explained, the patent in the screwdriver you purchased may be exhausted but you can’t lawfully make a new patented screwdriver with the screwdriver you purchased.

    Lastly, just a gentle reminder that self-replicating screwdrivers do not exist on our planet.

  111. He did NOTHING. Why is he and infringer?

    More to the point, why is he a farmer?

    Look at what he actually did. What all farmers actually do. It’s a clear act of copying and infringement, on a huge scale. Just because you say “he self-replicated the seeds” instead of “he grew a bunch of seeds” doesn’t change the law. It just makes your assertion of fact ungrammatical.

    Sure, leaving soybean seed in a field where soybeans are actively grown results in soybean plants growing themselves. But that’s not the seed returning to the wild. It’s agriculture. It’s a thing people do on purpose. Just like when you leave metal in a factory, it turns into patented car parts. Those car parts can even be turned back into amorphous lumps of metal that can be turned into different patented car parts all over again. We don’t call the car “self-replicating”, we tell the guy who runs the factory that he deliberately created the conditions that produce this patented article, and as such he is liable as an infringer.

  112. Growing, assume the farmer harvests the plants while leaving the seed — every  year.  He does nothing with the seed itself.

    Does he infringe?

    I think you should begin to see that the seed is now in the wild, uncontrolled, doing its thing.  This is not the act of man.

  113. That seed naturally reproduces.

    Well, yes, but then you run into other problems, not the least of which is that a farmer leaving his seed behind in the field where he deliberately optimizes conditions for the growth of soybean plants is itself an affirmative act of infringement. And of agriculture.

    Another problem is that this isn’t the best way to plant soybeans, so this isn’t what Mr. Bowman would ever do. He would collect the seeds (i.e., not leave lying around in a field the entire product of his labors), and distribute them in neat rows, and spray with RoundUp, to maximize his yield in this activity he does for a living.

    But the main problem is your fixation on the expression “naturally reproduces” for an activity that has been deliberately orchestrated and performed and refined by man for literally thousands of years. Sure, a little bit of the process happens by itself once you create the right environment for it to happen, but growing these plants on a commercial scale is a whole heck of a lot of human work. That’s why no farmer ever has a credible defense to infringement that “*shrug* these plants self-farmed or whatever, I don’t know, I just own some land”.

    DNA is much more naturally self-reproducing than plants, incidentally. Even isolated DNA. Got a fresh problem with the BRCA claims?

  114. Thanks for your endorsement, MM.

    Regarding Prometheus, I think the same issue is involved here as there.  Once the doctor know of the correlation, he become an "inadvertent" infringer, using your words.  The same principle is involved here.

    Think.   If progeny seed is unauthorized, any use, sale or making is an infringement.  The grain elevators then would need a license from Monsanto to sell commodity seed contaminated with patented seed.  Farmers buying and planting commodity seed would inadvertently infringe.  

    This circles back to the government theory that some sort of mens rea is involved in direct infringement.  This is not the law.

  115. Dennis clearly sides with Monsanto in raising this red herring issue as it should be legally irrelevant under the law.

    What are the odds that if this post began with “anon said” that MM or Leopold would be all over it, accusing the poster of virtually assaulting the Professor?

    All we have is a gentle off-topic chide from MM.

    Hypocrites.

  116. I think your forced “choose 1) or choose 2)” quite misses the facts and law involved here.

    Of course, you have already stated that you think exhasution is a red herring, when quite in fact it is the crucial legal point under consideration.

    Try rewriting your “focus” to be on the correct question.

  117. MM, the government's brief completely hinges on mens rea.  They did discuss inadvertent infringement.

    Direct infringement, though, does not require mens rea.  If you have seed in your field and it naturally reproduces, you infringe under the government's theory if you KNOW that it is patented.

    Their is something wrong with this.

  118. My dreams have nothing to so with the reality that my better command of facts and law prevail.

    It’s called “doing your homework.” I’ve done mine.

  119. MM, the making of the new screwdriver is an independent act that has nothing to do with using a screwdriver.

    Think on this variation though:  You have a Tribble.  (Star Trek episode. link to google.com)  If it is exposed to air and water, it naturally reproduces and fast.  Soon, your whole starship will be covered in Tribbles.  Is this infringement?

  120. You are projecting again MM.

    How is that basic drafting course coming along?

    (and my being right just puts you into that eplectic rage, doesn’t it – LOL – you can always try to engage me on the actual facts and law, but we both know you don’t want to go there).

  121. MM, I was thinking that this issue might be analyzed using the repair/reconstruction doctrine with this wrinkle: as the old article expires, it is replaced with a new article by natural processes.  Intentionally constructing a new article using some of the old is an infringement.  But if the article is designed to renew itself, do we have the same case?

    The natural use of a seed is to grow new plants.  A seed, left to its own devices, will find soil, water and light and produce a plant that produces new seed.   The farmer has to stop this process by collecting the seed and removing it from the environment.

    But this is just shifting a natural phenomena in time, and perhaps, in place.  

  122. The “repair” doctrine is inapposite to this case.

    The fact that you trot it out show that you don’t understand what’s up.

  123. I’m pretty sure that I’m not the one trying to inject some perceived uncertainty.

    Exhaustion Doctrine is what it is. It’s those that want an exception for the self-replicating inventions that are busy with the injections.

  124. Didn’t your phrase of “Diehrbots” die when you were wrong about what the Bilski decision was going to do (i.e., outlaw business methods and software patents)?

    It should have.

  125. unworkable reading of Diehr

    I am not ceratin what you are making up at this point, MM.

    I am certain that you perpetually ducked the task of squaring Prometheus with the case cited as most on point.

    You still have not done that.

    People with law degrees usually understand that when a case gets up to the Supreme Court, the line between “current law” and “policy” becomes blurred.

    That’s no reason for you to engage in your policy-w@nking, now is it? You certainly don’t have that authority or pull and by no means does that mean that the SC shouldn’t be put to task when it butchers law. Blind obedience to what the SC says is never a good idea. Never.

    As to the childish indulgence at the end of your post – that says so much more about you than I. Let me know when you get done with your Beavis marathon.

  126. You mistake your impression that I think I am correct with your idea that I am not correct.

    I am correct.

    It’s a difference that you should understand.

  127. Nothing about Diehr changed when Prometheus was handed down.

    I know that. But as you surely remember (and I can show you if you’ve forgotten) the position of the Diehrbots was that Prometheus’ claims were eligible because Diehr prohibited a court from considering whether the only patent-eligible step recited in Prometheus’ claimed method was old or new. That position was decimated by the Supreme Court in Prometheus (no surprise to me) in a 9-0 decision. Did you forget all about that, 101E? Of course you did.

  128. Anon, you think if you own a bean you can plant it and grow as many beans as you want? To try to focus the dispute:

    1) I have a bean and make a new bean. That is a making and thus subject to infringement.

    2) I have legal possession of a bean. I can make as many beans as I want and you can’t stop me as long as I acquired the bean legally and without contract restrictions.

    I think the dispute boils down to people taking position 1 or 2.

  129. “Right. Just like your unworkable reading of Diehr was “current law” when Prometheus’ claims were on the chopping block.”

    What are you talking about MM? Nothing about Diehr changed when Prometheus was handed down.

    Diehr is still current and controlling case law on 101.

    Dissection is still not allowed, no exceptions.

    Claims as a whole is still required.

    And “Integration” is the analysis for determining when claims are statutory subject matter.

    The “only” thing that proved unworkable from Diehr was your old step new step dissection theory.

    Which was left out of the USPTO Guidance while Prometheus’ “Integration” was explicitly included and elaborated on.

    Any questions?

    I am here to help.

  130. using a product that was subject to a first sale is fundamentally different than making new ones

    Except when it is not – like with beans where the indisputable fact that use = make.

    Your comment “But the second the plants produce more seeds that are covered by the patent” is utter nonsense. How many plants produced are covered by the patent?

    C’mon GiM, surprise me with your legal insights. (and in your answer, please provide how the exhaustion doctrine is treated)

  131. LOL – more mischaracterizations.

    How is that basic drafting course coming along for you?

    you’re doing that thing you do

    (it’s called beating the tar out of my opponents with the knowledge of factys and law – and no real surprise that you don’t recognize it)

  132. It is the contortions away from the basic premises of the exhaustion doctrine that you should be more concerned about GiM. That is the real menaing and fundamental question at hand – the one that you and NWPA wish to wish away without addressing.

  133. And to miss the nexus with the patented item and the reason that item is sold is to squinch tight your eyes, stick your fingers in your ears and repeatedly chant “I don’t see the issue, I don’t see the issue.

    And your treatment of bla bla bla to the critical legal point won’t help you in the real world, even if you did not get a D in torts nor fail the bar exam.

    Wake up.

  134. You would buy any bean if you like the taste and the price was right. Why wouldn’t you buy Monsanto beans to eat?

    That’s not supposed to be a serious question, is it?

    As a percentage, I bet that 99% of the Monsanto beans are eaten or processed into foods

    LOL – is that 99% of first sale beans? Care to amend your statement?

    From one of Monsanto’s own recent press releases; “Monsanto’s corn and soybean seeds have genetically engineered traits meant to produce more crops and repel bugs.

    Hmmm, funny, the patented items are not being touted as more tasty…

    And from link to monsanto.com

    Monsanto’s biotechnology soybean pipeline is robust with a variety of products designed to provide significant yield improvements, improved weed- and insect-control options, as well as products capable of producing improved oil profiles that consumers are demanding. Our breeding research focuses on developing varieties that improve yield and yield stability as well as resistance to insects and disease.

    Now granted, there is an item here related to end-production (improved oil profile), but that particular item is not a part of the instant fact pattern of the Bowman case, now is it?

    Why, what exactly does that leave? (hint: it’s not for your supposed 99% use).

    Please feel free to continue to question me and let me show my mastery of fact and law to you.

  135. why you think anything here has made me “go bonkers.”

    Well it’s because you’re doing that thing you do where you simply re-type “current law is clear and I understand it and you obviously don’t” over and over and over, along with the usual name-calling and smearing and very little else. You did that a lot back when Prometheus was being argued, too. It’s sort of recurring problem, anon.

    But you’ve been told this before.

  136. Or …?

    Or desperate litigators whose clients have acre after acre of blatantly infringing crops are grasping at a chance to tap into a generalized public fear of eating food with nucleosides in it, and inject some perceived uncertainty into the law as part of their “zealous representation”.

  137. my argument is indeed not policy but current law

    Right. Just like your unworkable reading of Diehr was “current law” when Prometheus’ claims were on the chopping block.

    People with law degrees usually understand that when a case gets up to the Supreme Court, the line between “current law” and “policy” becomes blurred. Put your tattered policeboy underoos back in the drawer and stop behaving like a clueless j–koff.

  138. I’m still trying to process how/if this case relates to self-replicating technologies that self-replicate at much faster rates and which (unlike an edible bean) are useless without self-replication. Specifically, I’m wondering about genetically engineered microbial strains.

    One of the advantages of genetically engineered microbes is that unlike, say, elephants or goats, they can be quickly and relatively inexpensively “propogated” (“cultured” is the term of art). Thus, it is now ancient and common practice to share such strains (at least the non-patented ones) by providing a minimum amount of cells (e.g., a petri dish with a colony of the engineered strain growing on it or a tube of media that has been innoculated with a few cells).

    My understanding is that the use of these patented strains is controlled by carefully drafted license agreements. And this has been going on for many years. I don’t recall anyone raising an argument analogous to the arguments being made by Bowman, i.e., that the sale of a patented microbial colony exhausts the patent rights with respect to the gadzillions of microbes that are subsequently produced in culture by the purchaser and that license agreements that limit what a purchaser of the original strain can do with that strain are somehow unenforceable.

    Perhaps the issue came up in the engineered bean context because the licensing terms of microbial technology companies/institutions are relatively reasonable when compared to Monsanto’s terms? Or because it’s easier to “get around” (e.g., violate) the licensing terms of microbial technology companies without anybody noticing? Or …?

  139. If there are farmers who feel strongly they don’t want to plant GM beans, whether to avoid paying a license or being organic, I am sure a market will spring up to meet this demand. In fact, I am going to form “Clean Seeds LLC” when I get off the computer and start selling non-GM seeds for less than Monsanto seeds.

  140. The law doesn’t say what you think it says. I read your favorite case and it does not support your opinion. But I can tell you are extremely convinced you are right. Not always the best strategy for being a good lawyer.

  141. Yes, we know the beans can be sold and resold a zillion times and patent exhaustion protects all downstream purchasers. Bla bla bla. However, growing (i.e., making) new beans is different and an infringement because, unlike the other hundreds of possible uses for beans, it is unique in that it involves “making” new infringing products. To miss this point is to get a D in torts or fail the bar exam.

  142. You would buy any bean if you like the taste and the price was right. Why wouldn’t you buy Monsanto beans to eat? Ultimately, unless no one eats them (or products made from beans), no one in their right mind would produce them. As a percentage, I bet that 99% of the Monsanto beans are eaten or processed into foods, and only 1% are replanted. Otherwise, it would be like a multi-level ponzi scheme that would soon collapse under its own weight.

  143. Agreed. The remarks by some, mostly those who believe exhaustion magically permits downstream unlicensed users to make more infringing product, reminds me of first year torts class. The jumping jacks and contortions required to say that “growing beans” does not equal “making beans” may be a nice Socractic exercise (in futility) but it has no real meaning or relevance to the fundamental questions at hand.

  144. Yes, using a product that was subject to a first sale is fundamentally different than making new ones. Purchased beans can be used for any reason, including making burritoes and tofu. And authorized uses probably include planting nice looking decorative plants if soy bean plants make you happy. But the second the plants produce more seeds that are covered by the patent, the farmer is “making” infringing product. This is not a mind bender to understand, but the jumping jacks and contortions on this board (i.e., transporting beans or red rabbits) are absurd and will be rightly ignored by the SC.

  145. Then go and re-read the Univis Lens case, keeping note of the doctrine of exhaustion (the one you want to ignore away). I also have compete command of the law.

  146. The person selling the beans the second time doesn’t have the rights to offer a license for bean making only bean eating.

    Check the actual fact pattern again – it is an unrestricted second sale involved (see the comment above about contracts and against whom terms are applied).

    Don’t let my witty banter fool you – I have complete command of the facts of this case.

  147. It’s an analogy being built to reflect the case at hand.

    Try not to be so venomous, and you might actually learn something.

  148. Quite elementary my boy. All uses of seed but one do not result in making infringing seed. Thus, all such uses are fair ones as a result of the first sale doctrine. But making new seeds is fundamentally different, not the least of which is because of the word “making”.

    I can always purchase a patented widget and use it all I want as a result of first sale doctrine (unless I am contractually restricted). But I am not allowed to manufacture more widgets, or even “reconstruct” the one I have. I can only “repair” it.

  149. Except you are not and neither am I.

    My counter points are all all valuable, as they are correct and on point.

    Don’t be mad because they make you look like a piker, just think a bit more about your position before you trot out your ‘screwdriver’ discussion points (hint: it may help you to actually understand the legal concepts involved).

  150. My guess is the SC is not intereted in your questions Ned, or any of the other inane ones floating around out there, such as:

    If a tree falls in a forest and no one is there to hear, does it make a sound?

    What is the sound of one hand clapping?

    Can God make a world so big he is too large to hold it?

    How many angels can dance on the head of a pin?

  151. Nice stroke for your circle mate MM. Pretty juvenile response too.

    Buying that straw in bulk does have its dividends, right?

  152. Anyone else thinks Pierson v. Post is controlling or even remotely relevant to the simple question being posed, which is: Is growing a plant to make seed the same as “making seed” and hence an infringing activity? Neither the question nor the answer are very remarkable and the question is not a mind bender to answer (and it doesn’t matter whether Post can claim ownership of a Fox shot by Pierson).

  153. “There is no need for you to attempt to mischaracterize or twist [my point].

    I did neither. I clarified your point. If there is a conflict between what I wrote and you attempted to state, anon, then let us all exactly what the conflict is. Try to do so clearly. I don’t think you can do it. I think you can call me names, though. You’re pretty good that.

    the doctrine of exhaustion is actually pretty clear too

    Everything is clear to you, anon. You’re the smartest person ever. That’s why you get to smear everyone else with your endless a—holery and we have to put up with it.

  154. Full go – as my argument is indeed not policy but current law as in the existing exhaustion doctrine.

    You just don’t seem to grasp that yet.

  155. I take comfort in the government brief because it shows (1) my position is not an isolated one and (2) there is a reasonable chance the Supreme Court will adopt my/government’s view. Most of the arguments you and others give are policy oriented. I couldn’t care less about what you think the law ought to be. My point is that growing = making, and making a patented product is infringement. Full stop.

  156. It’s not about what the law would permit

    GFY, anon. We’re having a discussion about the law and the implications of the case. Are you that f—cking clueless that you can’t see that or are you just trying to troll up another thread with your asinine b—sh–t?

  157. Your presumptions do not fit the Bowman fact pattern.

    Uh … rabbits aren’t beans. Beans don’t have red fur. It’s a different set of facts.

    GFY, anon. GFY.

  158. It is, no matter how much that hurts your feelings.

    But if you wait a little while longer it will be the ashen remains of a strawman. Will you feel better then?

  159. You are trying to tie together the first sale of the beans with a license for one round of making with the second sale of beans. The person selling the beans the second time doesn’t have the rights to offer a license for bean making only bean eating.

    What is exhausted that gives you the right to make the beans? Nothing. The point is that you can’t make the beans –ever–without a license to do so or it is infringement. The first sale gives you a license for one round of making. After that you have the beans and you can sell them and eat them.

    This is really cut and dry. No gray area at all in this one. None. Beans are being made by being planted and cared for. The fact that you sold the beans to the first person to plant doesn’t mean that they can sell them and then the plant right is then part of a owner’s right. If I sell steel to someone and right to make my patented machine, that doesn’t mean if they sell the steel to another person that they have the right to make my machine.

  160. Your position is more accurately stated as follows:

    No.

    My position is as I have stated. There is no need for you to attempt to mischaracterize or twist it.

    Likewise, the doctrine of exhaustion is actually pretty clear too (once you clear all the dust-kicking).

  161. and who spray with RoundUp all the time.

    As the patent for the spray has expired and the chemical holds no force in a patent issue, I am sure that eventually you will try to make some cognizant point, right?

    BTW, it is delightful to see you attempt so hard to fight for a patentee on some matter as a break from your usual infringers’ rights stance.

    Try to pick a winner next time though.

  162. How many of those drivers do you think failed to beat their speeding tickets in court?

    LOL – just as many as the number of examples you pull out of your arse.

    Do you actually have a point that you are trying to make? Is this another attempt by you to show by example a post that should be left alone?

  163. Presumably the patentee would only sell you rabbits that had been sterilized. Or you could sterilize them yourself. Problem solved.

    Except not. Your presumptions do not fit the Bowman fact pattern.

    Try to keep up.

  164. With all due respect to your argument, NWPA (which I understand and it’s a fine argument), please let’s not destroy the English language. A bean is not a machine. It’s a bean. It can be a man-made and a man-made composition. But it’s not a machine.

  165. the reason for the patent, the reason for the sale in the first place, would have to be tied to the offspring.

    Why would the “reason for the patent … have to be tied to the offspring”? It seems to me that the law as presently applied would permit other reasons for the patent.

    You seem to be suggesting that enjoyment of the touch and feel of a red-furred rabbit is not a substantial utility under 101. I’d like to believe that’s true but I don’t think you would.

  166. So, if someone patents GM rabbits with a genetic modification to yield bright red fur, and I buy a pair of said red rabbits and they procreate in my custody, and I have done no more than feed them, the government thinks I should have to pay for a license for every red rabbit born for ever and ever?!

    Presumably the patentee would only sell you rabbits that had been sterilized. Or you could sterilize them yourself. Problem solved.

  167. Your position is more accurately stated as follows:

    use = make unlimited generations of beans = sale of first bean exhausts patent with respect to beans generated through propagation of the originally purchased beans and through propagation of any progeny beans, regardless of how many generations have passed

    I am sure you realize, anon, that from the moment Monsanto sells one bean to any farmer, Monsanto’s patent covering that bean quickly turns from gold into lead. Nobody who wants that bean will need to buy it from Monsanto after a relatively short time.

    I don’t necessarily have a problem with that result (Monsanto will be fine, either way). I just want to make sure that result is understood.

    How much term is left on these particular engineered soybean patents anyway? It seems to me they must be getting pretty long in the tooth.

  168. infringement has no mens rea – intent is not a requirement. “Fault” is not at issue.

    A speeding ticket has no mens rea either, but remember those Toyotas that accelerated uncontrollably on their own? How many of those drivers do you think failed to beat their speeding tickets in court?

    Same for a parking ticket. No mens rea. Suppose I steal your car and park it by an expired meter. Think you’ll beat that ticket in court?

    These are not actually mens rea questions, as you might recall from first year criminal law.

  169. I’m not talking about a “self-replicating” screwdriver, obviously.

    That’s where your strawman burns down.

  170. That’s kind of the point of that position – infringement has no mens rea – intent is not a requirement. “Fault” is not at issue.

    (and overall, the whole fault thing is a non-sequitur to the true issue: exhaustion)

  171. Okay I get that fact, but what if wind blows the seed on to another’s farm, one who did not take a license, (rather then being dropped by plane), what then?

    In theory, you haven’t committed an infringing act.

    In practice, (1) you’d have to prove it somehow, but (2) only once you’d done enough that looks like infringement for the patentee to sue you. If you only have a couple seeds blowing onto your land, and the rest of your field is somehow non-infringing you’ll never get Monsanto’s attention in the first place.

    If you actually know that you were using non-infringing seed until some infringing seed randomly fell out of the sky, for example because you always test your seed to make sure it’s not RoundUp-Ready before planting, I’m sure that evidence would be admissible to your defense of “I didn’t infringe, someone else infringed on my land”.

    Probably the main reason this never gets talked about is because Monsanto sues farmers who have fields full of only RoundUp-Ready crop, and who spray with RoundUp all the time. They’re not only planting the stuff on purpose, they’re actively using the benefit of the invention. They can’t make a credible claim that three beans somehow jumped into their fields and those three beans are the ones Monsanto happened to choose for its genetic analysis.

  172. only use” is only not the legal requirement for exhaustion.

    The problem you are having

    On the contrary, I am having no problem.

    That is the primary purpose of beans to eat them” not true for the bean at issue (the ones that exhaust).

    You don’t even have to go to the “one just sees” venue.

    Easy. Simple.

  173. Okay I get that fact, but what if wind blows the seed on to another’s farm, one who did not take a license, (rather then being dropped by plane), what then?

    Can that farmer then sell the progeny, the crop? It’s not his fault this stuff flew into his field and cross-contaminated with his other stuff.

  174. Unless of course the reason for the screwdriver, the patented part is that the screwdriver makes more of itself as part of the use.

    I’m not talking about a “self-replicating” screwdriver, obviously. I’m just providing a simple, real-world example that shows why Ned’s broad assertion regarding “any use under the patent laws” is incorrect.

    Your position regarding how you wish the Supreme Court to rule is fairly clear, anon. Do you have any position on how they will actually decide the case?

  175. The only use for those beans is not making more beans. You can eat the beans.

    So, I sell you the beans with a license to make one round of my patented beans. If you sell the beans to someone else they need the license to make beans. Beans don’t just make themselves without being planted and cared for.

    The problem you are having is you are trying to imbue the beans with a making ability that becomes part of owning the bean. So, you say owner’s right to make. I say not part of the owner’s right. You can eat. That is the primary purpose of beans to eat them. The making is something you need a license for.

    This is very simple if one just sees the beans as not a part of nature, but as machines made by man.

  176. You are still operating in a vacuum of what the invention is and its relation to the reason the sale happens in the first place.

    Taking comfort in a poorly written government brief just because it mirrors what you want to believe is not very impressive.

  177. Use contracts.

    Keep track of that thought and how many actual sales are involved in the Bowman fact pattern (and importantly what rights are explicitly retained – and can be retained – at each of the sales). Keep track as well who drafted the contract and against whom the provisions should hold against. Finally, realize that exhaustion doctrine applies regardless of contract and that improper actions regarding patent rights (like trying to contract your patent right beyond the legal period) may have dire consequences.

    Food (lol) for thought.

  178. Just because you sell me a machine doesn’t mean I can use the machine to build another machine that infringes your patent.

    Unless of course the purpose of the machine and the reason for its sale is that the machine does in fact make other machines.

    Easy. Simple. (keep your eyes open)

  179. When you plant their patented bean and grow more beans you are making or at least contributing to infringement by planting and caring for the plants. Infringement under 271 by making.

    Except you are not, as you are using the patented invention for the reason it was sold to you – the epitome of exhaustion.

    Now if you want to ignore exhaustion doctrine totally (or create some new caveat), then you need to actually address that position.

    Rather than a red herring – exhaustion is the crux of the matter. Your attempt here to dismiss is akin to simply closing your eyes and saying “I don’t see the issue.”

    Open your eyes back up. Easy. Simple.

  180. One final note: the restrictions on use is another red herring. Just because you sell me a machine doesn’t mean I can use the machine to build another machine that infringes your patent.

    The problem people are having is that this is a piece of nature they think and so they have a right to plant that bean. But, it isn’t a piece of nature. It is a machine designed by people.

  181. Not sure why you think that I criticized your position “mercilessly” or why you think anything here has made me “go bonkers.”

    Neither characterization, without more, is accurate.

    A brief is not a decision – methinks you are celebrating prematurely.

    And, as is clear iin comments by others, the government’s brief is not sustainable on its own feet (you really are grasping for straws with some reason to celebrate ‘over me’).

    But your reach for some type of recognition does validate that you think my statements are worthwhile to attempt to overcome.

    Thanks.

  182. This is definitely the right way to think about this. You need to add the other use for the beans besides making more beans is eating the beans.

  183. Think about it this way: just because you own the means to make the bean (beans) doesn’t mean you can make them and infringe a patent.

    Barry, barry simple. The only complexity here is lawyers who love to make easy issues complex.

    And just analyze how the farmer helped the bean infringe. The bean after all would not infringe by making more beans if not planted.

  184. Here is how to think about this:

    When you plant their patented bean and grow more beans you are making or at least contributing to infringement by planting and caring for the plants. Infringement under 271 by making.

    They can chose not to enforce their patent on the first batch of made beans by contract with you when you sell them. You sell the beans to someone else. Exhaustion of the patentee rights–but what rights? Their right to exclude people from “making” is never exhausted. So, when you plant you are infringing. The patentee can chose not to enforce for the first round of making, or by contract you can get a limited license to make the first round.

    So, red herring the exhaustion doctrine. The real deal here is you need a contract that grants you a one time license to make more beans from your beans, or you infringe.

    Easy. Simple. Your bag of beans comes with a license granting you the right to one round of making more beans.

    Sheesh, talk about making a mountain out of a pile of beans.

  185. The second point is the one I tried to make to “anon” but he would have none of it. He was so confident i was wrong. The court may hold otherwise but at least my position is the same as the one adopted by the government, which is the straight forward and unremarkable notion that growing seed is making infringing product and that exhaustion only applies to the actual seeds sold.

  186. My my. The government brief agrees with my position, criticized mercilessly by “anon” (who else?) as being outlandish, that planting second generation Monsanto seed and then making more seed infringes the patents because it is an unauthorized “making” of infringing seed. Not a remarkable or difficult conclusion to reach but it made “anon” go bonkers.

  187. Even worse, as the reason for the patent, the reason for the sale in the first place, would have to be tied to the offspring.

  188. So, if someone patents GM rabbits with a genetic modification to yield bright red fur, and I buy a pair of said red rabbits and they procreate in my custody, and I have done no more than feed them, the government thinks I should have to pay for a license for every red rabbit born for ever and ever?! There is no way for me to stop infringing other than to destroy the rabbits as they’re born?!

  189. Unless of course the reason for the screwdriver, the patented part is that the screwdriver makes more of itself as part of the use.

    An important match for your strawman.

  190. >>Rader Calls Out High Court’s ‘Activism’ In IP Law

    It’s about time!!!!!!!!!

    We can beat the #$%#$%& down with empirical claim analysis. I’ll bet a bit of searching through SCOTUS case law would bear fruit.

  191. The does not address the following question: can a farmer who does not wish to use patented seeds without paying a fee to a patentee (firstly Monsanto), considering that the DNA of the patented seeds and the patented seeds themselves spread everywhere ? This is serious matter.

  192. this is the most fascinating case the Supreme Court may ever have taken.

    I don’t know about that but I’m pretty sure that’s a strong contender for Nerd Comment of the Year. And it’s only January! GO NED GO! 😉

  193. direct infringement is an infringement regardless of intent.

    True. But no court will hold you liable for damages if you infringed against your will. (momentary digression: you can’t patent mental steps for the same reason — how do you unlearn that fact once Prometheus taught it to you?)

    I don’t think the government is raising the issue of intent out of the blue. The issue of unintentional or accidental infringement was raised by Bowman, if I’m not not mistaken. Bowman’s argument is that Monsanto’s beans inherently cause unintentional infringement because, as a practical matter, Monsanto’s sale of those beans to farmers turns those farmers into infringers because, by planting the bean, the farmer causes new infringing beans to be made. One problem with Bowman’s argument (correct me if I’m wrong about this) is that Monsanto expressly authorizes (necessarily authorizes) this infringing use when it sells its beans to farmers, in addition to authorizing the sale (by those same farmers) of the progeny beans to non-farmer consumers of the beans.

    It’s the use of those progeny beans to create further beans that Monsanto considers an unauthorized infringment. Monsanto’s argument is that rights to the progeny beans are not exhausted because Monsanto did not sell the progeny beans to the farmer. That’s a difficult argument to rebut because the premise is 100% factually accurate.

  194. Ned: They could have flown airplanes over Indiana, spreading their RR plants to every field. Then they could have sent in their goons to inspect. Every farmer would be an infringer, under the government’s theory.

    There must be something wrong with the government’s theory.

    Actually I think there’s something wrong with your hypothetical. If I force you to involuntarily practice a patented method or create a patented product, I suppose you might technically be “an infringer” but at the end of the day I am liable, not you, and I don’t see anything in the government’s brief suggesting they believe any differently.

  195. Once the item is sold, the patent is exhausted in that item. Any use is lawful under the patent laws.

    Not true. I have a patent on a screwdriver. You buy the patented screwdriver from me. You can’t lawfully use the screwdriver to make another patented screwdriver. It doesn’t matter if the patent is mine or someone else’s. Your behavior is not lawful.

    This is an extremely important caveat to the broad rule you stated.

  196. One could also, ask, IANAE, if one disassembles a machine for transportation and then reassembles it at its destination whether that is patent infringement.

    It’s the same machine built from the same parts. Exhaustion applies. Even it were a different machine, built from the same parts, and it still infringed the patent, exhaustion would apply.

    I do note that the facts in your hypo can be distinguished from the present case, although I don’t think it makes any legal difference: the progeny seeds “created” by the farmer who plants one of Monsanto’s seeds are not “identical” to the parent seed, even though the vast majority of them will infringe Monsanto’s patent. I suppose some of the atoms in the parent seed may be found in progeny seed but most of the material in the progeny seeds comes from carbon dioxide “fixed” from the atmosphere. If you were given the parent seed and allowed to study it and document its features carefully, it would be trivial to determine if a seed presented to you later was the “same” (truly identical) seed or merely a “similar” one.

  197. In the US, the bulk of commodity soybeans will be GM soybeans covered by the Monsanto patents.  Thus, anyone wanting to buy and plant those seeds will be infringing (assuming Monsanto wins). 

  198. “I wonder how easy is it for a farmer to plant a commodity crop with any certainty that it doesn’t infringe a patent?”

    It is impossible. And Monsanto already successfully sued many farmers that – in good faith – used seeds “contaminated” with Monsanto seeds. In fact, it is also seen by some as a strategy willfully used by Monsanto to enter “forbidden markets” by forcing the spread of patented seeds in given territories (Latin American countries).

  199. IANAE, I patent an android who appears human and can reproduce with other androids. The lifetime of an android is 5 years. They mature in 2 years. Their brains are programmed at 2years with whatever knowledge and skills one needs in an android.

    One Bowman owns an android, call her Eve. At age 4, she has a son, call him Able.

    Did Bowman infringe the patent when Eve had Able? At the end of 5 years, Bowman still has only one android, Able.

    You didn’t meet any people on the way to St. Ives.

  200. The government brief is highly objectionable in this regard as well:

    It links Bowman’s direct infringement with knowledge and intent, and says that inadvertent infringement is, well, it does not say, but by implication, not infringement.

    This line of thinking is alien to patent law. For centuries now, here and in England, and perhaps in the whole world, direct infringement is an infringement regardless of intent. One does not have to demonstrate and should not have to demonstrate intent to prove direct infringement.

    But here, the government goes out of its way to bring proof of intent into the equation. Bowman acted with knowledge. He KNEW the seeds he planted were of the patented variety!

    He is guilty — he has MENS REA.

    IMHO, the lawyers who wrote this brief are guilty, guilty of not understanding basic patent law.

  201. Mr. Thresholding,

    I think the Supreme Court really needs to think this one through, carefully, like the NY Supreme Court once thought through Pierson v. Post.

    We are at the interface between law and nature, where nature cannot be controlled, but where control is necessary for ownership.

    When one is patenting sexually reproduced plants and animals, it seems to me that the law cannot control what happens after the seed, the plant or the animal that bears the patented gene is released into the wild. The plants reproduce naturally. They spread.

    To the extent the law says we cannot patent nature, then we should not be able to patent sexually reproduced plants and animals.

    The thinking that went into the original Supreme Court cases on this point was shallow, very shallow. We need better from the Supreme Court.

  202. The goverment says that the purchaser of a patented seed infringes when he plants the seed.

    Thus, Monsanto, the patent holder, can sell patented seed all day long, to everyone, to passers-by, to kids, to farmers. They cannot plant that seed without infringing the patent.

    Monsanto never needed “technology” licenses. They could have flown airplanes over Indiana, spreading their RR plants to every field. Then they could have sent in their goons to inspect. Every farmer would be an infringer, under the government’s theory.

    There must be something wrong with the government’s theory.

  203. and, sumj, could I ask you this:

    A copyright play is performed in Central Park. You are in Central Park. You stand and watch the play.

    Do you owe the copyright owner an admission fee?

  204. Paul, why not ask whether placing a patented seed, lawfully owned, in a transporter and replicating it hence while destroying it here would be an infringement?

    Justice Breyer, is that you?

  205. anon, the normal use of commodity see is a red herring as even the government admits that a patentee cannot impose use restrictions after sale.

    Once the item is sold, the patent is exhausted in that item. Any use is lawful under the patent laws.

    Dennis clearly sides with Monsanto in raising this red herring issue as it should be legally irrelevant under the law.

    In fact, from common law, the law did not recognize use restraints on sold personal property. If any were imposed, the courts would not recognize them.

  206. Actually, this is the most fascinating case the Supreme Court may ever have taken.

    Recall the famous case of Pierson v. Post? There the fox hunt was on, the hounds and horse close afoot the fleeing fox. A townsman sees the fleeing fox get caught in a culvert, kills hims, and takes possession. The hunter sues on the theory of trespass or conversion of personal property, assuming the hunter owned the fox.

    How was the case decided, if you recall?

  207. I’m going to sit back and enjoy the show (especially as the usual pro-infringer IANAE is all of a sudden pro patent holder – and of course, wrongly so).

  208. IANAE, I patent an android who appears human and can reproduce with other androids. The lifetime of an android is 5 years. They mature in 2 years. Their brains are programmed at 2years with whatever knowledge and skills one needs in an android.

    One Bowman owns an android, call her Eve. At age 4, she has a son, call him Able.

    Did Bowman infringe the patent when Eve had Able? At the end of 5 years, Bowman still has only one android, Able.

    Is this to be analyzed under the repair and reconstruction doctrine?

    If Able is an infringement, who owns Able?

  209. Check item 1.

    The government concedes that even if Monsanto placed use restrictions on the seed it sold, that the authorized sale exhausts the patent (under Quanta, and for that matter, Bobbs Merrill and Univis Lens).

    Think.

    Normal use is, or at least should be, beyond the point. The patent is exhausted!!

    Exhausted!!!

    The use, whatever use, that the purchaser makes of the seed is beyond the patent.

    Think.

  210. The normal use of commodity seeds is food. The normal use of Monsanto seeds is planting. That’s the difference.

  211. One could also, ask, IANAE, if one disassembles a machine for transportation and then reassembles it at its destination whether that is patent infringement.

  212. Moot?

    Why?

    We only now figuring out transportation. But if making is an infringement, even from a lawfully owned article, then transportation would be an infringement.

    But that really doesn’t make sense, does it?

  213. Obviously, the government brief is conflicted.

    1. Violation of use restrictions do not make a purchaser who violates the use restrictions an infringer.

    2. The authorized sale of an item frees it from the patent.

    3. The normal use of a seed is to plant. But, from 1, even if there is a use restriction on sale, the patent remains exhausted.

    So, how can the government, after saying all this come to the conclusion it did? It is as if it didn’t like the answer, that a purchaser of a seed has the right to plant it. Instead it simply multiplied by the proverbial zero, and substituted the answer it wanted. No logic or law involved in that.

    Judicial legislation anyone?

  214. why not ask whether placing a patented seed, lawfully owned, in a transporter

    Because the question is moot. Even if you bet Paul $50k that the Supreme Court will side with you.

  215. Paul, why not ask whether placing a patented seed, lawfully owned, in a transporter and replicating it hence while destroying it here would be an infringement?

  216. Would not a patented article placed in a commercially available fully automated 3-D scanner – 3-D printer also become “self-replicating”?

    Why isn’t an article-copying factory on your property a “self-replication”? All you’re doing is feeding the factory the raw materials it needs, and hiring people to tend it. Same as a field of soybean plants.

    That’s precisely why there won’t be a special rule for “self-replicating” technologies. There’s no objective place to draw that line. If you can identify a farmer as an infringer, it isn’t really self-replicating in a meaningful sense. And you can’t really deny the farmer’s involvement, because agriculture is the entire reason a pesticide-resistant gene is of interest in the first place.

    The Supremes will have to apply existing patent law to the technology, just as they’ll have to apply existing patent law to gene patents. Both cases will be very straightforward. You made a molecule in a lab? That’s an invention. You made a field full of copies of an invention? That’s infringement.

  217. Well the patent article didn’t self replicate.

    This argument would only make sense if the 3-D printer was the thing being replicated and it was set to replicate itself.

  218. Oral argument question for a Sup. Ct. Justice in this case?:
    Would not a patented article placed in a commercially available fully automated 3-D scanner – 3-D printer also become “self-replicating”? Does that not require much less “manufacturing” effort than preparing, planting, fertilizing, weeding and harvesting soybean seeds with various machines?

  219. The Government writes that the proper rule, under Supreme Court precedent, is that downstream purchasers will not be liable [for] patent infringement based upon failure to comply with use restrictions placed on the original authorized sale.

    I doubt this rule will be changed by the Supreme Court.

    I do wonder to what extent the challenges faced by “innocent” farmers will enter into the Supreme Court’s decision-making (I recognize the fact that Bowman doesn’t neatly fit into that category).

    Put another way, I wonder how easy is it for a farmer to plant a commodity crop with any certainty that it doesn’t infringe a patent? Are there off-patented seeds being sold with a guarantee that they don’t infringe any patents? The seller would be liable for selling the patented seeds but, if self-replication constitutes “making” and plants produce patented seed, the farmer is also an infringer, regardless of whether he plants or sells the newly generated seeds.

  220. Dennis, that’s the best summary of the issues I’ve seen thus far. Congrats. A coupled edits:

    1) your explanatory paragraph below Monsanto’s two questions should be re-formatted; more imporantly:

    2) “The brief cites case-after-case where Supreme Court has indicated that exhaustion only applies to the article sold and does permit the purchaser to make new copies”; I think the word “not” is missig before the word “permit.”

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