Supreme Court: Patent Rights Block Farmers from Saving and Re-Planting Patented Seeds

by Dennis Crouch

Bowman v. Monsanto Company (Supreme Court 2013)

In a short opinion a unanimous Supreme Court has sided with Monsanto in holding that the doctrine of patent exhaustion “does not permit a farmer to reproduce patented seeds through planting and harvesting without the patent holder’s permission.” 

Read the decision below:

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Bowman v. Monsanto Company, 569 U. S. ____ (2013)

JUSTICE KAGAN delivered the opinion of the Court

Under the doctrine of patent exhaustion, the authorized sale of a patented article gives the purchaser, or any subsequent owner, a right to use or resell that article. Such a sale, however, does not allow the purchaser to make new copies of the patented invention. The question in this case is whether a farmer who buys patented seeds may reproduce them through planting and harvesting without the patent holder’s permission. We hold that he may not.

I

Respondent Monsanto invented a genetic modification that enables soybean plants to survive exposure to glyphosate, the active ingredient in many herbicides (including Monsanto’s own Roundup). Monsanto markets soybean seed containing this altered genetic material as Roundup Ready seed. Farmers planting that seed can use a glyphosate based herbicide to kill weeds without damaging their crops. Two patents issued to Monsanto cover various aspects of its Roundup Ready technology, including a seed incorporating the genetic alteration. See Supp. App. SA1–21 (U. S. Patent Nos. 5,352,605 and RE39,247E); see also 657 F. 3d 1341, 1343–1344 (CA Fed. 2011).

Monsanto sells, and allows other companies to sell, Roundup Ready soybean seeds to growers who assent to a special licensing agreement. See App. 27a. That agreement permits a grower to plant the purchased seeds in one (and only one) season. He can then consume the resulting crop or sell it as a commodity, usually to a grain elevator or agricultural processor. See 657 F. 3d, at 1344–1345. But under the agreement, the farmer may not save any of the harvested soybeans for replanting, nor may he supply them to anyone else for that purpose. These restrictions reflect the ease of producing new generations of Roundup Ready seed. Because glyphosate resistance comes from the seed’s genetic material, that trait is passed on from the planted seed to the harvested soybeans: Indeed, a single Roundup Ready seed can grow a plant containing dozens of genetically identical beans, each of which, if replanted, can grow another such plant—and so on and so on. See App. 100a. The agreement’s terms prevent the farmer from co-opting that process to produce his own Roundup Ready seeds, forcing him instead to buy from Monsanto each season.

Petitioner Vernon Bowman is a farmer in Indiana who, it is fair to say, appreciates Roundup Ready soybean seed. He purchased Roundup Ready each year, from a company affiliated with Monsanto, for his first crop of the season. In accord with the agreement just described, he used all ofthat seed for planting, and sold his entire crop to a grain elevator (which typically would resell it to an agricultural processor for human or animal consumption).

Bowman, however, devised a less orthodox approach for his second crop of each season. Because he thought such late-season planting “risky,” he did not want to pay the premium price that Monsanto charges for Roundup Ready seed. Id., at 78a; see Brief for Petitioner 6. He therefore went to a grain elevator; purchased “commodity soybeans” intended for human or animal consumption; and planted them in his fields.[1] Those soybeans came from prior harvests of other local farmers. And because most of those farmers also used Roundup Ready seed, Bowman could anticipate that many of the purchased soybeans would contain Monsanto’s patented technology. When he applied a glyphosate-based herbicide to his fields, he confirmed that this was so; a significant proportion of the new plants survived the treatment, and produced in their turn a new crop of soybeans with the Roundup Ready trait. Bowman saved seed from that crop to use in his late-season planting the next year—and then the next, and the next, until he had harvested eight crops in that way. Each year, that is, he planted saved seed from the year before (sometimes adding more soybeans bought from the grain elevator),sprayed his fields with glyphosate to kill weeds (and any non-resistant plants), and produced a new crop of glyphosate resistant—i.e., Roundup Ready—soybeans.

After discovering this practice, Monsanto sued Bowman for infringing its patents on Roundup Ready seed. Bowman raised patent exhaustion as a defense, arguing that Monsanto could not control his use of the soybeans because they were the subject of a prior authorized sale (from local farmers to the grain elevator). The District Court rejected that argument, and awarded damages to Monsanto of $84,456. The Federal Circuit affirmed. It reasoned that patent exhaustion did not protect Bowman because he had “created a newly infringing article.” 657 F. 3d, at 1348. The “right to use” a patented article following an authorized sale, the court explained, “does not include the right to construct an essentially new article on the template of the original, for the right to make the article remains with the patentee.” Ibid. (brackets and internal quotation marks omitted). Accordingly, Bowman could not “‘replicate’ Monsanto’s patented technology by planting it in the ground to create newly infringing genetic material, seeds, and plants.” Ibid.

We granted certiorari to consider the important question of patent law raised in this case, 568 U. S. ___ (2012), and now affirm.

II

The doctrine of patent exhaustion limits a patentee’s right to control what others can do with an article embodying or containing an invention.[2] Under the doctrine, “the initial authorized sale of a patented item terminates all patent rights to that item.” Quanta Computer, Inc. v. LG Electronics, Inc., 553 U. S. 617, 625 (2008). And by “exhaust[ing] the [patentee’s] monopoly” in that item, the sale confers on the purchaser, or any subsequent owner, “the right to use [or] sell” the thing as he sees fit. United States v. Univis Lens Co., 316 U. S. 241, 249–250 (1942). We have explained the basis for the doctrine as follows:“[T]he purpose of the patent law is fulfilled with respect to any particular article when the patentee has received his reward . . . by the sale of the article”; once that “purpose is realized the patent law affords no basis for restraining the use and enjoyment of the thing sold.” Id., at 251. Consistent with that rationale, the doctrine restricts a patentee’s rights only as to the “particular article” sold, ibid.; it leaves untouched the patentee’s ability to prevent a buyer from making new copies of the patented item. “[T]he purchaser of the [patented] machine . . . does not acquire any right to construct another machine either forhis own use or to be vended to another.” Mitchell v. Hawley, 16 Wall. 544, 548 (1873); see Wilbur-Ellis Co. v. Kuther, 377 U. S. 422, 424 (1964) (holding that a purchaser’s “reconstruction” of a patented machine “would impinge on the patentee’s right ‘to exclude others from making’ . . . the article” (quoting 35 U. S. C. §154 (1964 ed.))). Rather, “a second creation” of the patented item “call[s] the monopoly, conferred by the patent grant, into play for a second time.” Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U. S. 336, 346 (1961). That is because the patent holder has “received his reward” only for the actual article sold, and not for subsequent recreations of it. Univis, 316 U. S., at 251. If the purchaser of that article could make and sell endless copies, the patent would effectively protect the invention for just a single sale. Bowman himself disputes none of this analysis as a general matter: He forthrightly acknowledges the “well settled” principle “that the exhaustion doctrine does not extend to the right to ‘make’ a new product.” Brief for Petitioner 37 (citing Aro, 365 U. S., at 346).

Unfortunately for Bowman, that principle decides this case against him. Under the patent exhaustion doctrine, Bowman could resell the patented soybeans he purchased from the grain elevator; so too he could consume the beans himself or feed them to his animals. Monsanto, although the patent holder, would have no business interfering in those uses of Roundup Ready beans. But the exhaustion doctrine does not enable Bowman to make additional patented soybeans without Monsanto’s permission (either express or implied). And that is precisely what Bowman did. He took the soybeans he purchased home; planted them in his fields at the time he thought best; applied glyphosate to kill weeds (as well as any soy plants lacking the Roundup Ready trait); and finally harvested more (many more) beans than he started with. That is how “to ‘make’ a new product,” to use Bowman’s words, when the original product is a seed. Brief for Petitioner 37; see Webster’s Third New International Dictionary 1363 (1961) (“make” means “cause to exist, occur, or appear,” or more specifically, “plant and raise (a crop)”). Because Bowman thus reproduced Monsanto’s patented invention, the exhaustion doctrine does not protect him.[3]

Were the matter otherwise, Monsanto’s patent would provide scant benefit. After inventing the Roundup Ready trait, Monsanto would, to be sure, “receiv[e] [its] reward” for the first seeds it sells. Univis, 316 U. S., at 251. But in short order, other seed companies could reproduce the product and market it to growers, thus depriving Monsanto of its monopoly. And farmers themselves need only buy the seed once, whether from Monsanto, a competitor, or (as here) a grain elevator. The grower could multiply his initial purchase, and then multiply that new creation, ad infinitum—each time profiting from the patented seed without compensating its inventor. Bowman’s late-season plantings offer a prime illustration. After buying beans for a single harvest, Bowman saved enough seed each year to reduce or eliminate the need for additional purchases.

Monsanto still held its patent, but received no gain from Bowman’s annual production and sale of Roundup Ready soybeans. The exhaustion doctrine is limited to the “particular item” sold to avoid just such a mismatch between invention and reward.

Our holding today also follows from J. E. M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., 534 U. S. 124 (2001). We considered there whether an inventor could get a patent on a seed or plant, or only a certificate issued under the Plant Variety Protection Act (PVPA), 7 U. S. C. §2321 et seq. We decided a patent was available, rejecting the claim that the PVPA implicitly repealed the Patent Act’s coverage of seeds and plants. On our view, the two statutes established different, but not conflicting schemes: The requirements for getting a patent “are more stringent than those for obtaining a PVP certificate, and the protections afforded” by a patent are correspondingly greater.

J. E. M., 534 U. S., at 142. Most notable here, we explained that only a patent holder (not a certificate holder) could prohibit “[a] farmer who legally purchases and plants” a protected seed from saving harvested seed “for replanting.” Id., at 140; see id., at 143 (noting that the Patent Act, unlike the PVPA, contains “no exemptio[n]” for “saving seed”). That statement is inconsistent with applying exhaustion to protect conduct like Bowman’s. If a sale cut off the right to control a patented seed’s progeny, then (contrary to J. E. M.) the patentee could not prevent the buyer from saving harvested seed. Indeed, the patentee could not stop the buyer from selling such seed, which even a PVP certificate owner (who, recall, is supposed to have fewer rights) can usually accomplish. See 7 U. S. C. §§2541, 2543. Those limitations would turn upside-down the statutory scheme J. E. M. described.

Bowman principally argues that exhaustion should apply here because seeds are meant to be planted. The exhaustion doctrine, he reminds us, typically prevents a patentee from controlling the use of a patented product following an authorized sale. And in planting Roundup Ready seeds, Bowman continues, he is merely using them in the normal way farmers do. Bowman thus concludes that allowing Monsanto to interfere with that use would “creat[e] an impermissible exception to the exhaustion doctrine” for patented seeds and other “self-replicating technologies.” Brief for Petitioner 16.

But it is really Bowman who is asking for an unprecedented exception—to what he concedes is the “well settled” rule that “the exhaustion doctrine does not extend to the right to ‘make’ a new product.” See supra, at 5. Reproducing a patented article no doubt “uses” it after a fashion. But as already explained, we have always drawn the boundaries of the exhaustion doctrine to exclude that activity, so that the patentee retains an undiminished right to prohibit others from making the thing his patent protects. See, e.g., Cotton-Tie Co. v. Simmons, 106 U. S. 89, 93–94 (1882) (holding that a purchaser could not “use” the buckle from a patented cotton-bale tie to “make” a new tie). That is because, once again, if simple copying were a protected use, a patent would plummet in value after the first sale of the first item containing the invention. The undiluted patent monopoly, it might be said, would extend not for 20 years (as the Patent Act promises), but for only one transaction. And that would result in less incentive for innovation than Congress wanted. Hence our repeated insistence that exhaustion applies only to the particular item sold, and not to reproductions.

Nor do we think that rule will prevent farmers from making appropriate use of the Roundup Ready seed they buy. Bowman himself stands in a peculiarly poor position to assert such a claim. As noted earlier, the commodity soybeans he purchased were intended not for planting, but for consumption. See supra, at 2–3. Indeed, Bowman conceded in deposition testimony that he knew of no other farmer who employed beans bought from a grain elevator to grow a new crop. See App. 84a. So a non-replicating use of the commodity beans at issue here was not just available, but standard fare. And in the more ordinary case, when a farmer purchases Roundup Ready seed qua seed—that is, seed intended to grow a crop—he will be able to plant it. Monsanto, to be sure, conditions the farmer’s ability to reproduce Roundup Ready; but it does not—could not realistically—preclude all planting. No sane farmer, after all, would buy the product without some ability to grow soybeans from it. And so Monsanto, predictably enough, sells Roundup Ready seed to farmers with a license to use it to make a crop. See supra, at 2, 6, n. 3. Applying our usual rule in this context therefore will allow farmers to benefit from Roundup Ready, even as it rewards Monsanto for its innovation.

Still, Bowman has another seeds-are-special argument: that soybeans naturally “self-replicate or ‘sprout’ unless stored in a controlled manner,” and thus “it was the planted soybean, not Bowman” himself, that made replicas of Monsanto’s patented invention. Brief for Petitioner 42; see Tr. of Oral Arg. 14 (“[F]armers, when they plant seeds, they don’t exercise any control . . . over their crop” or “over the creative process”). But we think that blame-the-bean defense tough to credit. Bowman was not a passive observer of his soybeans’ multiplication; or put another way, the seeds he purchased (miraculous though they might be in other respects) did not spontaneously create eight successive soybean crops. As we have explained, supra at 2–3, Bowman devised and executed a novel way to harvest crops from Roundup Ready seeds without paying the usual premium. He purchased beans from a grain elevator anticipating that many would be Roundup Ready; applied a glyphosate-based herbicide in a way that culled any plants without the patented trait; and saved beans from the rest for the next season. He then planted those Roundup Ready beans at a chosen time; tended and treated them, including by exploiting their patented glyphosate resistance; and harvested many more seeds, which he either marketed or saved to begin the next cycle. In all this, the bean surely figured. But it was Bowman, and not the bean, who controlled the reproduction (unto the eighth generation) of Monsanto’s patented invention.

Our holding today is limited—addressing the situation before us, rather than every one involving a self replicating product. We recognize that such inventions are becoming ever more prevalent, complex, and diverse. In another case, the article’s self-replication might occur outside the purchaser’s control. Or it might be a necessary but incidental step in using the item for another purpose. Cf. 17 U. S. C. §117(a)(1) (“[I]t is not [a copyright] infringement for the owner of a copy of a computer program to make . . . another copy or adaptation of that computer program provide[d] that such a new copy or adaptation is created as an essential step in the utilization of the computer program”). We need not address here whether or how the doctrine of patent exhaustion would apply in such circumstances. In the case at hand, Bowman planted Monsanto’s patented soybeans solely to make and market replicas of them, thus depriving the company of the reward patent law provides for the sale of each article. Patent exhaustion provides no haven for that conduct. We accordingly affirm the judgment of the Court of Appeals for the Federal Circuit.




[1] Grain elevators, as indicated above, purchase grain from farmers and sell it for consumption; under federal and state law, they generally cannot package or market their grain for use as agricultural seed. See 7 U. S. C. §1571; Ind. Code §15–15–1–32 (2012). But because soybeans are themselves seeds, nothing (except, as we shall see, the law) prevented Bowman from planting, rather than consuming, the product he bought from the grain elevator.

 

[2] 2The Patent Act grants a patentee the “right to exclude others from making, using, offering for sale, or selling the invention.” 35 U. S. C. §154(a)(1); see §271(a) (“[W]hoever without authority makes, uses, offers to sell, or sells any patented invention . . . infringes the patent”).

[3] This conclusion applies however Bowman acquired Roundup Readyseed: The doctrine of patent exhaustion no more protected Bowman’sreproduction of the seed he purchased for his first crop (from a Monsantoaffiliated seed company) than the beans he bought for his second (from a grain elevator). The difference between the two purchases wasthat the first—but not the second—came with a license from Monsanto to plant the seed and then harvest and market one crop of beans. We do not here confront a case in which Monsanto (or an affiliated seed company) sold Roundup Ready to a farmer without an express license agreement. For reasons we explain below, we think that case unlikely to arise. See infra, at 9. And in the event it did, the farmer might reasonably claim that the sale came with an implied license to plantand harvest one soybean crop.

268 thoughts on “Supreme Court: Patent Rights Block Farmers from Saving and Re-Planting Patented Seeds

  1. LOL. Maybe I’m an extremist, Ned, but I agree with IBP. Massively wrong.

    The Court said that making more soybeans is infringement: “But the exhaustion doctrine does not enable Bowman to make additional patented soybeans without Monsanto’s permission (either express or implied).” Period. Lest there be any doubt about whether Bowman “made” additional soybeans, the Court described the elaborate and deliberate “making” process that he followed. The Court never suggests that intent is required, or that you had to actually use RR. Sure, something way short of what Bowman did might not be considered “making,” but that’s not the case the Court heard.

    The Court was pretty clear that the default rule is that you can’t manufacture a patented product without a license. The Court pointed out that Bowman was trying to get an exception to this default rule, and they refused to grant him that exception. The fact that the Court didn’t decide an entirely different case (e.g., with an “innocent” or “accidental” infringer) doesn’t provide any support at all for a deviation from the default rule.

  2. Ned–

    I don’t mean to be a DlCK, but we’re all big boys here and I have to put this bluntly:

    WRONG. MASSIVELY WRONG.

    “He took the soybeans he purchased home; planted them in his fields at the time he thought best; applied glyphosate to kill weeds (as well as any soy plants lacking the Roundup Ready trait); and finally harvested more (many more) beans than he started with. That is how “to ‘make’ a new product,” to use Bowman’s words, when the original product is a seed.”

    This continues to be absolutely fascinating. The lack of critical faculties displayed by certain posters on this board is greatly in evidence in this thread.

    WHERE do you guys get this stuff?

  3. Pretty sure that the grain elevators are infringers as sale and offer for sale exclusions still apply.

    Huh? As long as the grain elevator operators didn’t make more of the seeds, they’re fine. Patent rights were already exhausted with respect to the seed that was sold to the elevators by authorized “manufacturers” of the seed.

  4. Actually, even though I too called it a fertilizer, its a herbicide – it only kills and does not create more.

    Aaaaah – there’s the reason why the case resonated with the Supremes!

  5. Note that the SC allowed Bowman to resell his purchased grain elevator seed. Suppose he advertised, genuine Name that County, Indiana grain-elevator soybeans. Would Bowman be responsible if the buyers bought and used the seed for the patented purposed because everyone “knew” Name that County, Indiana soybeans were primarily of the patented variety?

    There is no “patented purpose,” Ned. There’s a patented product and a patented method.

    Could Bowman be liable for inducement under your hypothetical? Yes, of course, if he acted with the specific intent that is now required for inducement. But mere knowledge that someone might use the product to infringe is not enough.

    This is straightforward stuff. There’s nothing special here.

  6. No Leopold, you are getting confused with Ned and my great business venture involving genetic fish that we plan to use in the waters everywhere (and that, oops, are so voracious and prolific that they will (quite accidentally) replace all other fish. Anyone violating our patent rights regarding this fish will answer severely. Never mind what side effects there may be.

  7. Pretty sure that the grain elevators are infringers as sale and offer for sale exclusions still apply.

    Funny that Monsanto went after a single small time farmer and did not go after the (presumably) deeper pocket elevator conglomerates (who, btw, operate under the same final license agreement, that is, none).

  8. There will be no “repercussions” of “this case”, because it was a straightforward application of law to undisputed facts.

    So straightforward that even the CAFC was able to get it right.

    So straightforward that the USSC was unanimous.

    “Supremacy of man’s dominion over nature”, or the relative strength or control of man vs nature, has absolutely NOTHING to do with this decision or opinion.

  9. MM: “Yes. I just did so [obtained non-RR seeds] today.”

    Really; at what price?

    Farmer Malcolm to the RRrescue, LOL.

  10. Real losers?

    The bees. Mass die-offs this year and last.

    GMO seeds might not be working out so well for natural pollination.

  11. Ned–

    WRONGHEADED THINKING.

    Read the claims.

    The test for infringement is whether or not a claimed method is performed, or whether or not a claimed article, etc. is made.

    The act of planting under suitable conditions in a suitable environment, and nothing more, would cause the claimed article to be made if new cells of the appropriate type were produced. A “but-for” test is helpful here–”but for” the planting of the seeds under suitable conditions in a suitable environment, none of the claimed cells would be produced.

    The way you characterize the situation is entirely wrong–of course “planting” doesn’t infringe, the claims are not directed to a method of planting.

    You guys REALLY don’t understand this, do you?

    This is fascinating.

  12. anon, you and I were looking at the Federal Circuit decision that simple planting was and infringement. But the court here only held that planting with intent, and actually using RR on the crop to produce MORE seeds was the infringing making. To this extent, I find myself in agreement with the Supreme Court.

    But only the extremist could view this case as an endorsement of the view that innocent planting is infringement, or that planting for an different purpose than using RR was an infringement. One had to do everything, meaning that full on mens rea was required to directly infringe.

    This is a first in American history.

  13. Yes, and it is entirely possible for plants to sprout without the Bowman’s of the world doing anything beyond dropping the seeds on the ground. Anybody who doesn’t see the weirdness in this is, well, weird. I knew what the result in this case was going to be, I was just interested in seeing how the court addressed this issue. The geniuses here are gloating like schoolchildren, and I’m not really sure why. This particular outcome was never in doubt, so bragging about correctly predicting the result is, um, weird.

  14. MM, you mean, with knowledge that the seed was of the patented variety?

    I think the SC specifically reserved every question of infringement beyond the making it defined in this case, and that included deliberate planting and using RR to advantage.

  15. MM, agreed. But they never held that anything less than all the recited acts constituted “making.” Fewer acts might eventually be found infringing, but the Federal Circuit’s simple “planting-is-making” was not affirmed as far as I can see.

    The point seemed to be that Bowman was not only planting and harvesting, but he was using RR to purify the resulting crop. This made MORE of the patented seed rather than less.

  16. NS, no, he needed to do everything the SC cited to “make” and therefor to infringe. They never held that anything less than all the acts recited constituted “making.”

    They specifically limited their holding to facts of the case.

  17. Ned: a right without a remedy is no right at all.

    That’s exactly why the Supreme Court found for Monsanto in this case.

  18. a right without a remedy is no right at all.

    Exactly. That’s always been my answer to “won’t they start suing everybody who has had seed/pollen innocently blow onto their fields?” No matter how you get to “no remedy”, if there’s no remedy there’s no point in suing for infringement.

    But you didn’t ask if the specified fact pattern amounted to a “right” in some abstract philosophical sense. You asked if it counted as infringement. I answered.

  19. Hans, the SC seemed to require all of the recited acts to be “making.” There was no affirmance that I can see that simply planting without more was an infringement by making. The court carefully did not decide any case but the case before it.

  20. Making requires a lot more that just plant. At a minimum, it includes an intent to breed for the patented purpose.

    I don’t think the “patented” purpose is important, Ned (unless there’s a method patent at issue, which I assume there is not). Any non-accidental “purpose” for planting that takes advantage of the differences between the patented seed and other seeds would suffice.

  21. Ned,

    Does this run full circle (like a sidewise merry-go-round) to your comment way above implicating the impermissibility of importing intent into a question of infringement?

  22. All of this is miles away from the facts of this case, of course.

    But anon is aware of a Supreme Court case that’s right on point. I think it involves fish.

  23. If the courts allow breeding patented mice for snake food, one can bet some of those of snake food mice will be sold to the public for that purpose.

    Now, if the purchaser uses the snake food mice for the patented purpose is the “grain elevator” seller an infringer?

    Note that the SC allowed Bowman to resell his purchased grain elevator seed. Suppose he advertised, genuine Name that County, Indiana grain-elevator soybeans. Would Bowman be responsible if the buyers bought and used the seed for the patented purposed because everyone “knew” Name that County, Indiana soybeans were primarily of the patented variety?

  24. At a minimum, it includes an intent to breed for the patented purpose.

    No. I don’t agree to that at all.

    Breeding without intent could well be infringement with no damages. It could be infringement that is undiscoverable, or at least undiscovered.

    It would almost certainly be a waste of time and effort to knowingly and selectively breed a patented article only to not use it for its patented purpose, so no reasonable royalty calculation would make sense even if someone were perverse enough to do it.

    All of this is miles away from the facts of this case, of course.

    Mens Rea.

    Not mens rea. The other thing.

  25. It’s not like the chemical fertilizer itself was patented and now is in the public domain.

    Oh wait, it’s exactly like that.

  26. I’d like to know if there remains the ability to obtain and plant non-patented seeds?

    Yes. I just did so today.

  27. IANAE, I think you then agree that simple planting is not infringement, which was the intent of the post. Making requires a lot more that just plant. At a minimum, it includes an intent to breed for the patented purpose.

    Mens Rea.

  28. I’m talking about chasing the few big guys with money in their pockets.

    Okay. You’re chasing them! What are they doing that is going to put “money in your pocket”?

  29. You too need to witness a recent Supreme Court case that would indicate otherwise.

    Let me guess… it’s from sometime in the past century, definitely archived, but you’re not at liberty to say which case it is or how it “would indicate otherwise”.

  30. One buys the patented Harvard mouse and houses it in a location filled with sexually active mice.

    One doesn’t, typically. Certainly not if all you want is snake food. Think how many mice you can buy at the pet store for the price of just one Harvard mouse.

    If you happened to find one of the progeny of the escaped Harvard mouse in a pet store, and bred it for snake food without knowing what it was, you’d almost certainly have no liability for infringement. The most likely way for that to go down would be that you didn’t use any patented feature of the mouse, you would never have paid even the smallest royalty for a patented mouse, you derived no incremental benefit from its use, and Harvard wasn’t harmed in any way. No royalty, no damages, no remedy. And for that reason, no business-minded person would ever waste money suing you for infringement.

    When I recapture him, I find a few thousand more copies, progeny of the escaped mouse.

    Sounds like a clear case of exhaustion.

    Who owns the captured progeny?

    Whoever captures them, most likely. What does that have to do with patent infringement? It’s quite common for the infringer to own the infringing article.

    What can one do with the captured progeny?

    At least in the case of Roundup-Ready seeds, as long as you don’t use them for the patented purpose, neither you nor Monsanto will ever know or care whether you infringed a patent. So, I’d say anything but the patented purpose.

    simple reproduction is not infringement.

    No, but farming is much more than simple happenstance self-replication. The Supremes seem to understand that very well.

  31. Now that was actually funny.

    Of course, we both know that you will never get around to it, while your flatulence is something that you practice daily here.

  32. natural selection via the prevalence of Monsanto’s seeds and the use of Roundup

    What’s “natural” about introducing a transgenic seed and killing the old plants with a chemical herbicide?

    For that matter, why would these activities, no matter how prevalent, affect the genetic makeup of crops on land where Roundup is not being used?

    It’s not like the Roundup-Ready plants are eating the old kind and taking their land. Though it’d be funny to see the scary headlines about “killer beans”.

  33. One buys the patented Harvard mouse and houses it in a location filled with sexually active mice. Suddenly, there are a lot more Harvard mice. But I only use the one mouse for the patent purpose. I use the other as food for my snakes.

    Is there infringement under the holding of this case?

    What if the Harvard mouse makes a hole in his cage and escapes. When I recapture him, I find a few thousand more copies, progeny of the escaped mouse.

    Who owns the captured progeny? What can one do with the captured progeny? If the answer is anything but the patented purpose, then it is clear that simple reproduction is not infringement.

  34. Obviously farmer Bowman did cultivate the patented seed in this case so my question does not relate to his activities.

  35. The opposite is obviously the case Leopold – you might want to read a recent Supreme Court case wherein there was no license and the farmer lost.

    “There was no license and the farmer lost” is the opposite of “you need a license to make copies of the seeds”?

    Whatever you say, Humpty.

  36. I’d like to know if there remains the ability to obtain and plant non-patented seeds? In other words, has natural selection via the prevalence of Monsanto’s seeds and the use of Roundup left farmers with no choice but to purchase the patented seeds?

    Having a patent monopoly is one thing, introducing a patented manufacture that you know will overtake the entire market through natural forces separate & apart from the enhanced utility and/or efficiency of the patented manufacture is quite another.

  37. Princess, but I don’t read the case as saying that that is infringement. One must plant the seed, and then apply RR to take advantage of the utility, and then harvest MORE seeds. When your robot reproduces, that is not your act.

    Now, if you breed your robot, maximizing the output of new robots, I think that might be infringement.

  38. what the SC did not hold was that planting alone was a making.

    I’m not saying they did.

    “Making” seems to lie somewhere between “just farming” and “actively selecting for the patented ones”. Where exactly? If Monsanto keeps suing people as brazen and unsympathetic as Bowman, my money is on way closer to “just farming”.

  39. Dennis, the SC defined “making” as follows:

    “But the exhaustion doctrine does not enable Bowman to make additional patented soybeans without Monsanto’s permission (either express or implied). And that is precisely what Bowman did. He took the soybeans he purchased home; planted them in his fields at the time he thought best; applied glyphosate to kill weeds (as well as any soy plants lacking the Roundup Ready trait); and finally harvested more (many more) beans than he started with. That is how “to ‘make’ a new product,” to use Bowman’s words, when the original product is a seed.”

    There was no affirmance that simply planting was making.

  40. Malcolm: “Why not 10 billion? I mean, as long as your making up hypotheticals.”

    Nice strawman, but please. What I said was chase down the 100 big guys with thousands of acres under cultivation. No mention was made of your 10 billion singleton infringers.

    Google can be your friend, too, if you’d just let it. 6.9 seconds on Google found me out that it is estimated that over 90 million acres are cultivated for organic farming, with about 15 million of that being US and western Europe. Particularly in the US, the lands are owned by large corporate farmers.

    As I said, I’m talking about chasing the few big guys with money in their pockets.

    Money that could be in my pocket.

    You can chase the strawmen if you like.

  41. The Federal Circuit was actually affirmed! And unanimously! Congrats!

    Indeed. More remarkably, it was a “pro-patent” decision.

  42. Dennis,

    Planting alone is not making. This is making:

    “…Bowman …took the soybeans he purchased home; planted them in his fields at the time he thought best; applied glyphosate to kill weeds (as well as any soy plants lacking the Roundup Ready trait); and finally harvested more (many more) beans than he started with. That is how “to ‘make’ a new product,” to use Bowman’s words, when the original product is a seed. Brief for Petitioner 37; see Webster’s Third New International Dictionary 1363 (1961) (“make” means “cause to exist, occur, or appear,” or more specifically, “plant and raise (a crop)”). Because Bowman thus reproduced Monsanto’s patented invention, the exhaustion doctrine does not protect him.

    “Bowman was not a passive observer of his soybeans’ multiplication; or put another way, the seeds he purchased (miraculous though they might be in other respects) did not spontaneously create eight successive soybean crops. As we have explained, supra at 2–3, Bowman devised and executed a novel way to harvest crops from Roundup Ready seeds without paying the usual premium. He purchased beans from a grain elevator anticipating that many would be Roundup Ready; applied a glyphosate-based herbicide in a way that culled any plants without the patented trait; and saved beans from the rest for the next season. He then planted those Roundup Ready beans at a chosen time; tended and treated them, including by exploiting their patented glyphosate resistance; and harvested many more seeds, which he either marketed or saved to begin the next cycle. In all this, the bean surely figured. But it was Bowman, and not the bean, who controlled the reproduction (unto the eighth generation) of Monsanto’s patented invention.”

    “In another case, the article’s self-replication might occur outside the purchaser’s control. Or it might be a necessary but incidental step in using the item for another purpose. Cf. 17 U. S. C. §117(a)(1) (“[I]t is not [a copyright] infringement for the owner of a copy of a computer program to make . . . another copy or adaptation of that computer program provide[d] that such a new copy or adaptation is created as an essential step in the utilization of the computer program”).”

    There are two things one observes here.

    1) Exhaustion, an equitable concept, does not authorize what Bowman did.

    2) But it is also clear that simply planting by itself was not held to be infringement. He had to know the seeds were of the patented variety, deliberately plant them, and use RR to utilize the patented purpose. This is what produced more seeds, and it is that which the Supreme Court found to be infringing “making.”

    The caveat at end, while sounding in exhaustion, really is more like “fair use.” For example, assume the seeds were blown into Bowman’s field and he simply replanted his crop every year, but did not use RR on his field. Bowman would not have infringed under the Supreme Court holding regardless that he did not purchase the seed from Monsanto or its authorized vendor.

    Planting is not enough to infringe.

  43. I look at them several times a year. Yes, relevant to several.

    But not relevant to several others.

  44. No I didn’t do it. I don’t use sock puppets. I only post under NWPA or once in a while, Night Writer Patent Attorney.

  45. Well, I’m sure Monsanto will be ascared to know that one of the 15 factors weighs against getting a royalty from Mr. Organic.

    You’ll find it’s relevant to several of the factors. If you bother to look.

  46. The guy with thousands of hectares under cultivation, on the other hand?

    Or 100 of that guy?

    Why not 10 billion? I mean, as long as your making up hypotheticals. Let’s see I have an ornamental plant patent. 10 billion people are innocently infringing it.

    What happens? I mean, after the inevitable riots in the street, lootings, locust invasions, raining frogs etc. You tell me. What horror befalls society when a patentee is faced with this nightmare scenario and how does the Supreme Court possibly address it without turning law and reason on its head?

  47. (Gotta pay for that new Mercedes SOMEHOW).

    More seriously, though, I’m not sure Mr. Organic gets off free.

    Or other variations.

    Does gylphosate immunity also give at least partial resistance to other (non-gylphosate) herbicides?

  48. Sorry Malcolm, but you too, need to explain page 10.

    (sigh) add another chore to the list I will not see.

  49. explain the precedential posture of the Alice case for us Malcolm.

    I can’t right now. It’s so complicated I need to read it ten times and think about it for a couple weeks. Any attempt to summarize the case at this point would be reckless endangerment of the non-subjective underpinnings that form the foundation of our legal system, just as a dormant bean forms the foundation for future flatulence.

  50. Lourie pretty clearly has a criminal like mind. I don’t think he has any interest in doing anything but finding some way to get the result he wants. He has destroyed his life’s work.

  51. “You’re not competing economically with anybody who weeds by spraying Roundup. ”

    Uh? What has competition with other farmers to do with whether or not Monsanto is owed a royalty?

    Except as it ties in to, “You would never reasonably pay even a penny extra to have a 20% Roundup-Ready crop”.

    Well, I’m sure Monsanto will be ascared to know that one of the 15 factors weighs against getting a royalty from Mr. Organic.

  52. I would daresay that these are but examples and are not intended to be limiting as to the types of self-replicating inventions left undecided with this case.

    And nobody can predict how those cases will turn out! Just like this one. Everybody got it wrong. It’s a fool’s errand to even try! Kevin Noonan said so!

  53. the damage would be exactly the same whether or not the infringement was innocent or not.

    Yes, the damage to Monsanto would be zero in either case.

  54. He owes me a royalty – the same royalty my non-infringing customers pay.

    That’s an awesome opening position in your negotiations, but I don’t think that’s what the law says.

  55. How are you doing I competition with the non-self-replicating robot chef maker down the block who makes his product for 1/50th of what it takes you for that extra feature?

    Too clever by half.

  56. Is that so different a scenario?

    It’s a completely different scenario. And it’s not even relevant. Yes, you got damages once, because a guy infringed. Good for you. That doesn’t mean that all infringement necessarily harms the patentee (what the “LOL” was for). The vast majority of infringement doesn’t. Which is why most patentees are in court proving royalty rates instead of actual harm.

    Back to your scenario, if a guy manufactures articles for individual sale, and 20% of them infringe your patent claim, then 20% of his production hypothetically competes with your product and can be used for the patented purpose. Same as if he had one infringing product and four unrelated non-infringing in equal volumes.

    If 20% of your crop is Roundup-Ready, evenly/randomly dispersed over your land, you have absolutely no use for the patented feature of Roundup-Ready seeds. You’re not competing economically with anybody who weeds by spraying Roundup. You would never reasonably pay even a penny extra to have a 20% Roundup-Ready crop.

  57. (Snickers – is NWPA still frothing at the mouth over on the CLS thread? At one point, s/he was accusing J.Lourie of being “a criminal”)

  58. Except the strawman of weeding out by hand, the damage would be exactly the same whether or not the infringement was innocent or not.

    Strawman and red herring in one post – maybe you should patent that.

  59. IBP: “I assume that … what you mean to say is that such a grower does not apply RoundupOn”

    -You don’t have to ASSUME this because this is actually what I wrote originally.

    IBP: “what basis do you” calculate the quantum?

    (Repeating info above in reply to a similar question from IANAE)

    It’s not rocket science and it’s not that difficult.

    Survey his output genetically, and based on the survey argue that at least X percent of seeds should have been royalty bearing.

    He manufactured my patented seeds in that amount.

    He owes me a royalty – the same royalty my non-infringing customers pay.

  60. I think in the general case nobody cares about innocent infringers, including the patentees.

    Left out of this statement was any type of critical mass leading to (and actually controlling) the decision to pursue enforcement of patent rights.

  61. Stun us with your legal knowledge and explain the precedential posture of the Alice case for us Malcolm.

  62. MM – nobody cares about small time innocent infringers like your Gramma, because there’s no money to be made.

    The guy with thousands of hectares under cultivation, on the other hand?

    Or 100 of that guy?

  63. Good to see that you are in possession of the GP factors.

    You can take just as good a stab at answering your own question as can anybody else at this point.

  64. The opposite is obviously the case Leopold – you might want to read a recent Supreme Court case wherein there was no license and the farmer lost.

  65. Bad Actor–

    I assume that you are not using the adjective “organic” gratuitously in this case, and that what you mean to say is that such a grower does not apply Roundup to the crop.

    It is absolutely “appropriate”, logical, and lawful that such a party be adjudged to be infringing a patent, if that is in fact the case.

    On what basis do you think the quantum would be calculated?

    I will leave it there, I have no more time for this.

  66. I’m quite serious, IBP. One of the Georgia-Pacific factors is the amount that a willing licensee in the infringer’s position at the time the infringement began would pay for a license. Several other factors go to the value that the infringer obtained from the invention. I could be wrong, but I don’t see why the reasonable royalty for an innocent infringer who neither wanted the patented invention nor obtained any benefit from it should be the royalty that is actually paid by buyers who want it and use it.

  67. Why the LOL? It’s not rocket science and it’s not that difficult.

    Survey his output genetically, allege that at least X percent of seeds should have been royalty bearing.

    I got damages based on about 20% of one guy’s product being outside of his manufacturing specifications (the other 80 percent, being within spec, were outside the claims).

    Is that so different a scenario?

  68. In the general case, innocent infringers still pay royalties once they have been found to infringe.

    I think in the general case nobody cares about innocent infringers, including the patentees. Take plant patents for example. Gramma McFlowertree buys a patented tuberous plant at the nursery (“This is absurdly expensive but it’s so cute and besides it’s my birthday.”). A few years later she’s weeding and she notices that the plant has divided. Between the passage of time and creeping senility, she’s completed forgotten about where the plant came from. The patented tubers end up in a bag with a bunch of other non-patented tubors and are sold for ten cents each at the church sale. The minister at the church is a plant expert and, upon close examination of the one of a “demonstration” plant grown from one of the tubers, he determines that an unlawful sale of a patented plant took place at the church. Realizing the scandal that might ensue should the patent infringement become public knowledge, he quietly walks down to the rectory basement and hangs himself from a water pipe.

  69. I patented a self-replicating robot. Somebody bought one and then used it to make more self-replicating robots. Dirty guy not only made more robots, he sold them too. So I sued and won. Now I’m the only guy who gets to use my self-replicating robots to make more robots. Everybody else can still use my robots to make bread and stuff, but they can’t use my robots to make more robots. I’m glad patent law could be extended to specific uses of my robot. I wasn’t sure about it before.

  70. If I am Monsanto, then my argument is that I was pretty clearly damaged by his infringement. He grew my patented seed.

    LOL, the old “infringement inherently equals harm” thing again.

    What’s a reasonable royalty on a bag of random mixed seeds out of a grain elevator that you still have to weed by hand?

  71. Okay, let me be blunt.

    You brought up innocent infringement.

    I say that an “innocent infringer” in the general case is still liable for his patent infringement.

    What say you?

    Do you want to discuss this in any rational fashion or just play 8th grade gotcha?

  72. In the inimitable words of Malcolm Mooney….

    ….BWAHAHAHAHAHAHAHAHAHAHAHAHAHAHAHA!!!!!!!!!!

  73. The self-replication wasn’t denied, Vindicated – it just wasn’t a match for the intent and deliberation also a part of the fact pattern for this case.

    As mentioned, stay tuned.

  74. So strike the unfortunate and uncorrect preamble, “so where does this leave us”. Since as you point out, we are where we have been all along.

    Do you think it appropriate for the organic farmer growing from mixed seed (which he seems not able to avoid) to be liable for infringement?

  75. Unless you think a publicly traded for-profit company has nothing better to do with its resources than sue farmers for the evulz?

    You mean, exactly as Monsanto has already done?

  76. Give me a break. “My thoughts” on the matter are irrelevant. It is the application of the law to a particular set of facts that is important.

    You should try it sometime.

  77. Hi LB – If I am Monsanto, then my argument is that I was pretty clearly damaged by his infringement. He grew my patented seed.

    My damages should then be calculable based on that arrangement I have with everyone else (who are not infringers but rather proper licensees).

  78. Those who are desperately trying to find a silver lining for the farmer are whistling Dixie

    It’s a familiar refrain. It’s comforting.

    See, e.g., “The en banc Alice Corp opinion is meaningless!”

    Rinse. Repeat. What’s really nice is some banjo accompaniment.

  79. The “implied license” footnote reinforces that you need a license to make copies of the seeds. Under certain circumstances, a purchase from the patentee might give the buyer an implied license. There is nothing odd about that at all. That doesn’t make the licensing agreement unnecessary – to the contrary, it makes it essential in my view, to control exactly what the terms of that license are.

  80. “I’m also not sure I would characterize it as such an extreme case.”

    Innocence is the most extreme factual case possible.

    Nothing else in your comment is in any way relevant to the issue of “where this case leaves us”. It leaves us right where we started, absolutely nothing has changed.

  81. IBP – if you know something contrary to the below, please spill it.

    Here’s what I know of innocent infringement: In the general case, innocent infringers still pay royalties once they have been found to infringe.

    Do you mean that the organic farmer posited above should be required to pay a royalty to Monsanto?

    If so, fine, then I will have learned your thoughts on the matter.

    If not, then please explain how a more complete understanding of innocent infringement differs from the general case of “pay a royalty or other damages”.

  82. Or do we just rely on the patentee not to chase people who (despite infringement) are not taking any benefit of the infringement?

    If the farmer is buying third-party seed and isn’t using Roundup, what damages can the patentee reasonably hope to collect? If the patentee is operating for profit, I would rely on him not to chase people who don’t even know they’re infringing and aren’t using the novel feature.

    Unless you think a publicly traded for-profit company has nothing better to do with its resources than sue farmers for the evulz?

  83. Vindicated is correct: per the Supreme Court, buying seed meant to be consumed and using it to make new seed is not covered by exhaustion.

    If you buy something, all uses of that something are not protected.

    So with seed, wherein use = make, this Court has decided that that use is not a permitted use.

    But the point remains per page 10: anything not seed, the use = make question has not been decided today.

    Two limited examples of what has not been decided are listed. I would daresay that these are but examples and are not intended to be limiting as to the types of self-replicating inventions left undecided with this case.

  84. Thanks. Correct, and logical. And legal. On all 4′s with patent law as I’ve always understood it.

    But still a problem, at least in my opinion.

    I don’t know enough about the situation – where can one get commodity seed that’s guaranteed free of any RR beans?

    Or do we just rely on the patentee not to chase people who (despite infringement) are not taking any benefit of the infringement?

  85. Let’s assume that there is infringement in such a case. I wonder what the damages would be. What would a reasonable royalty be when one party to the hypothetical arms-length transaction has no interest in the patented feature?

  86. A complete understanding of innocent infringement is sufficient to answer all of your questions.

  87. I’m also not sure I would characterize it as such an extreme case. Organic farms exist. I worked a couple as a kid – and working organic beans is a pure PITA. They replace roundup with a bunch of teens bearing razor hooks who break their backs at $6/hr hooking out the weeds…

  88. I would keep the licensing arrangement intact. Tends to be cheaper and easier to chase a contract breacher than a patent infringer…

    You can also charge more for your patented seeds if you let the purchaser plant them. So yes, you might want to keep the licensing agreement intact.

  89. In the most extreme such case, an individual would be an innocent infringer.

    You know about that concept, right?

  90. (note by “planting”, I include growing/harvesting – I only mention this because I now see there is some upthread discussion over “plant but didn’t sprout”.)

  91. I would keep the licensing arrangement intact. Tends to be cheaper and easier to chase a contract breacher than a patent infringer…

  92. So, where does this leave us? It seems from the opinion that you can’t purchase commodity soybeans in the Midwest without there being some RR seed present.

    If this is the case, then patent law says that simply purchasing and planting commodity seed makes one guilty of patent infringement.

    Even if you happen to be an organic farmer who doesn’t use RoundUp (or other herbicidal chemicals).

    While I agree that exhaustion should not apply, I also don’t like results in cases like the organic farmer.

    Is he now required to go searching out seed that has been tested and certified not to contain any of the patented seeds?

  93. Their claims to victory amount to the following: “If the facts had been totally different, I would be completely correct.”

    In addition to being B.S., this statement is in many of the hypothetical alternate fact situations described above, wrong.

  94. So, where does that leave us? Do you think you can purchase commodity soybeans in the midwest without there being some RR seeds present?

    Bowman here by his actions clearly wanted to, and did, steal the benefit of the patented invention.

    What of the the “innocent” mentioned in my post above?

    He is guilty of patent infringement according to patent law, right? Even if he’s an organic farmer.

    Simply purchasing and planting commodity seed makes one guilty of patent infringement, so long as there are any RR seeds in the mix.

  95. the licensing agreement has been made surplusage

    I don’t see how you get that. Those who received the seeds along with the license are allowed to make and sell one generation of copies. Those who don’t are not.

    That doesn’t seem odd at all – I could do the same with my deep fryer patent if I wanted to. Buy one, make one free, as it were.

  96. What’s amazing is that everyone here is proclaiming victory. What I remember fom before is being beat up relentlessly as being naive when I made the same simple argument and reached the same simple conclusion as the SC – making a patented product without a license is infringment. Period.

  97. “What if he puts the beans in the ground but doesn’t “tend” or “treat” them? What if he does “tend” or “treat” them and they still don’t sprout (or only a portion sprout)?”

    I honestly don’t think putting them in the ground is an infringing act any more than throwing them into a landfill. And for that matter, I don’t think watching them sprout is an infringing act either. What is the infringing act, which is quite obvious from the opinion, is harvesting patented seeds without a license. Those who are desperately trying to find a silver lining for the farmer are whistling Dixie

  98. Like seeds that lay dormant, the holding here will not reach other situations.

    I just threw up in my mouth a little bit.

    Disregarding the vaguely lavender prose, would you care to elaborate on your wishy washy pronouncements? Here’s a typical situation: company develops and patents an engineered self-replicating bacterium. The bacterium can be used to remove toxic waste from certain food additives prior to the incorporation of those additives. Lunch Lady is a retired biochemist and she isolates a stray clone of the engineered bacterium from a hot dog and puts the bacterium into a test tube, whereupon the bacterium replicates itself. Can she sell the replicants or is she infringing the patent? Could she sell the replicants if she purchased the bacterium from the original company? Would the Monsanto case “not reach” to her situation because the bacterium are “not intended for consumption”?

  99. I hereby claim absolute, total, and complete victory in predicting the outcome of this case. I am amused and slightly shocked that the SC’s reasoning followed my own–what is amusing is the fact that this time, they got it right.

    It was, and still is, disappointing to me how the very basic facts of this case could be so misunderstood, and the very basic application of law have been carried out so wrongly, by many posters, and by many others with whom I have spoken.

    link to patentlyo.com

  100. “The factual peculiarities here saved Monsanto, not the arguments.”

    100% agreed. The factual particularity that won the day is that planting a patented seed and harvesting a new generation of patented seeds is patent infringement. It was when Bowman did it, and it always will be when anyone else does it. That’s a fact pattern that an infringer needs to avoid. Bowman didn’t infringe in some peculiar way. This decision leaves little room for farmers in the future to grow and make a patented seed in violation of a patent.

  101. I don’t think Kagan’s opinion is “narrow” with regard to using a patented seed without authorization. The only narrowness is that the decision is limited to seeds and does not necessarily apply to living organisms that self replicate on their own. And I don’t think Bowman’s use of Round Up mattered. What mattered is that he made more infringing seed without a license. Those who wanted patent exhaustion to apply can try and spin this anyway they want, but the 9-0 decision leaves little doublt that exhaustion does not apply to replanting patented GM seeds.

  102. “deep fryers do not spontaneously replicate.
    Instead, they spontaneously combust”

    So do humans according to the Weekly World News. And so do adamant arguments regarding the myth that seeds “self-replicate” on their own. They clearly do not (if they did, grain elevators would be soybean fields).

  103. Precisely. I think the SC was trying hard not to mock Bowman too much. He obviously set himself up as a punching bag, and they were more than happy to use him for his “intended purpose”. Thus, seeds are not special, seeds don’t just spontaneously replicate without considerable help from farmers, and a farmer who uses a patented seed without a license is not an innocent observer. The decision was 9-0, and there will be no further discussion on the patented GM seed topic for awhile (notwithstanding the hope of some in their comments below)

  104. The Supreme Court thinks the arguments made by Bowman (and at least one contestant here) to be rather silly. In apparent mockery the SC said:

    “Still, Bowman has another seeds-are-special argument: that soybeans naturally “self-replicate or ‘sprout’ unlessstored in a controlled manner,” and thus “it was the planted soybean, not Bowman” himself, that made replicas of Monsanto’s patented invention. Brief for Petitioner 42; see Tr. of Oral Arg. 14 (“[F]armers, when they plant seeds, they don’t exercise any control . . . over their crop” or “over the creative process”). But we think that blame-the-bean defense tough to credit. Bowman was not a passive observer of his soybeans’ multiplication; or put another way,the seeds he purchased (miraculous though they might bein other respects) did not spontaneously create eight successive soybean crops.

  105. This opinion seems narrow in that the genetic trait at issue is resistance to a man-made condition. Had he not used Roundup, he would have received little to no benefit from using the Roundup-ready seed. Although he still would be an infringer, it seems like the case may have come out differently under those circumstances.

  106. What if he puts the beans in the ground but doesn’t “tend” or “treat” them?

    Then he’s one strange farmer.

    What if he does “tend” or “treat” them and they still don’t sprout (or only a portion sprout)?

    What if your factory burns down before the first copy rolls off the line? There’s no liability for attempted infringement, just like there’s no defense of attempted non-infringement.

    The decision is clear as can be. If you make copies, you infringe. This isn’t exactly a very advanced concept in patent law.

  107. Predictable, but weird. What if he puts the beans in the ground but doesn’t “tend” or “treat” them? What if he does “tend” or “treat” them and they still don’t sprout (or only a portion sprout)?

  108. And therein lies an oddity: the licensing agreement has been made surplusage (a dead letter, if you will pardon the pun extension).

  109. The kicker in this case: “seeds intended for consumption

    Remove that cornerstone of logic (i.e. take into account that grain elevators actually do sell seeds for more than just consumption), and the opinion leaves very little.

    Kagan at 10 leaves the door wide open for a different fact pattern to set the law in accord for the views previously expounded upon in great length. Like seeds that lay dormant, the holding here will not reach other situations.

    Stay tuned.

  110. Beg pardon – I did not express that well at all. I should have said, “Bowman did not purchase the seed that was at issue here under the licensing agreement”.

  111. Yes, but deep fryers do not spontaneously replicate.

    True.

    Deep fryers are usually not green. Equally true, equally legally irrelevant.

    When you make copies of a patented article, you infringe the patent. That’s the law. Doesn’t matter what type of article it is, or whether the article could have made copies of itself. There’s a recent case right on point, I think.

  112. Bowman here was not a party to the licensing agreement.

    So I’d say, no, there outcome doesn’t change.

  113. Well, I feel like saying “told you so” to those who insisted that exhaustion would apply. As I argued repeatedly (and correctly), eating, grinding, cooking, and even planting a patented seed is fully within the user’s rights. However, one cannot make more seeds without running afoul of the simple rule that you cannot “make, use or sell” without a license. Since the license only applied to the seed actually purchased and not new seed one might make, this is the exact outcome I argued for and predicted.

  114. The same law applies to seed patents as to deep-fryer patents.

    Yes, but deep fryers do not spontaneously replicate.

    Instead, they spontaneously combust.

  115. “Monsanto sells, and allows other companies to sell, Roundup Ready soybean seeds to growers who assent to a special licensing agreement.”

    Is the outcome different without the special licensing agreement?

  116. Bowman has another seeds-are-special argument: that soybeans naturally “self-replicate or ‘sprout’ unless stored in a controlled manner,” and thus “it was the planted soybean, not Bowman” himself, that made replicas of Monsanto’s patented invention.

    This argument never had any legs. Consider a cormous or tuberous plant that reproduces by offsets (each one a clone of the mother plant). The plant “makes” those offsets itself. What would be the point of a plant patent or utility patent on such a plant if those offsets could be propogated and sold?

    That said, on a smaller scale nobody I know pays any attention to ornamental plant patents. “Propogation prohibited” the label on the pot says. Sure, buddy.

  117. The knowledge and intent here sunk him.

    If you mean “the fact that he went and got a known-patented product and set out to copy it sunk him”, then I agree. But what did you expect? The same law applies to seed patents as to deep-fryer patents.

    Bowman’s intent isn’t relevant to infringement, except that it thoroughly discredits the argument that “the seeds planted/grew themselves”. As the Supremes unanimously pointed out, Bowman is the least credible person who could possibly be making that argument.

  118. Score one for sanity. But gee, how are all the anti-GM food people going to respond (still waiting for the NY Times response to this decision).

  119. Ned, apart from the “make vs grow” argument, direct infringement isn’t the issue here. Rather, it is whether exhaustion applies and it looks like the court is putting the mens rea and market structure into that calculus.

  120. This is a weird case. First, it seems to principally turn on the knowledge and intent of Bowman. Hell the court goes out of it’s way to say that it’s not intending to curtail the argument when self-replication occurs outside the control of the patentee. So… evidence that the seeds would have germinated on their own might have been enough?

    Second, it seems that if “self-replication” is an intended use, then “boom goes the dynamite” (or whatever that internet meme is). Sale to a consumer of a self-replicating invention might be enough to preserve the defense. The factual peculiarities here saved Monsanto, not the arguments.

  121. Ned,

    Set your patented (and highly voracious) fish loose into the oceans of the world now. Do you need any seed money for this venture?

  122. I got this wrong.

    The “make” argument resting on the supremecy of man’s dominion over nature was stronger than I expected.

    The more interesting fallout from this of course will be its repercussions, both in and out of the bio art field.

  123. Does it matter that Bowman here was aware of and it seems purposefully took advantage of the patented features of the plant?

    Note J.Kagan’s opinion stresses its narrow breadth.

    What of the farmer who grows beans planted from commodity seed (much of it RoundupReady seed) but doesn’t use RoundUp? But year after year plants a portion of his crop?

    He’s necessarily growing a certain percentage of the patented seed, but he’s not taking advantage of the patented feature….

  124. Well, IANAE, I said it was going to turn out this way too. So, don’t pat yourself on the back too much. This was a give me.

  125. Boy, I never saw a 9-0 decision coming. I thought that for sure some would vote twice just to drive the point home, making it something like 13-0.

  126. But the exhaustion doctrine does not enable Bowman to make additional patented soybeans without Monsanto’s permission (either express or implied). And that is precisely what Bowman did.

    But it is really Bowman who is asking for an unprecedented exception—to what he concedes is the “well settled” rule that “the exhaustion doctrine does not extend to the right to ‘make’ a new product.”

    Imagine that. Who could have seen it coming?

    Oh, right, it’s what I’ve been saying all along.

    Supreme Court, you say? Unanimous? Nice.

  127. Still, Bowman has another seeds-are-special argument: that soybeans naturally “self-replicate or ‘sprout’ unless stored in a controlled manner,” and thus “it was the planted soybean, not Bowman” himself, that made replicas of Monsanto’s patented invention. Brief for Petitioner 42; see Tr. of Oral Arg. 14 (“[F]armers, when they plant seeds, they don’t exercise any control . . . over their crop” or “over the creative process”). But we think that blame-the-bean defense tough to credit. Bowman was not a passive observer of his soybeans’ multiplication; or put another way, the seeds he purchased (miraculous though they might be in other respects) did not spontaneously create eight successive soybean crops. As we have explained, supra at 2–3, Bowman devised and executed a novel way to harvest crops from Roundup Ready seeds without paying the usual premium. He purchased beans from a grain elevator anticipating that many would be Roundup Ready; applied a glyphosate-based herbicide in a way that culled any plants without the patented trait; and saved beans from the rest for the next season. He then planted those Roundup Ready beans at a chosen time; tended and treated them, including by exploiting their patented glyphosate resistance; and harvested many more seeds, which he either marketed or saved to begin the next cycle. In all this, the bean surely figured. But it was Bowman, and not the bean, who controlled the reproduction (unto the eighth generation) of Monsanto’s patented invention.

    So much for the “I didn’t do it – the seeds did” argument.

  128. And in planting RoundupReady seeds, Bowman continues, he is merely using them in the normal way farmers do. Bowman thus concludes that allowing Monsanto to interfere with that use would “creat[e] an impermissible exception to the exhaustion doctrine” for patented seeds and other “self-replicating technologies.” Brief for Petitioner 16.
    But it is really Bowman who is asking for an unprecedented exception—to what he concedes is the “well settled” rule that “the exhaustion doctrine does not extend to the right to ‘make’ a new product.” See supra, at 5. Reproducing a patented article no doubt “uses” it after a fashion. But as already explained, we have always drawn the boundaries of the exhaustion doctrine to exclude that activity, so that the patentee retains an undiminished right to prohibit others from making the thing his patent protects. See, e.g., Cotton-Tie Co. v. Simmons, 106 U. S. 89, 93–94 (1882) (holding that a purchaser could not “use” the buckle from a patented cotton-bale tie to “make” a new tie). That is because, once again, if simple copying were a protected use, a patent would plummet in value after the first sale of the first item containing the invention. The undiluted patent monopoly, it might be said, would extend not for 20 years (as the Patent Act promises), but for only one transaction. And that would result in less incentive for innovation than Congress wanted. Hence our repeated insistence that exhaustion applies only to the particular item sold, and not to reproductions.

    So much for the “seeds are made for planting” argument.

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