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Planting Progeny Seeds Without Consent is Patent Infringement


Written by CropLife International
Posted: February 18, 2013 @ 8:25 am
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On January 23, 2013, CropLife International (CLI) filed an amicus brief in the U.S. Supreme Court in Bowman v. Monsanto (no. 11-796), supporting the view that the authorized sale of a patented seed does not extinguish the patentee’s right with regard to the use of next generation of seeds for planting.  Therefore persons who plant progeny seeds, without the consent of the patentee, and, in turn, produce a next-generation of seeds are liable for engaging in an unauthorized making under 35 U.S.C. §271(a).

Background

Monsanto has developed and patented a genetically-modified soybean that bears the trait of resistance to the herbicidal compound glyphosate.  Seeds bearing such herbicide resistance are sold by Monsanto and its licensees under the trade name Roundup Ready®.  By virtue of that trait, a farmer can plant the patented soybean, and treat a resulting crop with a glyphosate-based herbicide, such as Roundup®, so as to selectively kill off any undesired weeds that have infested the crop, without damaging the crop itself.

Bowman, a farmer from Indiana, chose not to buy the patented seeds from Monsanto or a licensed seed dealer.  Instead, he purchased commodity soybeans from a grain elevator, with the aim of using the beans for planting.  Commodity soybeans are a heterogeneous mixture of soybeans collected from farms in a given region and are principally used as feed and for making food products.  Suspecting that some proportion of the commodity soybeans he purchased were progeny of the herbicide-resistant soybeans first introduced into the market by Monsanto and its licensees, Bowman planted the same, treated the field with a glyphosate-based herbicide, and successfully grew herbicide-resistant soybean plants bearing a next-generation of herbicide-resistant soybeans.  Monsanto sued Bowman, asserting that the production of a next-generation of herbicide-resistant soybeans from the commodity beans constituted an unauthorized making of Monsanto’s patented soybean under 35 U.S.C. §271(a).

The Question Presented

The case raises the basic question of whether the doctrine of patent exhaustion should reach activities such as those engaged in by Bowman and insulate from liability those who engage in producing a next-generation of seed.  The doctrine of patent exhaustion is generally understood as holding that once a patented item is sold in an authorized fashion, the patentee relinquishes the right to claim that any subsequent use of the same infringes on its patent estate.  This case is unique in that it asks whether this doctrine should apply when the patented item sold, here as seed, is capable of being propagated and the use of its progeny, e.g., for planting, necessarily implicates a “making” of a next-generation of that item.

The Arguments before The Supreme Court

The Federal Circuit affirmed the district court’s judgment, finding Bowman liable for patent infringement.  That appellate court held that the doctrine of patent exhaustion does not and should not reach the acts of making in which Bowman engaged; otherwise, the rights conferred by Monsanto’s patents would be “eviscerated.”

Among the issues raised on appeal, Bowman and the amici supporting him deny that he engaged in a making, asserting that the herbicide-resistant soybean plants derived from the commodity soybeans sown by Bowman actually engaged in such acts.

In its amicus brief, CLI responds by arguing that the term “makes,” as used in Section 271(a), has its plain and ordinary meaning, which embraces the concepts of “bringing about” or “causing.”  CLI contends that Bowman, through his acts of planting and cultivating, brought about and caused the formation of a next-generation of herbicide-resistant soybeans.  Alternatively, CLI argues that, even if the concept of a “making” only literally reaches the acts of the herbicide-resistant soybean plants Bowman cultivated, Bowman would still be liable for those acts under principles of agency-instrumentality law.  Based on his acts of planting and cultivating, CLI asserts that Bowman exercised sufficient control over the herbicide-resistant soybean plants he raised that they should be treated as mere instrumentalities of his, the conduct of which can and should be attributed to him.

Were acts like Bowman’s beyond a patent’s reach, CLI cautions that patentees would face diminished incentives to develop and bring to market valuable agricultural innovations, which require long term and significant financial resources.  To develop and bring these innovations to market, the plant science industry must be able to receive a return on its investments.  Seed sales, therefore, provide an important means for  fueling the industry’s cycles of innovation.

Over the past 15 years, innovative plant biotechnology products have been estimated to translate into more than $78.4 billion in economic benefits for farmers around the world.  Deeming acts like those Bowman engaged in as beyond the reach of a patent not only threatens these economic gains, but also society’s ability to feed, fuel and clothe our ever-growing population and to develop green-technologies that will help reduce the environmental foot-print associated with traditional farming practices.

Although this case focuses on seed technology, the ruling in the case could potentially impact the rights patentees and consumers can enjoy in any “self-replicating” technology that is patented and made available to the market.

About CLI

CLI is a global federation representing the plant science industry and a network of regional and national associations in 91 countries.  Monsanto is a corporate member of this federation but was recused from participating in the preparation of CLI’s brief.

CLI is represented in this matter by Jennifer Gordon, Scott Familant and Evan Young, of Baker Botts LLP.


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Posted in: Biotechnology, Guest Contributors, IP News, IPWatchdog.com Articles, Patent Litigation, Patents, US Supreme Court

5 comments
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  1. This reads very much like wanting to have your cake and eat it.

    Lets take the basic facts:
    “Commodity soybeans are a heterogeneous mixture of soybeans collected from farms in a given region and are principally used as feed and for making food products.”
    The use of the word ‘principally’ does not rule out use a seed for planting.

    The only ways GM soybeans can find their way into commodity grain evelators are:
    1. A farmer legitimately sells GM soybeans to the evelator.
    2. A farmer legitimately sells soybeans that have for various reasons been contaminated by GM soybeans (eg. grown in a field that previously had had GM soybeans grown in it or grown ‘near’ to a field of GM soybeans).
    3. Accidential or deliberate mislabelling of GM soybeans.
    It is notable that CropLife does not give its position on what circumstances and under what terms farmers can sell GM seed to commodity elevators, particularly as this is a feature of the Bowman v. Monsanto case.

    “Therefore persons who plant progeny seeds, without the consent of the patentee, and, in turn, produce a next-generation of seeds are liable for engaging in an unauthorized making under 35 U.S.C.”

    So a farmer purchasing commodity soybeans and who plants them may be engaging in an unauthorised activity, even though there may be no conditions of usage placed on the soybeans purchased from a commodity grain elevator. Whilst some might say that normally companies wouldn’t seek legal redress from farmers planting commodity seed that doesn’t actually change the situation, the farmer is still engaging in an unauthorised activity. The only way for a farm not to engage in an unauthorised activity when using commodity grain (for planting) is to get the consent of ALL patentee’s who’s seed may have been used in a given region – namely all variants approved for usage in a given country. Obviously the alternatives are either the members of the CLI come up with some way of removing the GM contaminated grain from commodity grain elevators or commodity grain elevators stop selling grain for planting, forcing farmers to always purchase grain from the CLI members cartel…

    I suggest the fact that GM seed is present in the commodity grain elevators is sufficient evidence that the CLI members have not been doing sufficient to safeguard their patents/IP and hence have forfeited any rights such patents may have granted them.

  2. Apparently the informal transcript is out and oral arguments did not go very well for Bowman:

    http://www.supremecourt.gov/oral_arguments/argument_transcripts/11-796.pdf

  3. I’m surprised as far as I can see the issue is a simple contractual one.

    Monsanto haven’t alleged that Bowman or any other farmer has breeched their technology agreement – Bowman by saving seed he has grown and replanted and A.N.Other by selling seed to a commodity grain elevator. Similarly Monsanto hasn’t claimed that any commodity grain elevator has breeched any law in it’s selling of seed. Hence it seems to be an accepted fact (by Monsanto) that Bowman legally purchased grain from a commodity grain elevator and planted it. Also it seems to be accepted (by Monsanto) that a farmer (such as Bowman) was legally entitled to keep seed produced from his crop of commodity seed and plant it the following session.

    Monsanto seem to be upset that Bowman has taken advantage of their business strategy for his benefit and not theirs. Why do I say Monsanto’s business strategy? Because it is the only explanation that can explain the clause in the technology agreement that allows growers/farmers unrestricted sale to commodity grain elevators with the Federal Court explicitly noting “Before this court, Monsanto has twice eschewed any reading of the Technology Agreement to prohibit unrestricted seed sales to grain elevators as a commodity.” ie. Monsanto relinquishes their rights over such seed.

    Hence Monsanto knew exactly what they were doing when they permitted unrestricted seed sales to grain elevators as a commodity, ie. it was their deliberate intent to allow their seed to contaminate seed from other sources and effectively permitting it to be released “into the wild”. What also supports this viewpoint is just how long Bowman has been planting commodity seed with Monsanto’s knowledge and Monsanto haven’t seemed to have changed their technology agreement to close the loophole and hence taken action to remove glyphosate resistant seed from commodity grain elevators.

    What is really interesting is that as early as 1999 (when Bowman first started his planting practise), there was sufficient commodity seeds exhibiting glyphosate resistance for Bowman to continue his planting practise (ie. it was commercially viable). Hence due to what forms commodity seed I would suggest that today probably the majority of commodity soybean seed in Bowman’s region is glyphosate resistant.

    So Monsanto by their own company policy has created a situation where a grower no longer really needs to buy seed from Monsanto, as there is sufficient glyphosate resistant seed “in the wild” for a grower to get a commercially viable crop.

  4. Bowman’s counsel was poorly prepared to discuss the make/buy distinction.

  5. Everyone-

    I just posted my summary of the case and oral argument at:

    http://www.ipwatchdog.com/2013/02/20/argument-summary-supreme-court-hears-bowman-v-monsanto/id=35787/

    Enjoy.

    -Gene

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