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Bowman v. Monsanto Co.
Supreme Court of the United States
Argued Feb. 19, 2013 Decided Mar. 19, 2013
Full case name	Vernon Hugh Bowman v. Monsanto Company, et al.
Docket no.	11-796
Citations	569 U.S. ___ (more)133 S. Ct. 1761, 185 L. Ed. 2d 931
Holding
Patent exhaustion does not permit a farmer to reproduce patented seeds through planting and harvesting without the patent holder's permission.
Court membership
Chief Justice John Roberts Associate Justices Antonin Scalia · Anthony Kennedy Clarence Thomas · Ruth Bader Ginsburg Stephen Breyer · Samuel Alito Sonia Sotomayor · Elena Kagan
Case opinion
Majority	Kagan, joined by a unanimous court
Laws applied
35 U.S.C. § 271(a)

Bowman v. Monsanto Co., 569 U.S. ___ (2013) is a United States Supreme Court patent decision in which the Court unanimously affirmed the Federal Circuit, and held that the patent exhaustion doctrine does not permit a farmer to plant and grow saved, patented seeds without the patent owner's permission. The decision held that Bowman's conduct infringed the patent rights of the patent owner, Monsanto.

The case garnered attention in part of its potential impact on genetic and self-replicating technologies, political concerns over the passage of an unrelated bill drafted in part by Monsanto, and the involvement of Justice Clarence Thomas, who previously served as a lawyer for Monsanto. The narrow scope of the ruling limited the impact of the case and did not set a broad legal precedent.

Background

Monsanto developed patents for genetically modified soybeans that were resistant to glyphosate-based herbicides. These soybeans were sold under a limited use license that prohibited the farmer-buyer from using the seeds for more than a single season or from saving any seed produced from the crop for replanting.

In 1999, Indiana farmer Vernon Hugh Bowman bought soybean seeds from a local grain elevator for his second crop of the season. He then saved seeds from his second crop to replant additional crops in later years. Bowman purchased these seeds from the same elevator where he and neighbors sold their crops, many of which were transgenic, and the elevator sold soybeans as commodities, not as seeds for planting. He tested the new seeds, and found that as he had expected, some were transgenic and thus were resistant to glyphosate He replanted seeds from the original second harvest in subsequent years for his second seasonal planting, supplementing them with more soybeans he bought at the elevator. He informed Monsanto of his activities.

Monsanto stated that he was infringing their patents because the soybeans he bought from the elevator were new products that he purchased for use as seeds without a license from Monsanto; Bowman stated that he had not infringed due to patent exhaustion on the first sale of seed to whatever farmers had produced the crops that he bought from the elevator, on the grounds that for seed, all future generations are embodied in the first generation that was originally sold.

Bowman had previously purchased and planted Monsanto seeds under a license agreement promising not to save seeds from the resulting crop, but that agreement was not relevant to his purchase of soybean seed from the grain elevator nor to the litigation.

In 2007, Monsanto sued Bowman for patent infringement in the United States District Court for the Southern District of Indiana.

Lower court rulings

Monsanto moved for summary judgment. Bowman argued that if Monsanto was allowed to continue its license past exhaustion, it would be able to dominate the market. Although the district court found Bowman's arguments compelling, it found that it was bound by previous appellate court decisions in Monsanto Co. v. Scruggs and Monsanto Co. v. McFarling to control, and in 2009, the district court ruled in favor of Monsanto. The court held that since the original farmers could not use the later generation seeds without a license, they could not make an unrestricted sale and therefore the patent rights were not exhausted. The court entered judgment for Monsanto in the amount of $84,456.30 and enjoined Bowman from making, using, selling or offering to sell any of the seeds from Monsanto's patent.

Bowman then appealed the decision to the Federal Circuit Court. Bowman argued that the Monsanto license agreement allowed the sale of second-generation soybeans to both grain elevators and subsequent buyers and that this caused the patent rights to be exhausted per the Quanta Computer, Inc. v. LG Electronics, Inc. decision. Monsanto argued that the license agreement specifically prohibited the use of second-generation seeds for planting. The Federal Circuit upheld the verdict.

Petition to the Supreme Court

Bowman then sought review in the Supreme Court, which granted certiorari.

Bowman's petition

Bowman argued that the Federal Circuit's decision conflicted with existing Supreme Court precedent on patent exhaustion. Bowman said that United States v. Univis Lens Co. showed that patent exhaustion applied even when the patent holder created post-sale restrictions. He claimed that the Federal Circuit had created a judicial exception to patent exhaustion for Monsanto, allowing it to dominate the soybean seed market. Finally, Bowman argued that he was not "making" infringing new seeds merely by planting and reaping crops.

Monstanto's reply

Monsanto argued that the Federal Circuit's decision was correct, that Bowman had created a new product that infringed on their patent. They further argued that this was not an appropriate case to hear, as the decision was not decided on patent exhaustion via a conditional sale. The Supreme Court requested the United States to brief the Court and the Solicitor General filed a brief generally in support of the Monstanto position. The United States asked the Court to deny certiorari.

Other issues

The case received attention in the months leading up to the decision. Justice Clarence Thomas had served as a lawyer for the Monsanto Company 34 years earlier. As the case was being heard, the Farmer Assurance Provision (also known as Monsanto Protection Act by critics) was signed into law by President Obama after garnering more than 250,000 signatures to oppose it. Another concern was how the doctrine of patent exhaustion for self-replicating technologies will be viewed by the court.

Supreme Court

Arguments

Bowman was represented by Mark P. Walters of Frommer, Lawrence, & Haug, LLP. Walters argued that the authorized sale of the seeds extinguished the patent, and that Bowman merely used seeds legitimately purchased from the silo. He claimed that the Federal Circuit had created an exception to the exhaustion doctrine, and that this decision was properly for Congress to decide.

Seth P. Waxman, a former Solicitor General, represented Monsanto and argued that the second-generation seeds were not subject to exhaustion because they had not exist until Bowman created them and had not been sold at the time of infringement. He noted that even when exhaustion applied, it did not allow one to create new copies of the patented product, which the second-generation seeds were.

Opinion of the Court

Justice Elena Kagan delivered the opinion of the Court. She stated that while an authorized sale of a patented item terminates all patent rights to that item, that exhaustion does not permit a farmer to reproduce patented seeds through planting and harvesting without the patent holder's permission. For the farmer to plant a harvested and saved seed, to grow a further soybean crop, constituted an unauthorized "making" of the patented product, in violation of section 271(a) of the patent code. Kagan stated that Bowman could resell the patented seeds he obtained from the elevator, or use them as feed, but that he could not produce additional seeds.

The Supreme Court unanimously affirmed the judgment of the Federal Circuit on May 13, 2013.

Subsequent developments

A co-author of an amicus brief on behalf of Bowman filed by the American Antitrust Institute expressed relief that the loss was on a narrow basis rather than providing a broad affirmation of the lack of patent exhaustion for self-replicating technologies. Another academic commentator, Richard H. Stern, did not take issue with the Court's refusal to shelter Bowman's conduct under the exhaustion doctrine, but criticized the Court's classification of the act of planting seeds and growing crops from them as an act of "making" a new patented article Ronald Mann writing in SCOTUSblog noted: "The tenor of the Court came through most clearly when the Court ridiculed what it called Bowman’s 'blame-the-bean defense' – the argument that Bowman did not make new seeds, because it was the seeds themselves that replicated." Kevin Rodkey argued that an analysis under Quanta Computer leads to the conclusion that patent rights covering self-replicating seeds are exhausted on the first authorized sale, including subsequent generations, and that seed companies can only exclude subsequent replantings with carefully written license restrictions.

Rochelle C. Dreyfus is reported to have criticized the decision, noting that Bowman was attempting to obtain the benefit of the genetic modifications, while others, such as organic growers, fear being sued for inadvertent cross-contamination. A case bringing up this issue, Organic Seed Growers & Trade Ass'n v. Monsanto Co. was dismissed for lack of a controversy.

References

1. ^ Brougher, Joanna T. (2013). Intellectual Property and Health Technologies: Balancing Innovation and the Public's Health. Springer Science & Business Media. ISBN 9781461482024.
2. ^ Practical Law Intellectual Property & Technology (2015). "In Dispute: Bowman v. Monsanto". Westlaw. Thomson Reuters. {{cite web}}: |access-date= requires |url= (help); Missing or empty |url= (help)
3. ^ Liptak, Adam (February 19, 2013). "Supreme Court appears to defend patent on soybean". The New York Times. Retrieved May 14, 2013.
4. ^ Monsanto Co. v. Bowman, 657 F.3d 1341 (Fed. Cir. 2011).
5. ^ "Monsanto Co. v. Bowman (Fed. Cir. 2011)". Patent Docs. September 22, 2011.
6. ^ Bowman v. Monsanto Co., No. 11-796, 569 U.S. __ (2013).
7. Monsanto Co. v. Scruggs, 459 F.3d 1328 (Fed. Cir. 2006).
8. Monsanto Co. v. McFarling, 302 F.3d 1291 (Fed. Cir. 2002).
9. Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008).
10. Denniston, Lyle (October 5, 2012). "Court grants seven new cases (Updated)". SCOTUSblog.
11. United States v. Univis Lens Co., 316 U.S. 241 (1942).
12. "Monsanto wins landmark patent case in Supreme Court". RT.com. May 13, 2013. Retrieved May 14, 2013.
13. "'Monsanto Protection Act' slips silently through US Congress". RT.com. March 26, 2013. Retrieved May 14, 2013.
14. "Obama signs 'Monsanto Protection Act' written by Monsanto-sponsored senator". RT.com. March 28, 2013. Retrieved May 14, 2013.
15. Dalla Valle, Mark A. (May 9, 2013). "Replication without Human Intervention: Lessons from Monsanto v. Bowman". The National Law Review. Retrieved May 14, 2013.
16. 35 U.S.C. § 271(a). Section 271(a) gives the owner of a patent the exclusive right to make products that the patent covers.
17. Liptak, Adam (May 13, 2013). "Monsanto Wins Case on Genetically Altered Soybeans". The New York Times.
18. Ghosh, Shubha (May 21, 2015). "Monopoly without apology". Patently-O. Retrieved June 21, 2015.
19. Stern, Richard H., Bowman v Monsanto: Exhaustion versus Making, Eur. Intell. Prop. Rev. 255, 260-61. He argued that, because Congress has not addressed the issue whether planting and growing a crop from harvested seeds constituted a "making" of a patented product, the Court should have left it to Congress to make the decision as to whether replanting patented seed should constitute infringement
20. Mann, Ronald (May 14, 2013). "Opinion recap: Justices firmly validate patent rights to genetically modified seeds". SCOTUSBlog. Retrieved June 21, 2015.
21. Rodkey, Kevin (2010). "Exhaustion and Validity of Single-Use Licenses for Transgenic Seeds in the Wake of Quanta v. LG Electronics". Federal Circuit Bar Journal. 19: 579–616. {{cite journal}}: |access-date= requires |url= (help)
22. Okediji, Ruth L.; Bagley, Margo A., eds. (2014). Patent Law in Global Perspective. Oxford University Press. pp. 172–173. ISBN 9780199334278.
23. Organic Seed Growers & Trade Ass'n v. Monsanto Co., 3183 F.3d 1350 (Fed. Cir. 2013).
24. "Organic Seed Growers & Trade Ass'n v. Monsanto Co. (Fed. Cir. 2013)". Patent Docs. July 4, 2011.
25. Crouch, Dennis (June 10, 2013). "Monsanto Wins Again in Federal Circuit: Organic Farmers Have No Standing to Challenge Patent". Patently-O. Retrieved June 21, 2015.

• United States patent case law
• United States Supreme Court cases
• Monsanto litigation
• 2013 in United States case law
• United States Supreme Court cases of the Roberts Court