On April 2, 2012, the U.S. Supreme Court invited the Solicitor
General to file a brief expressing the government's views in a
case involving patent exhaustion, Bowman v. Monsanto Co.,
No. 11-796 (April 2, 2012). The Supreme Court's decision on
certiorari will come after hearing from the Solicitor General, but
the invitation increases the chance that the Court will grant
review.
The case involves the use of soybean seeds including Monsanto's
patented Roundup Ready" herbicide-resistance trait. Over the
course of several growing seasons, Vernon Bowman, a farmer in
Indiana, purchased soybean seeds from a local grain elevator.
Monsanto Co. v. Bowman, 657 F.3d 1341, 1345-46 (2011). The
seeds sold by grain elevators are harvested from local fields in
previous seasons, and because Roundup Ready" soybeans are
widely planted, a large number of the seeds Bowman purchased
included the Monsanto's Roundup Ready" trait. Id.
After purchasing the seeds each season, Bowman planted them,
sprayed his fields with herbicide to ensure the surviving plants
included the Roundup Ready" trait and saved some of the
resulting seed for planting again. Id.
Monsanto typically sells its seed under limited-use license
agreements that restrict growers from replanting seeds produced
from the purchased seed. During the appeal, Monsanto acknowledged,
however, that its licensed growers were authorized to sell
harvested seed to grain elevators (for use "as feed or
otherwise as a commodity") and that those grain elevators
were, in turn, authorized to sell the seed without a
restriction on replanting. Id. at 1345.
Monsanto prevailed on summary judgment of infringement at the
district court. On appeal, Bowman argued that the authorized sale
by the grain elevator triggered patent exhaustion and that
subsequent generations of seed could also be used, because the
purchased seed "substantially embodies" later
generations. Id. at 1348.
The Federal Circuit held that exhaustion was not available as a
defense to infringement for at least some of Bowman's
activities. Id. The Federal Circuit passed on the question
of whether the grain elevator's sale triggered exhaustion for
the seed purchased by Bowman and instead focused on the
plants and seed Bowman grew from that purchased seed. The
court held that the grain elevator's authorized sales did not
exhaust Monsanto's rights in subsequent generations of plants
and seeds that Bowman made from the purchased seed. "The fact
that a patented technology can replicate itself does not give a
purchaser the right to use replicated copies of the
technology." Id.
Monsanto has also prevailed in several previous cases involving
planting of second-generation seed. See, e.g., Monsanto Co. v.
Scruggs, 459 F.3d 1328 (Fed. Cir. 2006), Monsanto Co. v.
McFarling, 302 F.3d 1291 (Fed. Cir. 2002). However, in each of
those cases, unlike here, there was no "authorized sale,"
which would typically trigger exhaustion under the Supreme
Court's decision in Quanta Computer, Inc. v. LG
Electronics, Inc., 553 U.S. 617 (2008). None of those cases
have been heard by the Supreme Court.
What This Means for You
With the invitation from the Supreme Court in this case, the
Solicitor General will now file a brief expressing the
government's view whether the Supreme Court should grant
certiorari. The Solicitor General's response is not expected to
be filed in time for a decision on certiorari to be made before the
Court's summer recess, but it will likely be filed in time for
the Court to hear argument during the next term if review is
granted. The Supreme Court generally only asks for input from the
government in cases that are serious candidates for certiorari, and
as a statistical matter, the likelihood of review is significantly
higher in cases in which the Court has made such an invitation,
even if the Solicitor General recommends against review.
Consequently, the invitation indicates an increased chance that the
Bowman case will be heard by the Supreme Court.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
