The U.S. Supreme Court on October 5, 2012, granted review in
Bowman v. Monsanto, Corp., a case involving patent
exhaustion. The question is whether the Federal Circuit erred by
(1) refusing to find patent exhaustion in patented seeds even after
an authorized sale and by (2) creating an exception to the doctrine
of patent exhaustion for self-replicating technologies. Bowman
v. Monsanto Corp., U.S., No. 11-796, certiorari granted
10/5/12.
The case involves the use of seeds including Monsanto's
patented Roundup Ready" herbicide-resistance trait. Bowman
purchased seeds from a local grain elevator. Monsanto Co. v.
Bowman, 657 F.3d 1341, 1345-46 (2011). The seeds sold by the
grain elevator were harvested from local fields in previous seasons
and included seeds with the Roundup Ready" trait. Id.
After purchasing the seeds, 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 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 rejected the argument that the second
generation seed was a "substantial embodiment" of the
patented seed and held that exhaustion was not available as a
defense to infringement for at least some of Bowman's
activities. Id. The Federal Circuit focused on the plants
and seed Bowman grew from the purchased seed. The court held that
the grain elevator's authorized purchase 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.
In an amicus brief, the Solicitor General agreed with the Federal
Circuit that the second generation of a self-replicating patented
invention is a "newly infringing article," and urged the
Supreme Court to deny review in this case.
Absent extension, briefs favoring Bowman are due November 26;
briefs supporting Monsanto are due December 26.
What This Means for You
The Supreme Court's decision will determine the scope of the doctrine of patent exhaustion and whether some classes of invention are entitled to a different standard thereunder
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.
