United States: Patent Exhaustion And Self-Replicating Technologies: What Might The Supreme Court Say?

Last Updated: April 13 2012
Article by Matthew A. Chivvis, Rachel Krevans and Michael R. Ward

In Bowman v. Monsanto, the Supreme Court recently requested the views of the Solicitor General on whether to grant certiorari. The question presented has two issues, one narrow and one broad: "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?" While the first issue could directly affect the practices of major seed producers worldwide, the second has the potential to impact the entire biotechnology industry.


Patented seed technologies are in part responsible for the vast increase in U.S. farm productivity over the past several decades.1 Indeed, the majority of all corn, soybean, and cotton produced in the U.S. these days was grown from seed developed as the result of either scientific breeding methods, genetic engineering, or both.2 The seed industry is now worth more than $25 billion worldwide.3 Major seed companies include Pioneer Hi-Bred (a subsidiary of DuPont), Monsanto, and Syngenta among others.

The Bowman case involves a seed-purchasing customer's use of a transgenic "Roundup Ready®" seed variety first invented and developed by Monsanto.4 Monsanto's Roundup Ready® technology includes seeds for growing corn, soybeans, and other crops that exhibit resistance to an herbicide known as glyphosate.5 Glyphosate is rated "least dangerous" compared to other herbicides and pesticides because it does not bioaccumulate and breaks down readily in the environment.6 Thus, it had long been a goal in crop science research to develop crop varieties with glyphosate resistance. Monsanto achieved this in soybeans by using the cauliflower mosaic virus (a virus capable of infecting plants) to create a vector for incorporating chimeric genes into soybean germplasm.7 The chimeric genes were derived in part from a strain of Argobacterium that exhibited glyphosate resistance. Transgenic plants expressing the chimeric genes are also resistant to glyphosate, which allows farmers growing the transgenic plants to use less herbicide, as the glyphosate specifically targets the non-transgenic weeds.

Vernan H. Bowman is an Indiana soybean grower who signed a technology agreement allowing him to purchase "Roundup Ready®" soybean seeds8 from Pioneer Hi-Bred, an authorized seed producer of Monsanto's and a seed developer in its own right.9 Mr. Bowman planted seeds purchased pursuant to the technology agreement from 1999-2007 as his first yearly planting. While the technology agreement forbade saving seeds for use in replanting, it did allow the unrestricted sale of harvested soybeans (i.e., the seeds) as a commodity to grain elevators. In fact, 94% of soybeans sold into commodity markets in Indiana in 2007 used Monsanto's Roundup Ready® technology. Starting in 1999, Mr. Bowman — in addition to the seeds he purchased from Pioneer Hi-Bred for his first yearly planting — also began purchasing commodity soybean seeds from a grain elevator for a second yearly planting. He found that these seeds showed the same herbicide resistance as Roundup Ready® soybean seeds, and began saving these seeds for subsequent second plantings.10 Mr. Bowman was candid with Monsanto about his purchase and use of commodity soybean seeds. Monsanto investigated and found that the unlicensed seeds Mr. Bowman was using for his second plantings contained Monsanto's patented technology. It then sued for patent infringement. The district court granted summary judgment of infringement for Monsanto, awarding $84,456.20 in damages.11


On appeal, Mr. Bowman's principal argument was that, under the Supreme Court's decision in Quanta v. LGE, patent exhaustion applies to the authorized sale of seeds into commodity markets and any downstream product of purchases from those markets that "substantially embodies" the same characteristics (e.g., plants and seeds grown from the commodity seeds).12 In Quanta, the Supreme Court held that authorized sales of computer chips substantially embodying LGE's patented technology exhausted its right to sue for infringement as to products (e.g., computers) that incorporated those same chips.13

Monsanto took the position that its technology agreement explicitly did not permit either the saving of harvested soybean seeds or the sale of those seeds for planting purposes. Additionally, Monsanto argued that Mr. Bowman was liable for infringement by planting commodity seeds because patent protection is independently applicable to each generation of soybeans (or any other crop) that "contains the patented trait."14 The Federal Circuit affirmed, noting that "[a]pplying the first sale doctrine to subsequent generations of self-replicating technology would eviscerate the rights of the patent holder."15 Thus, the Court found that "[e]ven if Monsanto's patent rights in the commodity seeds are exhausted, such a conclusion would be of no consequence because once a grower, like Bowman, plants the commodity seeds containing Monsanto's Roundup Ready® technology and the next generation of seed develops, the grower has created a newly infringing article" to which the patent exhaustion doctrine does not apply.16


The Supreme Court's decision to invite the views of the Solicitor General on Mr. Bowman's petition for certiorari suggests that it has taken an interest in the case. In McFarling v. Monsanto, the petitioner requested that the Supreme Court review similar but distinct issues concerning unlawful extension of the patent monopoly. There, the Solicitor General suggested that "the novel question whether (and, if so, to what extent) the patent-exhaustion doctrine applies to restrictions on the use of a materially identical patented product that was produced by the patented product sold by the patentee" was not yet ready for review because "it would be beneficial to have a fully considered resolution of that question in the lower courts."17 After receiving the views of the Solicitor General, the Supreme Court denied review. Mr. Bowman argues in his petition that now there has been a fully considered resolution of patent exhaustion in this context, and the Federal Circuit has misapplied the law.18

If certiorari is granted, it could have implications for more than just the seed industry. Indeed, when the Federal Circuit referred to "self-replicating" technologies in the Bowman opinion, it did not limit its finding to seeds. Thus, the opinion does more than just strengthen protection for transgenic plants. The biotechnology industry is replete with examples of self-replicating technologies, including novel DNA sequences, virus strains, microorganisms, and cell lines. Even the oil-eating bacteria that were the subject of the Supreme Court's seminal decision in Diamond v. Chakrabarty19 — and that are now commonly sold through retail channels — were "self replicating." If the Supreme Court reverses the Federal Circuit on the question of whether there is "an exception to the doctrine of patent exhaustion for self-replicating technologies," then competitors and consumers may be able to avoid patent infringement by growing, or otherwise duplicating a patented article from as little as a single sample purchased in the stream of commerce. Though the implications for the patented seed industry are fairly obvious as the Federal Circuit made clear in Bowman,20 any change in the law could affect other industries as well. Accordingly, clients with novel self-replicating technologies that are (or could be) subject to commercial sales will want to work closely with counsel to protect their business investments, in case the Supreme Court expands the scope of patent exhaustion with respect to these kinds of inventions.


1 USDA: The Seed Industry in U.S. Agriculture / AIB-786.

2 Id.

3 Id.

4 Monsanto Co. v. Bowman, 657 F.3d 1341, 1343 (Fed. Cir. 2011).

5 See id.

6 EPA R.E.D. Facts: Glyphosate / EPA-738-F-93-011.

7 Monsanto, 657 F.3d at 1343-44.

8 Soybean seeds are the "beans" from the soybean plant. Thus, like corn, the commodity end-product of farm production can be used to grow subsequent harvests, though yields may decrease due to lack of hybrid vigor for certain varieties.

9 Monsanto, 657 F.3d at 1345.

10 Id. at 1346.

11 Id.

12 Id. (citing Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008)).

13 Quanta, 553 U.S. at 633-34.

14 Monsanto, 657 F.3d at 1347.

15 Id. at 1348.

16 Id.

17 McFarling v. Monsanto, No. 04-31, Brief of the United States as Amicus Curiae at 14 n.8 (U.S. 2005).

18 Bowman v. Monsanto, No. 11-796, Petition for Writ of Certiorari (U.S. 2011).

19 Diamond v. Chakrabarty, 447 U. S. 303 (1980).

20 Monsanto, 657 F.3d at 1348.

Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Morrison & Foerster LLP. All rights reserved

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Waller Lansden Dortch & Davis
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Waller Lansden Dortch & Davis
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions