A few weeks ago, a 75-year-old farmer from Indiana who was sued for using the progeny of patented soy beans found himself before the Supreme Court.  Vernon Bowman originally represented himself against seed giant Monsanto when he was sued by the company four years ago.  By the time he reached the Supreme Court late last month, he was represented by a big law firm donating its time.

The issue was whether Bowman infringed on Monsanto’s patent when he planted the offspring of the company’s Roundup Ready soybeans.  Bowman argued that these second-generation seeds were not covered by Monsanto’s patent because the doctrine of patent exhaustion, a doctrine that limits the extent to which patent holders can control the use of a patented product after an authorized sale, allowed him to do what he liked with products he obtained legally.

Monsanto expressed concern that a single acre of soybeans could produce enough seeds to plant 26 acres the next year. If a ruling allowed farmers like Bowman to save seeds from one year to plant the next, Monsanto argued it would “devastate innovation in biotechnology.” Monsanto said it spends roughly $1.5 billion a year on research and development and would not be able to recoup those costs if patent law does not cover seed progeny.

A district court in Indiana sided with Monsanto and awarded over $84,456.  The Court of Appeals for the Federal Circuit affirmed, saying that by planting the second-generation seeds, Mr. Bowman had created newly infringing articles. The Supreme Court agreed to hear the case, to the surprise of the biotechnology industry – Hans Sauer, deputy general counsel of the Biotechnology Industry Organization said, “We thought this question was long decided.”

The key question before the Supreme Court was whether the doctrine of patent exhaustion applied to seeds and self-replicating technologies.  At a lopsided oral argument, Bowman’s lawyer was bombarded with critical questions from almost every justice while Monsanto’s lawyer was allowed to talk uninterrupted for long stretches.  One commentator suggested that Bowman’s lawyer had a bad day and that it appeared that the Court was looking for a way to dispose of the case in the most elegant way possible, to avoid a broad ruling that would have expansive economic effects.  At one point, Chief Justice Roberts asked, “Why in the world would anybody spend any money to try to improve the seed if as soon as they sold the first one anybody could grow more and have as many of those seeds as they want?”

Given the skepticism the Court seemed to express toward Bowman’s case, it seems likely his chances of winning are slim.   Nevertheless, one must wonder why the Court agreed to hear the case in the first place.  Did the Court feel something merely needed clarification?   Or was it was planning on announcing a groundbreaking decision about patent rights and self-replicating technologies?   We’ll have to wait and see.

Michael Joshi

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3 Responses to A Farmer Climbs Soybean Stalk to the Supreme Court

  1. Danielle Barav says:

    This is sure to be a very interesting case on a number of levels. I am very interested to see the impact of this decision, as well. Regardless of the outcome of this case, Monsanto may find it in its interest to introduce a gene in their seeds that will prevent the plant from reproducing. This “suicide gene” or “terminator gene” may have grave implications, though. Genes from GMOs may cross with genes from un-modified plants. While scientists doubt that this gene would end up wiping out all wild plants, the effects of introducing this gene into plant populations are unknown. I wonder if this possibility may be in the back of any Justice’s mind when deciding the case.

  2. Kendall Short says:

    As someone with quite a few soybean farmers in her family, I find this case particularly intriguing. It seems most modern farmers now take it for granted that they’ll be signing licensing agreements that prohibit them from saving beans from one year’s crops for planting the next. Bowman is interesting because he apparently bought his initial beans not from Monsanto directly but from a grain elevator, in a supposedly intentional attempt to circumvent such licensing restrictions, painting him as not quite the innocent David against Goliath figure he’s portraying himself as. If he doesn’t want the restrictions, then he should be satisfied with regular beans that don’t have the herbicide resistance of the Roundup Ready variety.

  3. Zachary Loney says:

    One of the questions that both the Federal Circuit and the District Court left largely unanswered was how the Supreme Court’s recent ruling in Quanta Computer v. LG Electronics would affect the patents in self-replicating technologies. This case is the most recent in a long line of Monsanto seed cases, but it is the first one to be litigated post-Quanta.

    Quanta Computer involved method patents regarding the interactions between computer components. LG licensed the right to use the method to Intel and allowed Intel to sell the components it manufactured so long as they were not combined with any non-Intel parts. Third parties components were specifically denied a license to use the method patents. Quanta went ahead and combined its parts with Intel’s.

    The Federal Circuit found for LG for reasons including the fact that method patents, by their nature, could not be exhausted.

    The Supreme Court disagreed with such a carve-out from the exhaustion doctrine. The Court held that the sale of articles that substantially embody the invention and have no reasonable use other than to practice the patent would trigger exhaustion. In Quanta, the computer parts had no other use than to interact with each other to form a computing system and thus patent exhaustion applied.

    The question in Bowman v. Monsanto was whether the seeds substantially embodied their progeny and whether their only reasonable use was to be planted.

    The Federal Circuit largely ignored this question, finding instead (as Michael mentions) that the planting of the seeds created new articles separate from the first. The court went on to state that the soybeans had alternative uses as seed which would halt the application of Quanta.

    The question is two-fold:
    (1) If a biotechnology is designed to replicate (and thereby practice the patent) does Quanta apply? and
    (2) If Quanta does apply, does it apply differently to bio-technologies that have alternative uses (like soybeans) and those that may not (such as cotton seeds)?