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The Seeds of Dispute: Vernon Hugh Bowman v. Monsanto Company et al.

Published online by Cambridge University Press:  20 January 2017

Emanuela Gambini
Emanuela Gambini*
Affiliation:
Catholic University of Piacenza (Italy), Law Faculty
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Abstract

In May 2013, the U.S. Supreme Court decided in Vernon Hugh Bowman v. Monsanto Company et al. in favor of Monsanto Company, affirming the judgment of the U.S. Court of Appeals for the Federal Circuit and holding that patent exhaustion does not permit a farmer to reproduce patented seeds through planting and harvesting without the patent holder's permission.

This case note gives a brief overview of the U.S. Supreme Court's decision, in which the meaning and limits of the doctrine of patent exhaustion have been examined, and discusses its implications for farmers and seed companies.

Type
Case Notes
Information
European Journal of Risk Regulation , Volume 4 , Issue 4 , December 2013 , pp. 579 - 585
Copyright
Copyright © Cambridge University Press 2013

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References

1 Supreme Court of the United States, Vernon Hugh Bowman v. Monsanto Company et al., 13 May 2013, available on the Internet at <http://www.supremecourt.gov/opinions/12pdf/11-796_c07d.pdf> (last accessed on 25 November 2013).

2 Monsanto alleges infringement of claims 1, 2, 4, 5 of the ’605 Patent. See U.S. Patent No. 5,352,605, available on the Internet at <http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO1&Sect2=HITOFF&d=PALL&p=1&u=%2Fnetahtml%2FPTO%2Fsrchnum.htm&r=1&f=G&l=50&s1=5,352,605.PN.&OS=PN/5,352,605&RS=PN/5,352,605> (last accessed on 25 November 2013).

3 Monsanto alleges infringement of 17 claims of the ‘247E Patent. See U.S. Patent No. RE39,247E, available on the Internet at <http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO1&Sect2=HITOFF&d=PALL&p=1&u=%2Fnetahtml%2FPTO%2Fsrchnum.htm&r=1&f=G&l=50&s1=RE39,247.PN.&OS=PN/RE39,247&RS=PN/RE39,247> (last accessed on 25 November 2013).

4 See United States Court of Appeals for the Federal Circuit, Monsanto Company and Monsanto Technology LLC v. Vernon Hugh Bowman, 21 September 2011, 657 F. 3d 1341, available on the Internet at <http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1068.pdf> (last accessed on 25 November 2013), at p. 4.

5 See Monsanto's Standard Form Technology Agreements, 1998–2007, J.A. 284–315.

6 United States Court of Appeals for the Federal Circuit, Monsanto Company and Monsanto Technology LLC v. Vernon Hugh Bowman, supra note 4, at p. 7.

7 Bowman purported that he “never planted progeny seeds grown from his Pioneer seeds”. See In the Supreme Court of the United States, Vernon Hugh Bowman v. Monsanto Company et al., Brief for petitioner, available on the Internet at <http://www.american-bar.org/content/dam/aba/publications/supreme_court_preview/briefs/11-796_pet.authcheckdam.pdf> (last accessed on 25 November 2013), at p. 7. See also United States Court of Appeals for the Federal Circuit, Monsanto Company and Monsanto Technology LLC v. Vernon Hugh Bowman, supra note 4, at p. 8. Monsanto did not allege patent infringement based on any of Bowman's activities related to crops grown from the Roundup Ready® soybean seeds he legitimately acquired. See note 5, In the Supreme Court of the United States, Vernon Hugh Bowman v. Monsanto Company et al., Brief for respondents, available on the Internet at <http://www.americanbar.org/content/dam/aba/publications/supreme_court_preview/briefs/11-796_pet.authcheckdam.pdf> (last accessed on 25 November 2013), at p. 5.

8 United States District Court S.D. Indiana, Monsanto Co. v. Bowman, 30 September 2009, 686 F.Supp.2d 834, at p. 836, available on the Internet at <http://www.innovationatstake.com/assets/Trial-Court-Opinion-U.S.-District-Court-Indiana-September-30-2009.pdf> (last accessed 25 November 2013).

9 United States District Court S.D. Indiana, Monsanto Co. v. Bowman, supra note 8, at p. 836.

10 United States District Court S.D. Indiana, Monsanto Co. v. Bowman, supra note 8, at pp. 836–837.

11 United States District Court S.D. Indiana, Monsanto Co. v. Bowman, supra note 8, at pp. 836–837.

12 See Scruggs, 459 F.3d, at 1336. In Scruggs, Scruggs purchased Roundup Ready® soybeans from one of Monsanto's authorized seed companies, planted and harvested them and replanted the second-generation seeds that contained the Roundup Ready® trait. Scruggs never signed and executed the Technology Agreement and used the doctrine of patent exhaustion as a defense against Monsanto. The Court held the doctrine inapplicable since “there was no unrestricted sale because the use of the seeds by seed growers was conditioned upon obtaining a license from Monsanto” (Scruggs, 459 F.3d, at p. 1334).

13 In McFarling, McFarling, a Monsanto's licensed grower, violated the terms of the Technology Agreement he signed with the company by saving 1500 bushels of Roundup Ready® soybeans from one harvest and replanting them in another growing season. He repeatedly saved seeds containing the Roundup Ready® trait, and planted them without paying Monsanto any license fee. McFarling argued, as a defense, that the conditions of Monsanto's Technology Agreement “violate[d] the doctrine of patent exhaustion”. The U.S. Court of Appeals for the Federal Circuit, however, held that “the ‘first sale’ doctrine of patent exhaustion … was not implicated, as the new seeds grown from the original batch had never been sold. The price paid by the purchaser ‘reflects only the value of the use rights conferred by the patentee’ (citing B. Braun Med., Inc., v. Abbott Labs, 124 F.3d 1419, at p. 1426, Fed. Cir. 1997)”. See McFarling, 302 F.3d, at p. 1299.

14 United States Court of Appeals for the Federal Circuit, Monsanto Company and Monsanto Technology LLC v. Vernon Hugh Bowman, supra note 4, at p. 12.

15 United States Court of Appeals for the Federal Circuit, Monsanto Co. v. Scruggs, 16 August 2006, 459 F.3d, at p. 1336.

16 See In the Supreme Court of the United States, Vernon Hugh Bowman v. Monsanto Company et al., Brief for petitioner, available on the Internet at <http://www.americanbar.org/content/dam/aba/publications/supreme_court_preview/briefs/11-796_pet.authcheckdam.pdf> (last accessed on 25 November 2013), at p. 31.

17 Adams v. Burke, 84 U.S. (17 Wall.) 453 (1873), available on the Internet at <http://supreme.justia.com/cases/federal/us/84/453/case.html> (last accessed on 25 November 2013).

18 Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617, at p. 625.

19 United States v. Univis Lens Co., 316 U.S. 241, at pp. 249–250.

20 35 U.S.C. § 154 (a) (1), available on the Internet at <http://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appxl.html#d0e303482> (last accessed on 25 November 2013).

21 35 U.S.C. § 271 (a) sets the definition of patent infringement as follows: “Whoever without authority makes, uses, offers to sell, or sells any patented invention … infringes the patent”, available on the Internet at <http://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.html#d0e303482> (last accessed on 25 November 2013).

22 United States Court of Appeals for the Federal Circuit, Monsanto Company and Monsanto Technology LLC v. Vernon Hugh Bowman, supra note 4, at p. 6.

23 In the Supreme Court of the United States, Vernon Hugh Bowman v. Monsanto Company et al., Brief for respondents, available on the Internet at <http://www.americanbar.org/content/dam/aba/publications/supreme_court_preview/briefs/11-796_pet.authcheckdam.pdf> (last accessed on 25 November 2013), at p. 15.

24 In the Supreme Court of the United States, Vernon Hugh Bowman v. Monsanto Company et al., Brief for petitioner, available on the Internet at <http://www.americanbar.org/content/dam/aba/publications/supreme_court_preview/briefs/11-796_pet.authcheckdam.pdf> (last accessed on 25 November 2013), at p. 16.

25 See Supreme Court of the United States, Vernon Hugh Bowman v. Monsanto Company et al., supra note 1, at p. 1. Emphasis added.

26 See Supreme Court of the United States, Vernon Hugh Bowman v. Monsanto Company et al., supra note 1, at p. 5.

27 See Supreme Court of the United States, Vernon Hugh Bowman v. Monsanto Company et al., supra note 1, at p. 6.

28 By 2010 Monsanto had filed 136 infringement lawsuits against 400 farmers and 53 small-farm businesses. See Centre for Food Safety, Monsanto vs. Farmers: 2010 Update (2010), available on the Internet at <http://www.centerforfoodsafety.org/files/monsanto-v-us-farmer-2010-update-v-2.pdf> (last accessed on 25 November 2013). As Bowman pointed out, “of these lawsuits, 70 ended in Judgments for Monsanto, with aggregate damages totaling $23,345,820.99”. In the Supreme Court of the United States, Vernon Hugh Bowman v. Monsanto Company et al., Brief for petitioner, available at <http://www.americanbar.org/content/dam/aba/publications/supreme_court_preview/briefs/11-796_pet.authcheckdam.pdf> (last accessed on 6 August 2013), at p. 5.

29 United States Court of Appeals for the Federal Circuit, Monsanto v. McFarling, 302 F.3d 1291 (2002).

30 United States Court of Appeals for the Federal Circuit, Monsanto v. Scruggs, 459 F.3d 1328 (2006).

31 United States Court of Appeals for the Federal Circuit, Monsanto v. David, 516 F.3d 1009 (2008).

32 Supreme Court of Canada, Percy Schmeiser and Schmeiser Enterprises Ltd. v. Monsanto Canada Inc. and Monsanto Company, 1 S.C.R. 904, 2004 SCC 34.

33 These decisions are Ex parte Hibberd, 227 USPQ 443 (Bd Pat. App. & Inter. 1985) and J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., 122 S. Ct. 593 (2001).

34 Plant Variety Protection Act is a U.S. intellectual property statute passed by the Congress in 1970 (U.S.C. 7 §§ 2321–2582), which confers “patent-like” protection to new, distinct, uniform and stable varieties of plants that reproduce sexually.

35 See Bent, Stephen A., “Protection of Plant Material under the General Patent Statute: A Sensible Policy at the PTO?”, 4 Biotechnology Law Report (1985), pp. 105 et sqq.CrossRefGoogle Scholar, at p. 105, quoted in Jack Ralph, Kloppenburg Jr., First the Seed: the Political Economy of Plant Biotechnology, 1492–2000, 2nd ed. (Madison WI: The University of Wisconsin Press, 2004), at p. 263 Google Scholar.

36 Plant Variety Protection certificates are issued to developers of new varieties of sexually reproduced seeds, transplants and plants under the Plant Variety Protection Act.

37 Jack Ralph Kloppenburg Jr., First the Seed: the Political Economy of Plant Biotechnology, 1492–2000, supra note 34, at p. 263.

38 Jack Ralph Kloppenburg Jr., First the Seed: the Political Economy of Plant Biotechnology, 1492–2000, supra note 34, at p. 263.

39 Jack Ralph Kloppenburg Jr., First the Seed: the Political Economy of Plant Biotechnology, 1492–2000, supra note 34, at p. 265.

40 See J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc. 122 S. Ct. 593 (2001).

41 See Supreme Court of the United States, Vernon Hugh Bowman v. Monsanto Company et al. , supra note 1, at p. 7.

42 United States District Court S.D. Indiana, Monsanto Co. v. Bowman, supra note 8, at p. 837.

43 See United States District Court S.D. Indiana, Monsanto Co. v. Bowman, supra note 8, at p. 837: “Monsanto should be required to include with its license to plant Roundup Ready® seed a requirement that the resulting crop be segregated from non-Roundup Ready® crops going forward, so that commodity soybean planting is not eliminated as an option for farmers”. Emphasis added.

44 In the Supreme Court of the United States, Vernon Hugh Bowman v. Monsanto Company et al., Reply Brief, available on the Internet at <http://www.americanbar.org/content/dam/aba/publications/supreme_court_preview/briefs/11-796_pet.authcheckdam.pdf> (last accessed on 25 November 2013), at p. 14.

45 See United States Court of Appeals for the Federal Circuit, Organic Seed Growers and Trade Association, et al. v. Monsanto Company and Monsanto Technology LLC, 10 June 2013, available on the Internet at <http://docs.justia.com/cases/federal/appellate-courts/cafc/12-1298/12-1298-2013-06-10.pdf> (last accessed on 25 November 2013).

46 United States Court of Appeals for the Federal Circuit, Organic Seed Growers and Trade Association, et al. v. Monsanto Company and Monsanto Technology LLC, supra note 45, at p. 7.

47 United States Court of Appeals for the Federal Circuit, Organic Seed Growers and Trade Association, et al. v. Monsanto Company and Monsanto Technology LLC, supra note 45, at p. 7.

48 United States Court of Appeals for the Federal Circuit, Organic Seed Growers and Trade Association, et al. v. Monsanto Company and Monsanto Technology LLC, supra note 45, at pp. 7–8.