Jump to content

Bowman v. Monsanto Co.: Difference between revisions

From Wikipedia, the free encyclopedia
Browse history interactively
← Previous editNext edit →
Content deleted Content added
VisualWikitext
rmv in use
Line 76: Line 76:
The decision was reported nationally and internationally by various news sources including the ''[[Washington Post]]'',<ref>{{cite news | url=http://www.washingtonpost.com/politics/supreme-court-rules-for-monsanto-in-genetically-modified-soybean-case/2013/05/13/c84d7710-bbdb-11e2-97d4-a479289a31f9_story.html | title=Supreme Court rules for Monsanto, says farmer violated genetically modified soybeans’ patent | publisher=Washington Post | accessdate=May 14, 2013 | first=Robert | last=Barnes | date=May 13, 2013}}</ref> Bloomberg,<ref>{{cite news | title=Monsanto Wins Seed Case as High Court Backs Patent Rights | url=http://www.bloomberg.com/news/2013-05-13/monsanto-wins-seed-case-as-u-s-high-court-backs-patent-rights.html |last=Stohr |first=Greg |date=May 13, 2013 | publisher=Bloomberg | accessdate=May 13, 2013}}</ref> the ''[[Los Angeles Times]]'',<ref>{{cite news | url=http://www.latimes.com/news/politics/la-pn-supreme-court-monsanto-seed-patenting-20130513,0,6469544.story | title=Supreme Court rules in favor of Monsanto in seed-patenting case | publisher=Los Angeles Times | accessdate=May 13, 2013 | first=David G. | last=Savage | date=May 13, 2013}}</ref> ''[[The Guardian]]'',<ref>{{cite news | url=http://www.guardian.co.uk/environment/2013/may/13/supreme-court-monsanto-indiana-soybean-seeds | title=Supreme Court rules for Monsanto in Indiana farmer's GM seeds case | publisher=Guardian | accessdate=May 13, 2013 | location=London | first=Suzanne | last=Goldenberg | date=May 13, 2013}}</ref> and France24.<ref>{{cite web | url=http://www.france24.com/en/20130513-us-supreme-court-finds-monsanto-seed-patent-battle | title=US Supreme Court finds for Monsanto in seed patent battle | publisher=France24 | accessdate=May 13, 2013}}{{dead link|date=February 2015}}</ref>
The decision was reported nationally and internationally by various news sources including the ''[[Washington Post]]'',<ref>{{cite news | url=http://www.washingtonpost.com/politics/supreme-court-rules-for-monsanto-in-genetically-modified-soybean-case/2013/05/13/c84d7710-bbdb-11e2-97d4-a479289a31f9_story.html | title=Supreme Court rules for Monsanto, says farmer violated genetically modified soybeans’ patent | publisher=Washington Post | accessdate=May 14, 2013 | first=Robert | last=Barnes | date=May 13, 2013}}</ref> Bloomberg,<ref>{{cite news | title=Monsanto Wins Seed Case as High Court Backs Patent Rights | url=http://www.bloomberg.com/news/2013-05-13/monsanto-wins-seed-case-as-u-s-high-court-backs-patent-rights.html |last=Stohr |first=Greg |date=May 13, 2013 | publisher=Bloomberg | accessdate=May 13, 2013}}</ref> the ''[[Los Angeles Times]]'',<ref>{{cite news | url=http://www.latimes.com/news/politics/la-pn-supreme-court-monsanto-seed-patenting-20130513,0,6469544.story | title=Supreme Court rules in favor of Monsanto in seed-patenting case | publisher=Los Angeles Times | accessdate=May 13, 2013 | first=David G. | last=Savage | date=May 13, 2013}}</ref> ''[[The Guardian]]'',<ref>{{cite news | url=http://www.guardian.co.uk/environment/2013/may/13/supreme-court-monsanto-indiana-soybean-seeds | title=Supreme Court rules for Monsanto in Indiana farmer's GM seeds case | publisher=Guardian | accessdate=May 13, 2013 | location=London | first=Suzanne | last=Goldenberg | date=May 13, 2013}}</ref> and France24.<ref>{{cite web | url=http://www.france24.com/en/20130513-us-supreme-court-finds-monsanto-seed-patent-battle | title=US Supreme Court finds for Monsanto in seed patent battle | publisher=France24 | accessdate=May 13, 2013}}{{dead link|date=February 2015}}</ref>


A co-author of an amicus brief on behalf of Bowman filed by the [[American Antitrust Institute]] expressed relief that the loss was on a narrow basis rather than providing a broad affirmation of the lack of patent exhaustion for self-replicating technologies.<ref>Ghosh, Shubha, [http://patentlyo.com/patent/2013/05/guest-post-monopoly-without-apology.html ''Monopoly Without Apology''], in Patently-O (May 21, 2013)</ref> Another academic commentator, [[Richard H. Stern]], did not take issue with the Court's refusal to shelter Bowman's conduct under the exhaustion doctrine, but criticized the Court's classification of the act of planting seeds and growing crops from them as an act of "making" a new patented article<ref>[[Richard H. Stern|Stern, Richard H.]], [http://docs.law.gwu.edu/facweb/claw/Bowman.pdf ''Bowman v Monsanto'': ''Exhaustion versus Making''], [2014] Eur. Intell. Prop. Rev. 255, 260-61. He argued that, because Congress has not addressed the issue whether planting and growing a crop from harvested seeds constituted a "making" of a patented product, the Court should have left it to Congress to make the decision as to whether replanting patented seed should consitute infringement</ref> His position was agreed with by Kevin Rodkey, who stated earlier that the seeds were used for planting, and the patent would be exhausted at that point as to subsequent generations without any action on the part of the farmer.<ref>{{cite journal|last1=Rodkey|first1=Kevin|title=Exhaustion and Validity of Single-Use Licenses for Transgenic Seeds in the Wake of Quanta v. LG Electronics|journal=Federal Circuit Bar Journal|date=2010|volume=19|pages=579-616|accessdate=June 21, 2015}}</ref>{{rp|600-603}}<ref name="Lim"> Daryl Lim, [http://www.cardozoaelj.com/wp-content/uploads/2011/02/Lim-galleyed-FINAL.pdf Self-Replicating Technologies and the Challenge for the Patent and Antitrust Laws], 32 Cardozo Arts & Ent. L.J. 196 (2013-2014)</ref> However, the Court's use of "making" is consistent with past US cases, UK case law, and Canadian case law.<ref name="Lim" />{{rp|171-175}}
A co-author of an amicus brief on behalf of Bowman filed by the [[American Antitrust Institute]] expressed relief that the loss was on a narrow basis rather than providing a broad affirmation of the lack of patent exhaustion for self-replicating technologies.<ref>Ghosh, Shubha, [http://patentlyo.com/patent/2013/05/guest-post-monopoly-without-apology.html ''Monopoly Without Apology''], in Patently-O (May 21, 2013)</ref> Another academic commentator, [[Richard H. Stern]], did not take issue with the Court's refusal to shelter Bowman's conduct under the exhaustion doctrine, but criticized the Court's classification of the act of planting seeds and growing crops from them as an act of "making" a new patented article<ref>[[Richard H. Stern|Stern, Richard H.]], [http://docs.law.gwu.edu/facweb/claw/Bowman.pdf ''Bowman v Monsanto'': ''Exhaustion versus Making''], [2014] Eur. Intell. Prop. Rev. 255, 260-61. He argued that, because Congress has not addressed the issue whether planting and growing a crop from harvested seeds constituted a "making" of a patented product, the Court should have left it to Congress to make the decision as to whether replanting patented seed should consitute infringement</ref> His position was agreed with by Kevin Rodkey, who stated earlier that the seeds were used for planting, and the patent would be exhausted at that point as to subsequent generations without any action on the part of the farmer.<ref>{{cite journal|last1=Rodkey|first1=Kevin|title=Exhaustion and Validity of Single-Use Licenses for Transgenic Seeds in the Wake of Quanta v. LG Electronics|journal=Federal Circuit Bar Journal|date=2010|volume=19|pages=579-616|accessdate=June 21, 2015}}</ref>{{rp|600-603}}<ref name="Lim">{{cite journal|last1=Lim|first1=Daryl|title=Self-Replicating Technologies and the Challenge for the Patent and Antitrust Laws|journal=Cardozo Arts & Entertainment Law Journal|date=2013-2014|volume=32|page=196|accessdate=June 21, 2015}}</ref> However, the Court's use of "making" is consistent with past US cases, UK case law, and Canadian case law.<ref name="Lim" />{{rp|171-175}}


==References==
==References==

Revision as of 01:10, 22 June 2015

Bowman v. Monsanto Co.
Supreme Court of the United States
Argued Feb. 19, 2013
Decided Mar. 19, 2013
Full case nameVernon Hugh Bowman v. Monsanto Company, et al.
Docket no.11-796
Citations569 U.S. ___ (more)
133 S. Ct. 1761, 185 L. Ed. 2d 931
Holding
Patent exhaustion does not permit a farmer to reproduce patented seeds through planting and harvesting without the patent holder's permission.
Court membership
Chief Justice
John Roberts
Associate Justices
Antonin Scalia · Anthony Kennedy
Clarence Thomas · Ruth Bader Ginsburg
Stephen Breyer · Samuel Alito
Sonia Sotomayor · Elena Kagan
Case opinion
MajorityKagan, joined by a unanimous court
Laws applied
35 U.S.C. § 271(a)

Bowman v. Monsanto Co., 569 U.S. ___ (2013) is a United States Supreme Court patent decision in which the Court unanimously affirmed the Federal Circuit, and held that the patent exhaustion doctrine does not permit a farmer to plant and grow saved, patented seeds without the patent owner's permission. The decision held that Bowman's conduct infringed the patent rights of the patent owner, Monsanto.

The case garnered attention in part of its potential impact on genetic and self-replicating technologies, political concerns over the passage of a unrelated bill drafted in part by Monsanto, and the involvement of Justice Clarence Thomas, who previously served as a lawyer for Monsanto. The narrow scope of the ruling limited the impact of the case and did not set a broad legal precedent.

Background

rows of soybeans
Genetically modified soybeans being grown side-by-side
See also: Genetically modified crops, Monsanto, and Monsanto legal cases

Monsanto developed patents for genetically modified soybeans that were resistant to glyphosate-based herbicides. These soybeans were sold under a limited use license that prohibited the farmer-buyer from using the seeds for more than a single season or from saving any seed produced from the crop for replanting.[1]

In 1999, Indiana farmer Vernon Hugh Bowman bought soybean seeds from a local grain elevator for his second crop of the season. He then saved seeds from his second crop to replant additional crops in later years.[1][2] Bowman purchased these seeds from the same elevator where he and neighbors sold their crops, many of which were transgenic,[2] and the elevator sold soybeans as commodities, not as seeds for planting.[2][3][4] He tested the new seeds, and found that as he had expected, some were transgenic and thus were resistant to glyphosate[2] He replanted seeds from the original second harvest in subsequent years for his second seasonal planting, supplementing them with more soybeans he bought at the elevator.[3] He informed Monsanto of his activities.[2][3]

Monsanto stated that he was infringing their patents because the soybeans he bought from the elevator were new products that he purchased for use as seeds without a license from Monsanto; Bowman stated that he had not infringed due to patent exhaustion on the first sale of seed to whatever farmers had produced the crops that he bought from the elevator, on the grounds that for seed, all future generations are embodied in the first generation that was originally sold.[4]

Bowman had previously purchased and planted Monsanto seeds under a license agreement promising not to save seeds from the resulting crop,[2] but that agreement was not relevant to his purchase of soybean seed from the grain elevator nor to the litigation.[5]

In 2007, Monsanto sued Bowman for patent infringement in the United States District Court for the Southern District of Indiana.[1][3]

Lower court rulings

Monsanto moved for summary judgment. Bowman argued that if Monsanto was allowed to continue it's license past exhaustion, it would be able to dominate the market.[1] Although the district court found Bowman's arguments compelling, it found that it was bound by previous appellate court decisions in Monsanto Co. v. Scruggs[6] and Monsanto Co. v. McFarling[7] to control, and in 2009, the district court ruled in favor of Monsanto.[1] The court held that since the original farmers could not use the later generation seeds without a license, they could not make an unrestricted sale and therefore the patent rights were not exhausted.[1] The court entered judgment for Monsanto in the amount of $84,456.30 and enjoined Bowman from making, using, selling or offering to sell any of the seeds from Monsanto's patent.[1]

Bowman then appealed the decision to the Federal Circuit Court.[1] Bowman argued that the Monsanto license agreement allowed the sale of second-generation soybeans to both grain elevators and subsequent buyers and that this caused the patent rights to be exhausted per the Quanta Computer, Inc. v. LG Electronics, Inc.[8] decision.[1] Monsanto argued that the license agreement specifically prohibited the use of second-generation seeds for planting.[1] The Federal Circuit upheld the verdict.[1][3]

Petition to the Supreme Court

Bowman then sought review in the Supreme Court, which granted certiorari.[1][9]

Bowman's petition

Bowman argued that the Federal Circuit's decision conflicted with existing Supreme Court precedent on patent exhaustion.[1] Bowman said that United States v. Univis Lens Co.[10] showed that patent exhaustion applied even when the patent holder created post-sale restrictions.[1] He claimed that the Federal Circuit had created a judicial exception to patent exhaustion for Monsanto, allowing it to dominate the soybean seed market.[1] Finally, Bowman argued that he was not "making" infringing new seeds merely by planting and reaping crops.[1]

Monstanto's reply

Monsanto argued that the Federal Circuit's decision was correct, that Bowman had created a new product that infringed on their patent.[1] They further argued that this was not an appropriate case to hear, as the decision was not decided on patent exhaustion via a conditional sale.[1] The Supreme Court requested the United States to brief the Court and the Solicitor General filed a brief generally in support of the Monstanto position.[1] The United States asked the Court to deny certiorari.[1]

Other issues

The case received attention in the months leading up to the decision. Justice Clarence Thomas had served as a lawyer for the Monsanto Company 34 years earlier.[11] As the case was being heard, the Farmer Assurance Provision (also known as Monsanto Protection Act by critics) was signed into law by President Obama after garnering more than 250,000 signatures to oppose it.[12][13] Another concern was how the doctrine of patent exhaustion for self-replicating technologies will be viewed by the court.[14]

Supreme Court

photo of Elena Kagan wearing judicial robes
Justice Kagan, author of the opinion

Arguments

Bowman was represented by Mark P. Walters of Frommer, Lawrence, & Haug, LLP.[1] Walters argued that the authorized sale of the seeds extinguished the patent, and that Bowman merely used seeds legitimately purchased from the silo.[1] He claimed that the Federal Circuit had created an exception to the exhaustion doctrine, and that this decision was properly for Congress to decide.[1]

Seth P. Waxman, a former Solicitor General, represented Monsanto and argued that the second-generation seeds were not subject to exhaustion because they had not exist until Bowman created them and had not been sold at the time of infringement.[1] He noted that even when exhaustion applied, it did not allow one to create new copies of the patented product, which the second-generation seeds were.[1]

Opinion of the Court

Justice Elena Kagan delivered the opinion of the Court. She stated that while an authorized sale of a patented item terminates all patent rights to that item, that exhaustion does not permit a farmer to reproduce patented seeds through planting and harvesting without the patent holder's permission.[1][5] For the farmer to plant a harvested and saved seed, to grow a further soybean crop, constituted an unauthorized "making" of the patented product, in violation of section 271(a) of the patent code.[1][15]

The Supreme Court unanimously affirmed the judgment of the Federal Circuit on May 13, 2013.[1][5][16]

Subsequent developments

The decision was reported nationally and internationally by various news sources including the Washington Post,[17] Bloomberg,[18] the Los Angeles Times,[19] The Guardian,[20] and France24.[21]

A co-author of an amicus brief on behalf of Bowman filed by the American Antitrust Institute expressed relief that the loss was on a narrow basis rather than providing a broad affirmation of the lack of patent exhaustion for self-replicating technologies.[22] Another academic commentator, Richard H. Stern, did not take issue with the Court's refusal to shelter Bowman's conduct under the exhaustion doctrine, but criticized the Court's classification of the act of planting seeds and growing crops from them as an act of "making" a new patented article[23] His position was agreed with by Kevin Rodkey, who stated earlier that the seeds were used for planting, and the patent would be exhausted at that point as to subsequent generations without any action on the part of the farmer.[24]: 600–603 [25] However, the Court's use of "making" is consistent with past US cases, UK case law, and Canadian case law.[25]: 171–175 

References

  1. ^ a b c d e f g h i j k l m n o p q r s t u v w x y z aa ab Practical Law Intellectual Property & Technology (2015). "In Dispute: Bowman v. Monsanto". Westlaw. Thomson Reuters. {{cite web}}: |access-date= requires |url= (help); Missing or empty |url= (help)
  2. ^ a b c d e f Liptak, Adam (February 19, 2013). "Supreme Court appears to defend patent on soybean". The New York Times. Retrieved May 14, 2013.
  3. ^ a b c d e Monsanto Co. v. Bowman, 657 F.3d 1341 (Fed. Cir. 2011).
  4. ^ a b "Monsanto Co. v. Bowman (Fed. Cir. 2011)". Patent Docs. September 22, 2011.
  5. ^ a b c Bowman v. Monsanto Co., No. 11-796, 569 U.S. __ (2013).
  6. ^ Monsanto Co. v. Scruggs, 459 F.3d 1328 (Fed. Cir. 2006).
  7. ^ Monsanto Co. v. McFarling, 302 F.3d 1291 (Fed. Cir. 2002).
  8. ^ Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008).
  9. ^ Denniston, Lyle (October 5, 2012). "Court grants seven new cases (Updated)". SCOTUSblog.
  10. ^ United States v. Univis Lens Co., 316 U.S. 241 (1942).
  11. ^ "Monsanto wins landmark patent case in Supreme Court". RT.com. May 13, 2013. Retrieved May 14, 2013.
  12. ^ "'Monsanto Protection Act' slips silently through US Congress". RT.com. March 26, 2013. Retrieved May 14, 2013.
  13. ^ "Obama signs 'Monsanto Protection Act' written by Monsanto-sponsored senator". RT.com. March 28, 2013. Retrieved May 14, 2013.
  14. ^ Dalla Valle, Mark A. (May 9, 2013). "Replication without Human Intervention: Lessons from Monsanto v. Bowman". The National Law Review. Retrieved May 14, 2013.
  15. ^ 35 U.S.C. § 271(a). Section 271(a) gives the owner of a patent the exclusive right to make products that the patent covers.
  16. ^ Liptak, Adam (May 13, 2013). "Monsanto Wins Case on Genetically Altered Soybeans". The New York Times.
  17. ^ Barnes, Robert (May 13, 2013). "Supreme Court rules for Monsanto, says farmer violated genetically modified soybeans' patent". Washington Post. Retrieved May 14, 2013.
  18. ^ Stohr, Greg (May 13, 2013). "Monsanto Wins Seed Case as High Court Backs Patent Rights". Bloomberg. Retrieved May 13, 2013.
  19. ^ Savage, David G. (May 13, 2013). "Supreme Court rules in favor of Monsanto in seed-patenting case". Los Angeles Times. Retrieved May 13, 2013.
  20. ^ Goldenberg, Suzanne (May 13, 2013). "Supreme Court rules for Monsanto in Indiana farmer's GM seeds case". London: Guardian. Retrieved May 13, 2013.
  21. ^ "US Supreme Court finds for Monsanto in seed patent battle". France24. Retrieved May 13, 2013.[dead link]
  22. ^ Ghosh, Shubha, Monopoly Without Apology, in Patently-O (May 21, 2013)
  23. ^ Stern, Richard H., Bowman v Monsanto: Exhaustion versus Making, [2014] Eur. Intell. Prop. Rev. 255, 260-61. He argued that, because Congress has not addressed the issue whether planting and growing a crop from harvested seeds constituted a "making" of a patented product, the Court should have left it to Congress to make the decision as to whether replanting patented seed should consitute infringement
  24. ^ Rodkey, Kevin (2010). "Exhaustion and Validity of Single-Use Licenses for Transgenic Seeds in the Wake of Quanta v. LG Electronics". Federal Circuit Bar Journal. 19: 579–616. {{cite journal}}: |access-date= requires |url= (help)
  25. ^ a b Lim, Daryl (2013–2014). "Self-Replicating Technologies and the Challenge for the Patent and Antitrust Laws". Cardozo Arts & Entertainment Law Journal. 32: 196. {{cite journal}}: |access-date= requires |url= (help)CS1 maint: date format (link)
Retrieved from "https://en.wikipedia.org/w/index.php?title=Bowman_v._Monsanto_Co.&oldid=668028000"