In an amicus brief filed in support of respondents Monsanto Co. et al. late last week, the Intellectual Property Owners Association (IPO) urges the Supreme Court to find that the petitioner's replanting of commodity seed was an infringing act that constituted a reconstruction of Monsanto’s patented recombinant seed.  The IPO contends that "[a]ny other decision would unnecessarily impede progress in the agricultural biotechnology field, with deleterious consequences for developing technologies to address the need for increasing food production and reducing hunger, in the U.S. and globally."

The case arose as the result of a farmer (Mr. Bowman) replanting Monsanto's patented Roundup Ready® seed.  Mr. Bowman had purchased the seed from one of Monsanto's licensed seed producers, with the sale being subject to a Technology Agreement that permitted Mr. Bowman to, inter alia, "use the seed containing Monsanto gene technologies for planting a commercial crop only in a single season" and "not save any crop produced from this seed for replanting, or supply saved seed to anyone for replanting."  While Mr. Bowman complied with these provisions with respect to a first planting, Mr. Bowman used cheaper "commodity seed" (i.e., seed obtained from local grain elevators) in a second planting.  After planting the commodity seed, Mr. Bowman tested the second crop for Roundup® resistance, and found that substantial amounts of the seed were resistant.  He then used Roundup® on these plantings and replanted this seed.  The District Court granted summary judgment of patent infringement and entered judgment against Mr. Bowman, and the Federal Circuit affirmed.

Writing in support of Monsanto, the IPO asserts that "the Federal Circuit correctly found that the doctrine of patent exhaustion does not absolve Mr. Bowman from infringement."  The brief notes that "[w]hile patent exhaustion would have prevented Monsanto from restricting the distribution or use of [the] original seeds [that were the subject of an authorized sale by Monsanto], those original seeds were completely consumed (as intended) in the growing of the first crop."  Mr. Bowman instead used commodity seeds, which were not the subject of an authorized sale by the patentee, and which the IPO brief contends "constitute an entirely new manufacture and, as such, are not subject to the doctrine of patent exhaustion under this Court’s jurisprudence."

Arguing that "Monsanto's rights to its patented seed are infringed by Mr. Bowman's replanting, which is not merely a use but a complete remaking of new seeds," the brief contends that Mr. Bowman’s actions can be distinguished from the noninfringing use of Intel chipsets in Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008), after the patent rights in those chipsets were exhausted by sale.  In particular, the brief states that in the instant case, "there was no authorized, unrestricted sale by Monsanto of the seed used by Mr. Bowman that would exhaust patentee's patent rights," adding that "[t]he original, authorized seed sold by Monsanto was consumed in the first planting," and further, that "[t]he commodity seed purchased by Mr. Bowman was neither made by nor sold by Monsanto."

The IPO brief also argues that the lack of patent exhaustion in the instant case is consistent with the Supreme Court's precedent concerning repair and replacement.  In particular, the brief states that "Mr. Bowman’s replanting of commodity seed was no mere 'repair' of the patented article," noting that "the original seed sold by Monsanto had performed its use and had been consumed in the very first planting."  The brief contends that "Mr. Bowman reconstructed the crop by replanting the commodity seed (thereby creating a third generation of seed capable of reconstructing a third crop), and it was this act that constituted an infringing reconstruction of Monsanto's patented seed."

The IPO further argues that the Supreme Court would not be creating a special exemption for patented seed by upholding Monsanto’s patent rights, as argued by Mr. Bowman.  The brief notes, for example, that "infringement liability based on copying patented technology is not unique to seeds, but is a property shared with other technologies, including computer software and the emerging field of nanotechnology."  The brief also states that:

Mr. Bowman’s characterization of Monsanto's patented seed as "self-replicating" is a red herring that disregards Mr. Bowman's own affirmative infringing actions.  Mr. Bowman purchased the commodity seeds, replanted the seeds, grew the seeds in the presence of Roundup® to eliminate undesirable weeds from his crop and reaped the economic rewards of his infringing actions.  Mr. Bowman cannot avoid the consequences of his agency in performing these infringing actions merely by characterizing Monsanto's patented seeds as "self-replicating;" the commodity seeds did not plant themselves.

Declaring that "[t]he fruits of the second 'green revolution' provided by recombinant seeds such as Monsanto’s seeds here are important not only for the U.S. economy but to address the needs of a burgeoning global population," the brief argues that "[n]one of the benefits of [genetically modified plants] would survive as viable economic alternatives [to unmodified plants] if the purchaser of a first seed could reconstruct the patented invention by replanting patented seed indefinitely, which would occur if 'making' is considered an exhausted 'use.'"  The brief states that "[n]o technology could survive if infringers were permitted to plunder the fruits of patented invention in this manner."

Pointing to erythropoietin-producing recombinant cells in Amgen, Inc. v. Elanex Pharms., Inc., No. C93-1483D, 1996 U.S. Dist. LEXIS 22015, at *9 (W.D. Wash. Feb. 6, 1996), the brief notes that "[p]atented seeds are not the only technologies where 'making' has properly been considered as a separate infringing activity."  The brief then argues that:

If the doctrine of patent exhaustion were improperly extended to the routine growth of recombinant host cells, this could have a devastating effect on investment in the production of new biologic drugs made from recombinant cells.  If patents on recombinant cells used to make new drugs could be easily circumvented by reliance on the exhaustion doctrine, the deleterious effects on the pharmaceutical industry could be even greater than in the agricultural arena.

Patent Docs plans to review a number of the briefs filed in this case, including the briefs on the merits filed by the petitioner and the respondents, as well as several of the amicus briefs that were filed.  According to the docket for this case on the Supreme Court website, amicus briefs have been filed by Knowledge Ecology International, the Automotive Aftermarket Industry Association et al., the American Antitrust Institute et al., the Public Patent Foundation, the Center for Food Safety and Save Our Seeds, the United States government, BayhDole25, Inc., CropLife America, BSA - The Software Alliance, the American Seed Trade Association, the Washington Legal Foundation, the Biotechnology Industry Organization, CropLife International, the American Intellectual Property Law Association, Ecomonists, and law professor Christopher M. Holman.  Argument for the case is scheduled for February 19, 2013.

Note: the IPO brief was co-authored by Patent Docs author Dr. Kevin Noonan.