Universities Urge Supreme Court to Affirm in Bowman v. Monsanto

by McDonnell Boehnen Hulbert & Berghoff LLP

WARFA group of universities, entities affiliated with universities, higher education associations, and entities involved in university technology management, in an amici brief filed in Bowman v. Monsanto, argue that reversal of the decision that petitioner Vernon Bowman infringed Monsanto's patents on glyphosphate-resistant soybeans "would weaken patent rights for artificial, progenitive technologies and upset the flourishing innovation system created by U.S. patent law through the Bayh-Dole Act and technology transfer organizations."  Amici therefore urge the Supreme Court to affirm the decision of the Federal Circuit in Bowman v. Monsanto.  Oral argument in the case is scheduled for tomorrow.

The brief begins by discussing the impact of the Bayh-Dole Act in helping federally funded technologies reach the public, noting that before the Bayh-Dole Act was passed in 1980, "only 5 percent of patents owned by the Federal Government were used by the private sector."  The brief also notes that while U.S. universities obtained only 264 patents in 1979, more than 37,000 patents issued to U.S. universities from 2002-2011.  The brief points out that from 2007-2011, more than 3,000 startup companies were formed as a result of research performed under the Bayh-Dole Act.

MonsantoIn a footnote, the brief indicates that universities spent $65.1 billion for research in 2011 -- more than half of which was spent in the life sciences -- with nearly two-thirds of the expenditures coming from the federal government.  Quoting an article in the Harvard Journal of Law and Technology, which states that "[s]tudies have shown that for every dollar of government-sponsored research, up to $10,000 is required to fully develop, commercialize, and realize a useful product," amici argue that "[p]rivate sector entities will incur these costs only if they are properly incented to do so," adding that "[p]atents, and the valuable exclusionary rights they confer, provide the necessary incentive."

Of the many technologies discovered and developed under the Bayh-Dole Act, amici argue that significant and numerous artificial, progenitive technologies have been conceived, developed, and licensed as a result of the Act.  The brief defines "artificial, progenitive technology" as "a broad classification that includes any human-made technology in which a 'parent' combination, substance, or manufacture is used to generate progeny having the same genetic makeup or characteristics as the parent."  Amici contend that reversal in this case "would effectively shorten the patent term for patents covering artificial, progenitive technologies, thus making it much more difficult, if not impossible, for patent owners and their licensees to recover the costs of developing such inventions for market," and in effect "force patent owners to try to recoup all of their research and development costs in the first sale of the technology."  The brief declares that the "practical result" of a reversal in this case:

[W]ould be to create disparate patent terms -- a shorter term for artificial progenitive technologies and a longer term for all other inventions.  For the former, patentees and their licensees would receive protection only for as long as it takes first buyers to saturate the market with progeny.  For the latter, patentees and their licensees would receive protection for the full statutory patent term.

Stating that "Bowman and his supporting amici erroneously suggest that the only way to 'make' the patented seeds as envisioned by § 271(a) is to genetically engineer them using the techniques disclosed in Monsanto’s patents," amici argue that "it cannot be that under § 271(a), 'making' a patented article requires engineering it from square one."  The brief instead indicates that "[t]here is, however, no support in this Court's precedent for the notion that 'making' an infringing article necessarily involves building that article from its starting materials or building blocks."  Amici suggest that "[g]enetic modification is one way to 'make' Roundup Ready® seeds, but not the only way."

In response to the argument that "affirmance will render 'innocent infringers' vulnerable to liability for inadvertently planting Monsanto's Roundup Ready® seeds and thereby making new infringing seeds," the brief counters that "patent holders like Monsanto have no incentive to litigate against truly innocent infringers," as "[t]he cost of doing so would dwarf the value of available remedies."  Amici also note that:

[T]he supposed "innocently" infringing farmer would achieve the benefits of the patented invention only if, while believing his crop to be susceptible to Roundup® herbicide, he nevertheless applied Roundup®, an application that would (in his mind) likely decimate his crop.  Of course, if a farmer harvested the inadvertently present patented seeds once, realized they were Roundup Ready®, yet continued to plant the progeny seeds, apply Roundup®, and reap the benefits of the patented Roundup Ready® trait, he could no longer claim to be an "innocent infringer."

As for the petitioner, amici point out that "[t]he record dispels any notion that Bowman 'innocently' made Monsanto's patented seeds," noting that "Bowman systematically used the grain elevator as a type of straw-man to circumvent Monsanto's patent rights."

Amici on the brief include the Wisconsin Alumni Research Foundation, Association of University Technology Managers (AUTM), Association of Public and Land-grant Universities, Association of American Universities, The Regents of the University of California, The Board of Trustees of the University of Illinois, University of Florida, Duke University, Emory University, University of Georgia Research Foundation, Inc., Iowa State University of Science and Technology, NDSU Research Foundation, University of Iowa, University of Missouri-Columbia, South Dakota State University, NUtech Ventures, University of Nebraska-Lincoln, University of Kentucky, University of Kansas, Kansas State University, Montana State University, and University of Delaware.

For additional information regarding this topic, please see:

• "WLF Files Amicus Brief in Support of Respondents in Bowman v. Monsanto," February 7, 2013
• "U.S. Government Requests Argument Time in Bowman v. Monsanto -- at Monsanto's Expense," February 5, 2013
• "It Ain't Necessarily So Down on the Farm: Not All Farmers Agree with Farmer Bowman in Bowman v. Monsanto," January 31, 2013
• "BayhDol25 Files Amicus Brief in Bowman v. Monsanto," January 30, 2013
• "Government Sticks to Its Guns in Bowman v. Monsanto Amicus Brief," January 28, 2013
• "IPO Files Amicus Brief in Support of Respondents in Bowman v. Monsanto," January 24, 2013



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McDonnell Boehnen Hulbert & Berghoff LLP

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