Speak Softly when Carrying a Big Stick: Bowman v. Monsanto
Therefore, since brevity is the soul of wit,
And tediousness the limbs and outward flourishes,
I will be brief. Your noble son is mad . . . .
–Polonius, Hamlet II, ii
When Justice Kagan wrote for a unanimous U.S. Supreme Court in Bowman v. Monsanto Company (decided May 13, 2013), she may have had Shakespeare’s Polonius in mind. After all, the opinion is a mere ten pages. However, the opinion is even more remarkable for its simple language and calm rhetoric. Given the lopsided decision, the Court could have hammered the petitioner with extensive case citations, legal jargon, and a nasty tone. Instead, it delivered the bad news to Bowman gently.
Indiana farmer Vernon Bowman purchased genetically altered “Roundup Ready®” soybean seeds from Monsanto or other authorized suppliers. The seeds allow a glyphosate-based herbicide to be used without damaging the crop. Purchasers of Roundup Ready soybean seeds agree to plant the purchased seeds in one (and only one) growing season. The resulting crop can be consumed or sold. The farmer agrees not to save harvested soybeans for replanting and not to supply the soybeans to others for that purpose. This restriction prevents the farmer from producing a new generation of Roundup Ready seeds after a single growing season. Without the restriction, and because of the ease of replication of the Roundup Ready trait, there would be no need to purchase seeds more than once from Monsanto.
Bowman purchased commodity soybeans normally sold for human or animal consumption and instead planted them. Bowman knew that most of these soybeans would have been produced from Roundup Ready seed and most would therefore have the desirable glyphosate resistance. Any of the resulting plants that survived glyphosate treatment could be used to produce a new Roundup Ready crop. Bowman used the strategy to produce eight generations of glyphosate-resistant soybeans. After Monsanto sued, Bowman argued that the doctrine of patent exhaustion extinguished any post-sale rights for Monsanto in the seeds. The District Court disagreed, as did the Court of Appeals for the Federal Circuit. The CAFC ruled that patent exhaustion did not protect Bowman because he had “created a newly infringing article.” The U.S. Supreme Court granted certiorari “to consider the important question of patent law raised in this case.”
Justice Kagan’s brief introduction says it all:
Under the doctrine of patent exhaustion, the authorized sale of a patented article gives the purchaser, or any subsequent owner, a right to use or resell that article. Such a sale, however, does not allow the purchaser to make new copies of the patented invention. The question in this case is whether a farmer who buys patented seeds may reproduce them through planting and harvesting without the patent holder’s permission. We hold that he may not.
After summarizing the facts (Part I), Justice Kagan addressed Bowman’s argument that patent exhaustion applies. Quoting from United States v. Univis Lens Co., 316 U.S. 241, the Court explained that the “purpose of the patent law is fulfilled with respect to any particular article when the patentee has received his reward . . . by the sale of the article.” However, the doctrine restricts the patentee’s rights only as to the “particular article” sold and leaves “untouched the patentee’s ability to prevent a buyer from making new copies of the patented item.” According to the Court, if the purchaser of the article “could make and sell endless copies, the patent would effectively protect the invention for just a single sale.”
Bowman admitted that the exhaustion doctrine does not extend to the right to “make” a new product. “Unfortunately for Bowman, that principle decides this case against him,” observed Justice Kagan. She noted that Monsanto would have had no recourse if Bowman chose to consume the soybeans or feed them to his animals. However, the exhaustion doctrine “does not enable Bowman to make additional patented soybeans without Monsanto’s permission.”
Justice Kagan explained the problems with Bowman’s view: “Were the matter otherwise, Monsanto’s patent would provide scant benefit. . . . [I]n short order, other seed companies could reproduce the product and market it to growers, thus depriving Monsanto of its monopoly. And farmers themselves need only buy the seed once . . . .” In response to Bowman’s argument that he merely used seeds in the normal way, Justice Kagan countered that it is “Bowman who is asking for an unprecedented exception—to what he concedes is the ‘well-settled’ rule . . . .” If simple copying “were a protected use, a patent would plummet in value after the first sale of the first item containing the invention. The undiluted patent monopoly . . . would extend not for 20 years . . . but for only one transaction.”
Bowman also argued that seeds are “special”: soybeans will naturally “self-replicate or ‘sprout’ unless stored in a controlled manner,” and thus it was the soybean itself, not Bowman, that made replicas of Monsanto’s patented invention. Justice Kagan wrote: “But we think the blame-the-bean defense tough to credit. Bowman was not a passive observer of his soybeans’ multiplication; or put another way, the seeds he purchased (miraculous though they may be in other respects) did not spontaneously create eight successive soybean crops.”
The Court spoke with one voice, and it left no doubt that patent exhaustion does not extend to unauthorized copying of a patented invention, and particularly not to new generations of patented seeds.
William Carlos Williams wrote that “so much depends” upon a red wheel barrow. Most of us Americans take for granted the hard work and sacrifices of farmers while we enjoy modern convenience and the fruits of their labor. The Court correctly ruled on the law here, but it also recognized that the tone of its opinion needed to convey fairness. On one side sits a multinational corporation with $13 billion in annual revenues; on the other, a farmer that wants to get back to work. The Court needed to show that it felt the pull of Bowman’s arguments with an analytical, even-handed, and smoothly delivered opinion. On that score, Justice Kagan and her colleagues got it right.
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