By
Kevin E. Noonan —

Farmer
Vernon Hugh Bowman, losing patent infringement defendant in Monsanto Co. v. Bowman, has filed a supplemental brief in
response to the brief submitted to the Supreme Court by the Solicitor General pursuant
to a request for the Government's views on whether the Court should grant certiorari.  The brief raises arguments both cogent and
otherwise, and reflects the political realities of preparing a petition to the
Court having the greatest chance of being granted.

Bowman
makes three arguments.  First, he argues
that the Solicitor General was wrong when he told the Court that the Federal
Circuit's decision was not based on the "conditional sale" doctrine
of Mallinckrodt, Inc. v. Medipart, Inc., as
earlier applied in Monsanto Co. v. Scruggs
and Monsanto Co. v. McFarling.  This argument correctly notes that the District Court relied on this Federal Circuit precedent, including language
reciting that Monsanto was entitled to damages for Bowman's use of patented soybeans in his second
planting.  The brief also cites the District Court for basing its decision on language in the licenses and other
agreements between Monsanto and its distributors prohibiting saved seed or
replanting of harvested seed.  Indeed, the District Court specifically found that there had been no unconditioned sale of the seed "because the farmers could
not convey to the grain dealers what they did not possess themselves."

The
brief then extends this argument by asserting that the Federal Circuit necessarily agreed with the District Court's grounds for finding against Bowman based on the conditional sale
doctrine.  (This argument seems to put
the jurisprudential horse before the cart:  it is certainly the case that the District Court was following Federal Circuit precedent, but it does not follow
that the appellate court affirmed this application of its precedent merely
because it affirmed the District Court's judgment.)  The basis for this argument does not come
from language from the Federal Circuit opinion, but appears to arise merely
from the fact that the Federal Circuit refused to find that Monsanto's patent
rights were exhausted, i.e., failed to find in Bowman's favor based on Bowman's
arguments.  According to Bowman, a
finding of patent exhaustion mandated a finding in his favor and (at least) a
remand to reconsider the extent of the damage award.  Bowman also argues that remand was necessary
because damages were based on acres planted, and "[a]s any Indiana farmer
can confirm . . . acres of commodity soybeans planted as a risky second crop
late in the growing season may not produce any
progeny" (emphasis in original).  (There
were no allegations in the brief that the damages calculation was otherwise
defective, inter alia, because planted seed in fact produced no progeny
soybeans.)  According to Mr. Bowman, this potential (but
not established) disparity between acres planted and progeny soybean plants
produced (made) renders the conditional sale doctrine the only grounds under
which the Federal Circuit could affirm the judgment.

Having
made this logical leap, Bowman's argument easily follows:  because (in his view)
the Supreme Court abrogated (or at least seriously questioned) the conditional
sale doctrine by virtue of its Quanta Computer, Inc. v. LG Electronics, Inc. decision, this case becomes "an appropriate
vehicle through which the Court may resolve uncertainty created by the Federal
Circuit's continued reliance on the Mallinckrodt
line of cases."  This uncertainty is
created by the Federal Circuit not only by this case but, according to Bowman,
by the appellate court's decisions in Princo Corp. v. International Trade Commission, characterizing that decision as being
contrary to the Supreme Court's Quanta
decision.

Regardless
of whether the Federal Circuit retains any inclination to follow the
conditional sale doctrine in the face of the Court's Quanta decision, where Bowman's argument fails to hold water is
with regard to the grounds of the Federal Circuit's decision in this case.  As set forth in the Solicitor General's brief,
conditional exhaustion was not the basis for the Federal
Circuit's decision in this case.  Rather, the Solicitor's brief quotes the
Federal Circuit as saying that "'[e]ven if [respondent's] patent rights in
the commodity seeds are exhausted, such a conclusion would be of no consequence
because once a grower, like [petitioner], plants the commodity seeds containing
[respondent's] Roundup Ready technology and the next generation of seed
develops, the grower has created a newly infringing article."  In addition,
"[t]he right to use [] do[es] not include the right to construct an
essentially new article on the template of the original, for the right to make
the article remains with the patentee.'"  The Solicitor further notes
that the Court rejected the argument that replanting was the only use for the "commodity
seed," noting that the seed was useful, inter alia, as animal feed.  Thus, Bowman's responsive brief
mischaracterizes both the grounds for the Federal Circuit's decision and the
Solicitor General's argument regarding that decision.  Indeed, the Solicitor General's argument was
that the Court was not presented with
a case where the Federal Circuit had decided contrary to the Court's direction
(in Quanta); the cases where the Federal Circuit had applied the conditional sales doctrine (Scruggs and McFarling)
were decided prior to the Court's Quanta decision.

Bowman's second argument is that the
Solicitor General's distinction between sold seed and progeny seed, wherein
planting progeny seed is an infringement for "making" new seed
regardless of whether the patent right had been exhausted for sold seed, is
unsupported by the statute and inconsistent with" the distinctions created
by Supreme Court law between "repair" and "reconstruction."  The principal basis for this argument is that
planting seed to produce progeny soybean plants is a "use," which
Bowman argues is an exhausted patent right upon first sale.  "[A]ny attempt by Monsanto to retain
rights under the patent to exclude use is inconsistent with the doctrine of
patent exhaustion as articulated by [the] Court for over 150 years," he
argues, citing Adams v. Burke and U.S. v. Univis Lens for the proposition
that "an authorized sale carries with it the right to use that machine to the full extent to which it can be used"
(emphasis in the brief).  The issue, of
course, is that a genetically engineered soybean is different in kind from 19th
and 20th Century machines, making the principles established in such
cases less than illuminating and certainly not determinative.

Bowman's brief acknowledges that the
Solicitor General agreed that Monsanto's patent rights were exhausted as for
use of the commodity seed he planted.  However, for Bowman patent exhaustion permits any use (akin to "the full extent to which [a machine] could
be used") including replanting, whereas the Solicitor General recognizes
that there are exhausted uses (e.g.,
as animal feed) and non-exhausted uses (replanting, which constitutes a "making"
of new seed).  According to Bowman, the
Solicitor General's position "eliminates the doctrine of patent exhaustion
for self-replicating technologies" because certain uses, limited for now
to "making" additional soybeans and seed, do not fall within the
scope of the exhaustion.  In the type of
rhetoric that arises in briefs in support of certiorari petitions, such an
outcome would "exact[] an abhorrent servitude on these items of personal
property as they meander through streams of commerce."

The brief further disputes the Solicitor
General's application of the "repair" vs. "reconstruction"
dichotomy to the situation before the Court.  According to Bowman, "[t]hese cases are not germane to the use of
patented seeds."  The reason:  the "use" of the sold seeds "may
simply result in the creation of a
new item" (emphasis in the brief).  The distinction between seeds and the repair
reconstruction cases is that in the latter the "use" that attached to
the sold seeds was "no longer possible" because the article had "become
worn or destroyed."  Repair was
permitted in this earlier Supreme Court precedent precisely because the sold
article had not yet come to the end of its useful life (which, presumably,
would trigger a further sale of a new embodiment of the patent product),
whereas reconstruction occurs after that "point of no return" had been
reached (presumably denying the patentee of a sale of a new embodiment of the
patented product).

Bowman's brief makes a valid point that
seed is not "beyond repair" when it is replanted; the brief fails to
acknowledge that, like reconstruction, replanting seed is essentially making ("reconstructing")
a patented article, and not one where the patent right has been exhausted by a
sale (unless that first "sale" is capable of echoing down the
generation after generation of seed that can be made from that first planting
of the sold seed).  Bowman concedes that
private contractual arrangements may preclude replanting but would have the
Court decide that protection against unlawful "reconstruction" by
replanting patented seed is outside the protections of the Patent Act.

Bowman's brief also argues that the
Solicitor General's use of the term "make" in 35 U.S.C. § 271(a) to create the non-exhausted patent
right is wrong; conceding that the statute does not define "make," he
argues that adopting the Solicitor General's view would encompass both
inducement to infringe (prohibited by 35 U.S.C. § 271(b)) and contributory infringement (35
U.S.C. §
271(c)).  The basis for this argument is
that indirect infringers can be involved in "caus[ing] to exist" the
patented article, and thus all indirect infringement would be direct
infringement.  However, this argument is
diminished if not vitiated by the Solicitor General's argument that replanting
seeds and making new soybeans is an act of direct infringement that is supported
by the literal language of 35 U.S.C. §
271(a).  And the brief's citation of Deepsouth Packing Co. v. Laitram Corp.
is unavailing because while true that "making"
under the statute requires "an operable assembly of the whole and not the
manufacture of its parts," replanting a seed is a making of "an operable assembly" of the whole
soybean plant, an act performed in toto
by Bowman (even though the brief argues that it is the seed that "'physically
connected' all the elements of the claimed invention into an 'operable whole.'").

In the final portion of this part of his
argument, Bowman resurrects an argument that has been made before in cases
involving genetically engineered cells (such as Amgen v. Elanex, 1996
U.S. Dist. LEXIS 22015 (W.D. Wash, Feb. 6, 1996):  that the recombinant seed is "made"
only upon introduction of the recombinant construct into the germline, and that
because "Bowman did not form the plant cell with the claimed DNA sequence"
he should be absolved of patent infringement liability.

As the Solicitor General noted, the
Federal Circuit recognized that "[t]he fact that a patented technology can
replicate itself does not give a purchaser the right to use replicated copies
of the technology," and "[a]pplying the first sale [patent
exhaustion] doctrine to subsequent generations of self-replicating technology
would eviscerate the rights of the patent holder."  According to the Federal Circuit, the right
to use patented technology upon purchase "do[es] not include the right to
construct an essentially new article on the template of the original, for the
right to make the article remains with the patentee," citing Jazz Photo Corp. v.
Int'l Trade Comm'n, 264
F.3d 1094, 1102 (Fed. Cir. 2001).  "While
farmers, like Bowman, may have the right to use commodity seeds as feed, or for
any other conceivable use, they cannot 'replicate' Monsanto's patented
technology by planting it in the ground to create newly infringing genetic
material, seeds, and plants."  These
differing views on the scope of the patent right provide the best argument for
Supreme Court review (but certainly does not mandate it).  And while the Government acknowledges that
the case presents something of a novelty, the dual nature of replanting as
being both an (arguably) exhausted use and
a non-exhausted making would appear to mitigate in favor of finding
infringement for replanting ("the planting and harvesting of soybeans also
constitutes the 'making' of newly infringing seed" (emphasis in
original)).  Regarding the "making
only occurs upon creation of the genetically engineered seed" argument, the
Solicitor General cogently counterargued that "[p]etitioner 'cause[d] [the
progeny seed] to exist,'" and it was immaterial that how that was accomplished
differed from how the patentee had created the recombinant seed in the first
place.  The Solicitor General's
assessment of Bowman's culpability is also compelling:

[P]etitioner did not simply leave the seed "untended on a field." 
. . .  Rather, he intentionally planted the commodity seed in order to
create a new crop of soybeans; he saved some of that new crop to replant the
next growing season; he continued to plant, harvest, and save seed for eight
successive years; and he exploited the known glyphosate-resistant properties of
the progeny seed by treating his crops with a glyphosate-based herbicide.

In his final argument, Mr. Bowman
contends, contrary to the Solicitor General's brief, that deciding in his favor
would be consistent with the Plant Variety Protection Act and the Court's J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc. decision.  Mr. Bowman correctly
notes that the Court's J.E.M. case
does not speak to the scope and meaning of the word "make" in the
statute.  But he argues (correctly) that
the Court's J.E.M. decision does not
indicate or mandate that principles of patent exhaustion.  This is a strawman, however; the Solicitor
General's actual argument was that the Court refused to find that the presence
of an affirmative exemption for farmers to save seed that can be used for
replanting in the PVPA provided a contrast to the absence of any such exemption in for utility patents.  The Solicitor General argued that there would
be "no practical significance" for this distinction (between plant
and utility patents) "if the unauthorized creation of new seed was treated
as non-infringing under 35 U.S.C. 154 and 271 [] based on the patent-exhaustion
doctrine.  Petitioner would effectively read a seed-saving exemption into
the Patent Act."  And this outcome
would create a statutory inconsistency:

If, as petitioner contends, the authorized sale of patented seed
exhausts a patentee's rights in that seed, as well as in its progeny, then a
grower could save second-generation seed and sell that seed commercially
without infringing the patent.  That would, in turn, afford greater rights
of exclusion to holders of a PVPA certificate than to utility patent holders,
contrary to this Court's understanding in J.E.M. Asgrow Seed Co. v. Winterboer,
513 U.S. 179 (1995), another case involving the seed-saving exemption of the
PVPA.

Not mentioned in Mr. Bowman's brief are
the policy considerations involved (besides how the outcome of this case
affects Mr. Bowman), something directly (and appropriately) addressed by the
Solicitor General.  If, as Mr. Bowman
contends, "the court of appeals' decision will eliminate commodity
soybeans as a low-cost alternative for second-crop plantings, and will
otherwise alter traditional farming practices," these are decisions
best left for Congress.  In addition, the Solicitor General's brief
reminds the Court that a Supreme Court decision on recombinant seeds "could
also affect the enforcement of patents for man-made cell lines, DNA molecules,
nanotechnologies, organic computers, and other technologies that involve
self-replicating features."  Instead of deciding this issue in this
case, "[t]he Court should allow the case law to develop further before
considering whether to adopt a more restrictive definition of 'making' that
could have unforeseen consequences for other present and future
self-replicating technologies, citing the Court's own cautionary statements in
this regard in Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010).

Whether the Court heeds this warning will
be seen when the Court has its petition conference on September 24th.