By Donald Zuhn —

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.