By
Kevin E. Noonan —

On
the brink of oral argument before the Supreme Court on Tuesday, it may be
helpful to reiterate (as do the parties) the arguments from Petitioner Farmer
Bowman and Respondent Monsanto, Inc. in Bowman
v. Monsanto.

Farmer
Bowman reprises his argument that the sale of the patented seed exhausts any
future rights to the progeny of those seeds.  The first part of this argument focuses on authorized uses, sales and
offers to sell, where he argues (not necessarily incorrectly) that an
authorized sale from patentee exhausts patent rights to the seed.  Ignoring the Technology Agreement issues for
a moment, it is certainly true that, had Farmer Bowman purchased seed from
Monsanto and then decided not to plant it, he could have resold those seeds to
another farmer.  That, of course, is not
the scenario before the Court in this case. 
This portion of the brief explicates for the Court its own jurisprudence
on patent exhaustion from the 19th Century to date, and focuses on
the Federal Circuit's Mallinckrodt v.
Medipart line of cases to strengthen the Court's perception that there is
an error below requiring correction.

Somewhat
surprisingly, the brief concedes that, in some circumstances patentees may
enter into licensing agreements enforceable under patent law, but consistent
with the rest of his argument, Farmer Bowman contends that such restrictions
cannot be enforced on authorized purchasers. 
"Any" seeds purchased in such an authorized sale have had all patent rights exhausted according to
Farmer Bowman in the first section of his brief.

These
principles of exhaustion also apply to seeds produced as the result of
planting, i.e., progeny seeds. 
Analogizing (somewhat inappositely) to statements in the Supreme Court's
Quanta Computer v. LG Electronics
decision, Farmer Bowman contends that "like method claims, subsequent
generations of seeds are 'embodied' in seeds sold" in authorized
sales.  While appealing in a 15th
Century way (bringing to mind Pythagoris, preformationism and myths such as
homunculi and others), the brief then uses this argument to support Farmer
Bowman's contention that replanting seeds is not "making" but is
rather an authorized use and thus an exhaustion of Monsanto's patent
rights.  This relationship then vests "title"
in progeny seeds to the first authorized purchaser, and any decision otherwise
would amount to a restraint on the alienation of personal property.  The scope and reach of these arguments is
breathtaking in its inclusion of perhaps every argument that could be made,
once its proponents go down the rabbit hole of their premise (that each seed
literally embodies every other seed that can ever be produced from that seed).

Finally,
the brief goes back to the theme, developed in the Questions Presented, that
the Federal Circuit created an "exception" to the patent exhaustion
doctrine for "self-replicating technologies."  Its inclusion late in the brief may be an
admission by Farmer Bowman that this argument does not comport with the facts,
as set forth in the Federal Circuit's opinion, Monsanto's brief, and the
government's amicus brief.  No matter how inclined the Federal Circuit
has been to carve out what the Supreme Court has decided are "special"
rules for patent cases (and which rules the Court has been happy to strike
down), that is not what the Federak Circuit did in this case.  In this abbreviated version of this argument,
Farmer Bowman contends simply that any such "changes" in the patent
exhaustion doctrine should come from Congress, or be left to contractual
arrangements between patentees and parties in privity through sales of
inventions comprising "self-replicating technologies.  (But of course Farmer Bowman's intentions are
not to help patentees to protect their technology, but rather to expose such
contractual avenues to antitrust scrutiny.)

Monsanto's
brief begins with a recitation of Monsanto's patented technology, the
Technology Agreement, the "Petitioner's Conduct" (including the
purported illegality of purchasing commodity seeds from grain elevators for
replanting) and what transpired below. 
Turning to its arguments, Monsanto contends that sales, even "authorized"
sales, do not exhaust patent rights to the extent argued by Farmer Bowman.  As an initial matter, Monsanto argues that
the "first sale" doctrine of patent exhaustion is inapplicable to
Farmer Bowman's conduct because the seeds had not been sold.  Thus, Monsanto rejects Farmer Bowman's
predicate that there was an
authorized sale and consequently that patent exhaustion does not apply.

The
brief also discusses the relationship between patent law and laws specifically
relating to plant protection (specifically the Plant Protection Act and the
Plant Variety Protection Act), and argues that the Court should not thwart the
Congressional statutory scheme and the Court's own precedent relating to
protections for technological innovation in plants.  The brief specifically cautions the Court
against itself creating "exceptions" that would disfavor
biotechnological innovation.

The
brief also broaches the more risky grounds of the extent to which a patentee
can convey limited rights to embodiments of a patented invention.  The brief parses out the various rights in
the patentee's bundle of rights (making, using, selling) and asserts the
patentee's right to convey less than the entirety of the bundle, and reminds
the Court that is has "never held that a sale per se renders unenforceable
reasonable restrictions imposed by a license" (running the risk that this
Court will take up the challenge and do just that).  Arguing against this eventuality, the brief
contends that any such per se rule would harm both the patent law and the exhaustion doctrine.  Finally, and in the briefest section of
Monsanto's brief, Monsanto argues that contractual remedies by themselves are
inadequate to protect and therefore encourage innovation in "readily
reproducible" technologies.

In
his reply brief, Farmer Bowman identifies another basis for patent exhaustion,
asserting that an authorized sale exhausts rights to using the article soled for
the ordinary pursuits of life.  It
characterizes Monsanto's arguments as an attempt to "control post-sale use
and disposition of seed," which it asks the Court to reject, and urges the
Court to prevent Monsanto from suppressing a "cheaper, non-infringing
source of seed."  The brief rejects
Monsanto's characterization of the PVPA and the Court's precedent interpreting
the Act, and asserts that Monsanto (and "its" amici) have "overstate[d]
the economic impact of patent exhaustion for self-replicating products."

Patent Docs will provide an assessment of the
oral argument in due course.