By Kevin
E. Noonan —

The "conventional
wisdom" surrounding the Bowman v.
Monsanto case now before the Supreme Court on certiorari is that it is "David v. Goliath," the
salt-of-the-earth farmer versus the corporate monolith, and an example of the
traditional commoditization of American values by purveyors of "Frankenfood"
looking merely to maximize shareholder profit.  So it may come as a shock (to some) that a group of farmers and farmers'
organizations have filed a brief in support of Monsanto.  These include the American Soybean
Association, Illinois Soybean Association, Indiana Soybean Alliance, Iowa
Soybean Association, Kansas Soybean Association, Kentucky Soybean Association,
Michigan Soybean Association, Minnesota Soybean Growers Association,
Mississippi Soybean Association, Missouri Soybean Association, Nebraska Soybean
Association, North Dakota Soybean Growers Association, Ohio Soybean
Association, Tennessee Soybean Association, Virginia Soybean Association,
Wisconsin Soybean Association, National Corn Growers Association, National
Association of Wheat Growers, American Sugarbeet Growers Association, and
Growers For Biotechnology.  Maybe these
farmers' groups know something other than what "everybody knows."

The
groups' bona fides are set forth in the Statement of Interest portion of the
brief:

American Soybean Association (ASA) is the
national trade association representing U.S. soybean farmers on domestic and
international issues of importance to the soybean industry.  ASA's advocacy and
representational efforts are made possible through the voluntary membership of approximately 22,000 farmers in 31 states.  ASA represents the interests of 280,000
American soybean farms.

(emphasis added).

The other
soybean groups are aligned and support the ASA's position, not only on this
brief but also in support of biotechnology in agriculture.  The other food grower groups (National Corn
Growers Association, National Association of Wheat Growers, American Sugarbeet
Growers Association, and the Growers for Biotechnology) represent their
respective food growers.

Their
brief uniquely reviews the history of soybean production in America and states uncomfortable facts and inconvenient truths about how soybeans are
actually produced and the role of agricultural biotechnology in food production.

The
brief identifies weeds (not patents) as "the most significant economic
challenge to global food production" and that "[i]mprovements in weed
management are critical to increasing crop yields."  Amici pierce the canard that biotechnology as
applied to agriculture is unnecessary or deleterious, noting that "[a]lthough
soybeans and other crops have been cultivated for centuries, advances in plant
genetics were historically stifled by a lack of incentives to invest in new
technologies and breeding techniques."  In contrast (according to the
brief), "enormous progress" has been made since passage of the Plant
Variety Protection Act in 1970 and "[g]enetic innovation in Soybeans"
increased "like Jack's magical beanstalk" (i.e., exponentially) after the Supreme Court's decision in Diamond
v. Chakrabarty.  This "prolific record in developing new
crop varieties" depends on patent protection, amici contend, because without it "seed
and biotechnology companies would not have undertaken the expensive and
time-consuming research necessary to improve existing plant technology."  These assertions are supported by facts,
including that:

Since 1980, total domestic soybean production
has increased 96% and yields per acre have increased 55%.  Soybean production
has also become more environmentally friendly.  On a per bushel basis, the land
needed to produce a bushel of soybeans declined by 35%, soil erosion decreased
66%, irrigation water applied declined by 42%, fuel consumption decreased 42%,
and greenhouse gas emissions declined by 41%.

For at
least these reasons, these amici contend that "[u]pholding
the [Federal Circuit's] decision below will ensure that technological
innovation in crop breeding and genetic traits continues unhindered, thereby
leading to the development of more productive, manageable, and
environmentally-sustainable varieties" while "permitting unrestricted
replication of soybean biotechnology will have a wide variety of harmful
effects on Amici, other farmers, and society as a whole."

The brief then provides some
historical context.  First, though, some
statistics:  soybeans are grown on more than 280,000 farms encompassing 77
million acres in 31 states (it is the "second most-planted field crop"
in the country), with sales of $37 billion (18% of agricultural sales).  In addition to benefits of soybean sales in
the U.S., soybean production is a major export crop, amounting to $21.5 billion in 2012
(18% of all agricultural exports).  The
effects of Monsanto's soybeans on the soybean economy are illustrated in the
brief by noting that soybean exports increased from 882 million to 1.3 billion
bushels since 1996 (when Roundup Ready® seeds
were first introduced).

The brief follows these statistics
from today with a brief history of soybean cultivation and attempted
improvements before and after Monsanto developed its Roundup Ready®
seeds.  Early efforts were undertaken by
the U.S. government, starting (paradoxically) with the Patent Office, which
distributed seeds to U.S. farmers.  These
"free seed" programs eventually came under the auspices of the U.S.
Department of Agriculture and lasted until 1934.  One consequence of this government largess,
according to amici, was that "[e]arly seed breeders had little incentive to make
costly investments in developing more productive plants because the free seed
program crowded private breeders from the marketplace."  These disincentives were exacerbated by the
lack of patent protection, say amici, due in part to the inability to prevent farmers from saving
seed for replanting.  As a result, the
brief cites "little progress" being made to increase crop yields.

Fortuitously, the exit of the
government from seed distribution was accompanied by the development of hybrid
corn, which "substantial[ly] increase[d] yields" and coincidentally
investment was not impeded because hybrid corn could not be replanted.  While commercial development of hybrid corn
thus did not depend on patent protection the same is not true for "self-pollinating"
crops such as wheat and soybeans (and these crops were not capable of protection using
alternative forms of intellectual property protection like trade secret).  And although the PVPA afforded some level of
protection for plant breeders, exceptions that permitted seed saving provided
"soybean breeders [with] little incentive to invest resources in
developing new varieties."

The combination of the Court's Chakrabarty decision in 1980 and J.E.M.
Ag Supply v. Pioneer Hi-Bred Intern., Inc.,
534 U.S. 124, 131-32 (2001), provided these much-needed incentives.  "Breeders responded vigorously to these
new assurances of intellectual property protection," say amici, supporting this assertion with
the following statistics.  Agricultural
genetic research spending increased from $146 million in 1979 to $305 million
in 1982, by 1994 had risen to $634 million, and by 2010 amounted to $2
billion.  The focus of most of this
research has been on "seed and genetic trait development" and
intellectual property protection (both under the PVPA and the Patent Act) "provided
incentives for private seed developers and genetic researchers to create
innovative and highly productive crop varieties and genetic traits."  Publically funded research, conversely, "leveled
off in the 1970s and began to decrease by the mid-1990s."

Far from being imposed on
unwilling farmers, the brief explains that "[a]lthough Roundup Ready® seed
is more expensive than conventional seed, soybean farmers readily adopted
glyphosate-resistant technology because it simplified weed management"
(recall that amici asserted earlier in their brief that weed management poses the greatest obstacle to
successfully increasing crop yields).  The
statistics again bear out these statements: 
two years after Monsanto introduced their seed, 38% of farmers had
adopted it, and this percentage rose to 54% by 2000 and to 93% by 2012.  These statistics illustrate not that farmers
did not want to plant Roundup Ready® seed but precisely the opposite:  Monsanto's
seed provided clear advantages that justified their increased cost.

Now is not the time for this trend
to be inhibited by reducing patent protection for agricultural biotechnology, amici argue.  While these improvements have been
impressive, genetic engineering of crop plants is "a relatively new
phenomenon" and there are other desirable traits (including "saturated
fat and trans fat levels, increased Omega-3 levels, improved yields, and
genetic resistance to insects and pervasive diseases") now being developed (by
companies like Bayer, Pioneer, Dow, and Syngenta in addition to Monsanto).  The brief also notes that soybeans are "hardly
the only crop benefitting from biotechnology research," mentioning several
crop plants where genetic variants with traits including "resistance to
drought, stress, and a wider spectrum of herbicides, with a higher nutritional
content, and which more efficiently utilize nitrogen fertilizer" are in
development.  Accordingly:

There can be no doubt that if intellectual
property protections remain in place, biotechnology will continue to play a
substantial role in crop improvement.  These advances are largely premised upon
the continuation of private research conducted by seed breeders.  Absent utility
patent protection, little incentive will exist for biotechnology companies to
conduct research.

As in other briefs, the
application of biotechnology to food crops also promotes "environmental
sustainability," the brief asserts.  Lest there be any doubt, these amici remind the Court that "[s]ustainability
is not merely a buzzword that receives lip service from the agricultural
community" but is a necessity to enable demand for food to be met
currently while "ensuring that food producers [will be able to] meet
future food demands."  Between
increased global population and decreased availability of arable land, "[f]eeding
a growing world with dwindling resources requires the adoption of a
comprehensive approach to ensure this daunting challenge can be met."  Conventional methods of food production not
only cannot meet these needs but also involve other practices (such as "multiple
passes of primary and secondary tillage" and "the use of a variety of
herbicides to control weeds") that have their own environmentally
deleterious effects.  The introduction of Monsanto's Roundup Ready®
seed actually reduced excessive tillage practices and thus reduced soil
erosion, water pollution caused by pesticide runoff and even greenhouse grass
production (because reduced tillage entails reduced use of diesel fuel for
tractors).  Finally, the active
ingredient in Roundup®, glyphosate, is "'practically
non-toxic by ingestion' and noncarcinogenic, making it safer for applicators
seed," in contrast to alternative herbicides that "EPA
estimates are 3.4 to 16.8 times more toxic to humans."

This portion of this amicus brief concludes by discussing the
"unorthodox practice" of replanting commodity seed.  While the reasons are multiple, the brief
mentions protections against the spread of weeds from the commodity seed and
regulations preventing grain elevators from certifying that their soybeans can
be sold as seed (like the Indiana Seed Law and other "Federal and state
laws and regulations").  As a
result, imparting the Court's imprimatur to Farmer Bowman's actions and
resulting "widespread adoption" of this scheme would "place elevators in the untenable position of serving as de facto state
inquisitors regarding the intended uses of grain purchased by their customers."

The brief then sets forth its
argument for affirmance, these arguments being consistent with other amici and Monsanto in arguing that
Farmer Bowman's replanting amounted to unauthorized reconstruction of a
patented article and that Monsanto's patent rights were not exhausted with
regard to the replanted seed.

The brief ends with the following:

In 1836, the State Department instituted the
free seed distribution program to obtain the best seed technology for America's
farmers in order to produce food for the nation.  The free seed program was
terminated because seed technology was not keeping pace with society's demands.  During 2012, the State Department re-affirmed its support of agricultural
biotechnology as a way to produce the food needed by a growing world
population.  In order to meet this challenge, "more food will need to be
produced in the next 50 years than has been produced during the last 10,000
years combined."  Agricultural biotechnology is a "proven means of
building global food stores."  Little incentive exists for innovation
unless seed research and development is afforded intellectual property
protection.  Soybean, corn, wheat and sugar beet farmers can help achieve these
goals, but will require access to continued improvements in seed technology.

Amici
provide a unique perspective based on the experience of real farmers and their
organizations concerned with the future of American agriculture.  With luck, the Supreme Court will be
listening.

For additional information regarding this topic, please see:

• "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

"Happy families are
all alike; every unhappy family is unhappy in its own way."  Leo Tolstoy, Anna Karenina

By Kevin E. Noonan —

A
great many amicus briefs have been filed in support of affirmance of the
Federal Circuit's decision in Bowman v. Monsanto and many of them are
reminiscent of Tolstoy's happy families.  Accordingly, in reviewing these briefs, these posts will endeavor to
identify unique aspects or arguments raised by amici, to avoid dulling
the impact of the relevant arguments relating to patent exhaustion, the
repair/reconstruction doctrine, and other robust grounds for affirmance.

BayhDole25, Inc. is, according to the brief's Statement of Interest, a private,
non-profit, non-governmental organization dedicated to "increase[ing]
awareness of the importance of Bayh-Dole for enabling an environment for
commercialization and assimilation of new technologies for the creation of
economic and social benefit."  The BayhDole25 brief is directed to two aspects of the case:  the contractual limitations of
the Technology Agreement and their violation by Farmer Bowman, with its
implications; and the importance of patenting for agricultural innovation.

Regarding the first argument, BayhDole25 argues that the Court should give "great weight" to the contractual
aspects of case, including not only the Technology Agreement but also the role
of grain elevators and commodity seed in the agricultural economy.  The brief explains why the Technology
Agreement did not expressly bar Farmer Bowman's activities — based on what
commodity grain elevators historically do, including:

• Direct use as feed for livestock,
• Milling or other processing for industrial or food products, and
• Shipment
to markets, including possible export to world markets.

"With this
backdrop, it becomes clear that barring commercial sale of the soybean crop to
grain elevators would be impracticable and would impose unreasonable added
transaction fees and logistical burdens onto farmers."  Thus, the brief argues that the economic
arrangements protected by contract were insufficient to prevent Farmer Bowman's
activities and that patent protection was necessary.

Turning to Farmer Bowman's actions, the
brief argues that this was an "intentional strategy" employed "each
year" as a way to permit Farmer Bowman to replant saved seed — something
that is an "atypical and unconventional" use of grain elevators that "should
be viewed as extraordinary and unexpected."  BayhDole25 asserts that
Farmer Bowman "laundered" his saved seed through the grain elevator, "delivering
his soybean crop on one end of the grain elevator and for all intents and
purposes re-purchasing the same or similar soybeans on the other end for
planting."  Characterizing this use
of the grain elevator as raising a "strawman," the brief states that
it is "disingenuous" for Farmer Bowman to argue that this activity "complied
with his contractual obligations under the Technology Agreement as written."

And with regard to the "self-replicating"
technology aspect of the Question Presented, the brief notes the multiplicity
of other uses for soybeans — including "crop
breeding, R&D, generation of herbicide registration data, and seed
production" (not to mention animal feed, human food, and other uses such as
in biofuels) put the lie to these allegations.  In view of this evidence, the brief "excuses" (albeit tongue
in check) Farmer Bowman's rhetorical excess regarding this characterization of
soybeans as "self-replicating," quoting Abraham Maslow that "if the only tool you have is a hammer, to treat everything as if it were a
nail."  The Psychology of Science: A Reconnaissance 1966.

BayhDole25's second argument,
regarding the importance of effective patent protection for agriculture, reminds
the Court that while this case may be one of "David vs. Goliath,"
should the Court reverse the Federal Circuit, this precedent in favor of Farmer
Bowman "would apply to any and all innovators, fundamentally altering the
existing business model for agricultural biotechnology — substantially curtailing
return on investment with profound adverse consequences for global development."  And the brief provides perspective:

In this broader context, for every
commercial farmer like Petitioner in the U.S. claiming harm from payment for
continued access to advanced seed technologies — where the eight fields at issue
in this case alone total 399 acres — there may be tens of thousands of
subsistence farmers in developing countries operating on a few hectares or
less, and relying on continued transfer of technology from innovative private
agricultural companies to meet agricultural challenges in the 21st century.  In
the grander scheme of global agriculture, Petitioner is a Goliath.

The benefits of biotechnology for agriculture
set forth in the brief include "increased agricultural productivity,
greater efficiencies in water usage and reduced need for chemical fertilizers
and/or crop protection products."  Also noted is that, before the biotechnology era in agriculture, most innovation
in agricultural methods was funded by governments and universities that created
a "global commons" of intellectual property.  Private funding, requiring "investment
of intensive resources over a long time-period, development of large genetic
databases and validation through field-testing" has "led to a
fundamental realignment, "with the private sector now investing
significantly more than the public sector in biotechnology R&D."  (The brief argues that this is a positive
outcome, in view of the advances in agriculture over the resulting time
period.)  The brief notes that the agricultural biotechnology environment
in Europe is "adverse," with consequently leadership by the U.S., which "has
become the engine for innovation and transfer of technology to partners in the
developing world."

The brief ends with further relating
the efforts of those, like Farmer Bowman, who attempt to avoid paying patent
licensing fees and royalties:

Compensation paid by Petitioner and
other American farmers to license advanced agricultural technologies like
Roundup Ready® soybeans, accordingly, are an important part of the social contract
supporting continued technology transfer needed for productivity gains and
poverty reduction efforts in developing countries around the world.  Petitioner's
and other similarly situated parties refusal to compensate Respondents for
continued use of the Roundup Ready® technology would upset the carefully
constructed balance of benefits fueling technology transfer globally,
potentially reversing hard-won gains of subsistence farmers in the developing world
and elsewhere.

In a word, perspective.

For additional information regarding this topic, please see:

• "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

By Kevin E. Noonan —

Over the past decade, the Supreme Court's
increased interest in patent law cases was paralleled by briefs from the
Solicitor General advising the Court to grant certiorari.  The apparent
influence of the government has waned in recent years, beginning with the Court's
grant of certiorari in Laboratory Corp. v.
Metabolite Labs., Inc. ("LabCorp")
against the SG's advice, and accelerating during the Obama Administration where
the Court has expressly rejected the government's position (Stanford v. Roche; Mayo v. Prometheus).  Most recently,
the Court also ignored the SG's opinion not to grant certiorari in Bowman v
Monsanto (see "Solicitor General Recommends the Supreme Court Deny Cert in Bowman v. Monsanto").  Regardless, the government
has filed an amicus brief, at the
Court's invitation, that reiterates many of the arguments the government urged
in its CVSG brief.

The amicus
brief is endorsed by both the Department of Justice and the U.S. Patent and
Trademark Office (in marked contrast to the government's ill-considered amicus briefs to the Federal Circuit in AMP v. Myriad).  Indeed, in its Statement of Interest, the
brief asserts that the government's interest is the PTO's interest, due to its
role of "issuing patents and advising the President on
issues of patent policy."  The brief characterizes the Question
Presented as:

Whether
the authorized sale of one generation of a patented plant seed exhausts a
patentee's right to control subsequent generations of that seed.

Which modifies Farmer Bowman's Question,
which begged the question it purportedly asked (see "Supreme Court Grants Certiorari in Monsanto v. Bowman").  The government's brief makes four arguments:

• Monsanto's patent right to "make"
recombinant, Roundup-Ready® soybeans was not exhausted in sales of
commodity seed
• Statutory (the Plant Variety Protection
Act) and judicial (J.E.M.
Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc.,
534 U.S. 124 (2001)) authority supports the argument that
Monsanto's rights were not exhausted
• Farmer Bowman's additional arguments "are
not persuasive" and can be summarily addressed (and rejected)
• While the
Federal Circuit's "conditioned sales" doctrine is inconsistent with the
Court's decision in Quanta Computer, Inc.
v. LG Elecs., Inc., 553 U.S. 617, 625-28 (2008), the appellate court did
not base its decision here on the discredited doctrine.

The brief's first argument urges that
affirming the Federal Circuit is consistent with, not contradictory to, the
Court's patent exhaustion doctrines.  Citing a multitude of cases from the 19th and 20th
Centuries, as well as Quanta, the brief repeatedly emphasizes that the Court
should consider that exhaustion is limited to sale of a particular article ("that article") and does not extend
to making an additional article.  Specifically,
the brief cites United States v.
Univis Lens Co., 316 U. S. 241 (1942) (the
intellectual forebear of the Court's Quanta
decision) in support of its position:

As
the Court explained in Univis, "the purpose of the patent law is fulfilled with
respect to any particular article
when the patentee has received his reward for the use of his invention by the
sale of the article," and "once that purpose is realized the patent law affords
no basis for restraining the use and enjoyment of the thing sold."

316 U.S. at 251 (emphases added).

Citing the Court's "repair/reconstruction"
dichotomy, the brief asserts that the relevant precedent requires that "[a]
patentee 'cannot prevent those to whom he sells from . . . reconditioning
articles worn by use,' but it can prevent them from 'in fact mak[ing] a new
article,'" citing Aro Mfg. Co. v. Convertible
Top Replacement Co., 365 U.S. 336,343 (1961), and other authorities including Wilbur-Ellis
Co. v. Kuther, 377 U.S. 422, 424 (1964); Cotton-Tie Co. v. Simmons, 106 U.S. 89, 93-94 (1882); Wilson v. Simpson, 50 U.S. (9 How.) 109,
123-125 (1850); Jazz Photo Corp. v.
International Trade Comm'n, 264 F.3d 1094, 1102 (Fed. Cir. 2001), cert.
denied, 536 U.S. 950 (2002); and United
States v. Aluminum Co. of Am., 148 F.2d 416, 425 (2d Cir. 1945)).  Based on these authorities, the brief states
that "the authorized sale of first-generation soybean seed exhausts
the patentee's rights to control the use and disposition of that seed" and none other.

This conclusion is reinforced,
according to the brief, by decisions by the Court and Congress evincing
intentions contrary to Farmer Bowman's position.  Congressional intent in this regard is
illustrated by the Plant Variety Protection Act (PVPA), Pub. L. No. 91-577, 84
Stat. 1542 (7 U.S.C. § 2321 et seq.),
and specifically those provisions of the Act that permit (limited) seed-saving
and replanting of saved seed.  As the
Court recognized in J.E.M. AG Supply,
the PVPA differs from the Patent Act in providing that:

[I]t shall not infringe any right [under the PVPA] for a person to save
seed produced by the person from seed obtained, or descended from seed
obtained, by authority of the owner of the variety for seeding purposes and use
such saved seed in the production of a crop for use on the farm of the person,
or for sale as provided in this section.

7 U.S.C. §§ 2543 and 2544.

The Court in J.E.M.
AG Supply recognized that plants are entitled to utility patent protection
and that the "seed-saving" provisions of the PVPA were not included
in the Patent Act, thus creating infringement liability under 35 US.C. § 271 for patented seed that did not arise for seed
protected under the PVPA.  534 U.S. at 143.  But even these rights under the PVPA are not unlimited, being restricted
to "sales only 'for other than reproductive purposes,' i.e., for purposes
other than replanting," citing 7 U.S.C. § 2543; and Asgrow Seed Co. v. Winterboer, 513 U.S. 179, 184 n.2 (1995).  This precedent supports the government's view
that Farmer Bowman's infringing activities were not absolved by patent
exhaustion.

The brief also notes Congressional intent by the
absence of legislation, contrasting the instant case with software copyright,
where Congress has created an
exemption for copying.  Specifically, the
brief references the "essential step defense" which provides that "it
is not an infringement for the owner of a copy of a computer program to make or
authorize the making of another copy or adaption of that computer program"
as specified.  17 U.S.C. § 117(a)).  Congress clearly understands that there are
circumstances where it should act to prevent overreaching of exclusive rights
under the Copyright and Patent Clause, and notes that the Court has recognized
the primacy of the role of Congress in making these policy decisions, citing Microsoft Corp. v. AT&T Corp., 550
U.S. 437, 458-459 (2007), and Diamond v.
Chakrabarty, 447 U.S. 303, 305, 318 (1980).

The government includes in this section of the
brief the potential for a contrary decision by the Court for consequences "not
limited to genetically modified crops," including "enforcement of
patents for man-made cell lines, DNA molecules, some nanotechnologies, and
other technologies that involve self-replicating features."  These consequences would be visited on the numerous
companies [that] have marketed patented recombinant plasmids and transformed
cell lines capable of replication with limited human intervention"
rendered patentable under the Court's Chakrabarty decision.  "These patents would lose much of their
value if purchasers of patented bacteria or other self-replicating products
could reproduce and sell those items free from the restraints of patent law,"
according to the government.  Finally,
the brief rejects Farmer Bowman's argument that contractual remedies are
sufficient, because "[c]ontractual remedies are ineffective against
downstream purchasers not in privity with the patent holder. . . [a]nd patent
law provides remedies unavailable under contract law, including injunctive
relief and enhanced damages," citing 35 U.S.C. §§ 283-285.

The brief summarily dismisses Farmer
Bowman's other arguments.  This includes
Bowman's "fundamental misunderstanding" of Quanta, which the government argues is an attempt to graft Quanta's principles of patent exhaustion
to method claims onto composition of matter claims (the Court's analysis in
Quanta "is not easily applied to patents on "manufacture[s]"
or "composition[s] of matter").  The brief further argues that "[n]othing in [the] Quanta [decision] casts doubt on the
proposition that ". . . the general rule [of
patent exhaustion] has always been subject to an important qualification:  even
the lawful owner of a patented article may not, without authorization, use it
to make a new copy of the patented article."  Second, the brief argues that planting is not
the "only reasonable and intended use" of the commodity soybeans at
issue here and thus this case can be distinguished from the Court's concerns in
Quanta.

Turning to Farmer Bowman's argument that replanting
seed and recreating soybeans is not reconstruction of the patentees article,
the brief states that while this statement is true it is "irrelevant"
because "[u]nauthorized reconstruction is an act of infringement because
it implicates a patent holder's exclusive right to "make" the
patented invention," citing Wilbur-Ellis,
377 U.S. at 424.  Contrary to Farmer
Bowman's argument, the Court's "reconstruction" cases are relevant to
the issue before the Court because those cases "exemplif[y] a critical
qualification to the exhaustion doctrine — that, absent an express or implied
license, the authorized sale of an article embodying a patented invention does
not give the purchaser the right to make a new patented article."  The brief similarly dismisses Farmer Bowman's
reliance on Deepsouth Packing Co. v.
Laitram Corp., 406 U.S. 518 (1972), because that case (standing for an  "unremarkable proposition") absolves
from infringement someone who makes fewer than all the claimed elements of a
claimed invention, whereas here Farmer Bowman's "activities culminated,
and were intended to culminate, in the creation of the final patented product
in the United States."

(In an illuminating footnote, the brief addresses amici arguments regarding "unintentional"
infringement by "organic" farmers and others, stating "[t]he
speculative possibility that respondent could sue a truly inadvertent infringer
for patent infringement provides no sound basis for a wholesale expansion of
the patent-exhaustion doctrine to include the deliberate unauthorized 'mak[ing]'
of self-replicating technologies.")

Finally in this section of the brief the government
responds to Farmer Bowman's various arguments relating to the distinction
between "use" and "make" in § 271(a).  The
brief cites provisions of the Copyright Act relating to the exclusive right of
copyright holders to "reproduce" copyrighted works, 17 U.S.C. § 106(1), and rejects Farmer Bowman's argument that
affirming the Federal Circuit would vitiate statutory provisions relating to "indirect"
infringement.  The brief states that "petitioner
appears to equate the dictionary definition of "make" with a but-for
causation standard for direct infringement, under which any person who performs
an act that ultimately leads to the creation of a patented invention 'makes'
that invention.  Petitioner fails to recognize that cases of direct infringement — unlike
indirect infringement — do not require the intervening act of another person."

The brief in its last section turns to the Federal
Circuit's "conditional sale" doctrine, agreeing with Farmer Bowman
that the Supreme Court's Quanta decision discredited the line of cases,
starting with Mallinckrodt, Inc. v.
Medipart, Inc.,
976 F.2d 976 F.2d 700, 706-08 (1992), that followed this
reasoning.  The government's brief does
note, however, that the Quanta decision did not "explicitly overrule"
these cases, just that the Court's decision "repeatedly describe[d] the
patent-exhaustion doctrine in terms that leave little room for enforcement
through patent law of post-sale restrictions on use or resale."  Regardless, because the Federal Circuit did
not base its decision on the conditioned sale doctrine, the vitality vel non of that doctrine was neither
dispositive nor at issue here.

For additional information regarding this topic, please see:

• "IPO Files Amicus Brief in Support of Respondents in Bowman v. Monsanto," January 24, 2013