Bowman v. Monsanto Company
569 U.S. 278, 133 S. Ct. 1761 (2013)
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Rule of Law:
The doctrine of patent exhaustion does not permit a purchaser of a patented self-replicating technology, such as a seed, to reproduce the patented article by creating new copies of it.
Facts:
- Monsanto invented and patented 'Roundup Ready' soybean seeds, which are genetically modified to resist certain herbicides.
- Monsanto sold these seeds to farmers under a license agreement that permitted them to plant the seeds for one season and sell the resulting crop, but expressly prohibited saving any harvested seeds for replanting.
- Vernon Bowman, a farmer, purchased licensed Roundup Ready seeds for his primary annual crop and complied with the license agreement.
- For his riskier, late-season crop, Bowman purchased 'commodity soybeans' from a local grain elevator, which are sold for consumption, not planting.
- Bowman correctly anticipated that these commodity soybeans would contain the patented Roundup Ready trait from other local farms.
- Bowman planted the commodity soybeans, treated the fields with a glyphosate herbicide to isolate the resistant plants, and harvested a new crop of Roundup Ready soybeans.
- For eight consecutive years, Bowman saved seeds from his late-season harvest to plant the following year, thereby creating new generations of Monsanto's patented seeds without authorization.
Procedural Posture:
- Monsanto sued Bowman in the U.S. District Court for the Southern District of Indiana for patent infringement.
- Bowman asserted the defense of patent exhaustion.
- The District Court rejected Bowman's defense and entered a judgment for Monsanto, awarding $84,456 in damages.
- Bowman, as appellant, appealed the judgment to the U.S. Court of Appeals for the Federal Circuit.
- The Federal Circuit affirmed the district court's decision, holding that Bowman had created a 'newly infringing article' not protected by patent exhaustion.
- The U.S. Supreme Court granted Bowman's petition for a writ of certiorari.
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Issue:
Does the doctrine of patent exhaustion permit a farmer who buys patented seeds to reproduce them through planting and harvesting without the patent holder's permission?
Opinions:
Majority - Justice Kagan
No. The doctrine of patent exhaustion does not permit a farmer to reproduce patented seeds without the patent holder's permission. While patent exhaustion allows the purchaser of a patented article to use or resell that specific article, it does not grant the right to 'make' new copies of the patented invention. The Court reasoned that planting the purchased soybeans to create a new crop of genetically identical, patented seeds constitutes an unauthorized 'making' of the invention, not a permissible 'use.' Allowing such reproduction would devalue the patent after a single sale, as farmers could endlessly replicate the invention without compensating the inventor, undermining the purpose of patent law. The Court rejected Bowman's argument that seeds are a special case because they naturally self-replicate, finding that Bowman actively controlled the reproduction process for his own commercial benefit.
Analysis:
This decision significantly clarifies the scope of the patent exhaustion doctrine as applied to self-replicating technologies. By holding that reproduction constitutes 'making' a new article rather than 'using' an existing one, the Court protected the value of patents for biotechnological inventions like genetically modified seeds. The ruling ensures that patent holders can control the replication of their inventions, preventing the exhaustion of their rights after the first sale. However, the Court explicitly limited its holding to the facts of this case, leaving open questions about how patent exhaustion might apply where self-replication is an incidental or uncontrolled aspect of a product's use.
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