By Kevin E. Noonan --
The Federal Circuit decided the In re Beineke case recently, affirming a decision by the USPTO's Board of Patent Appeals and Interferences that applicant Walter Beineke was not entitled to a patent for two strains of white oak trees under the Plant Patent Act of 1930 (as last amended in 1954). While the court's decision is as unremarkable as it is apparently consistent with the scope of the Act intended by Congress in enacting it, the analysis is informative, particularly when compared with other recent decisions.
The Plant Patent Act is codified as 35 U.S.C. § 161:
Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of this title,
(where the italicized portion of the text was introduced by amendment 1954).
Here, the subject matter claimed by Beineke were two white oak trees "in the front yard of a home," one being 118 years old and the other being 105 years old, having superior properties he recognized (including "excellent timber quality and strong central stem tendency"). He took acorns from these trees and planted them, and finding the beneficial traits to be retained reproduced them asexually. Being successful, he applied for the two plant patents at issue.
The Examiner rejected both applications based on statutory exclusion of plants "found in an uncultivated state." A divided Board affirmed, the majority finding that based on the Act's legislative history the question of whether a plant found in a "cultivated state" depends on "whether the existence or condition of the found plant itself has been affected by human activity (i.e., cultivation)." Based on the fact that the land was uncultivated when the trees began to grow, only having been "cultivated" when the house was built in 1930, the Board held that applicant Beineke failed to satisfied the "cultivated" requirement of the statute, reasoning that "[s]urrounding a tree with a lawn does not change the state of the tree itself." Two Board members disagreed, however, "stating that they 'understand 'cultivated' to be a requirement that the plant be the recipient of human labor only after its discovery,' and that they would have found the trees patentable because the trees were cultivated when Beineke discovered them."
On remand from the Board, applicant Beineke then submitted Rule 132 declarations in each application regarding whether the trees were "cultivated," but on their return to the Board, the applications were faced with no change in the Board majority's position.
The Federal Circuit affirmed, in a decision by Judge Dyk, joined by Judges Schall and Reyna. The opinion begins by stating that because a proper consideration of the issues requires the Court to interpret the scope and meaning of the statute, its review is de novo. The opinion then cites earlier case law indicating that an "inventor" of a plant patent must "recognize [the plant's] uniqueness and difference (citing Yoder Bros., Inc. v. Cal.-Fla. Plant Corp., 537 F.2d 1347, 1382 (5th Cir. 1976)) and have "taken the steps of asexual reproduction" (citing Imazio Nursery, Inc. v. Dania Greenhouses, 69 F.3d 1560, 1566 (Fed. Cir. 1995), citing Yoder at 1380). The point of contention here, according to the Federal Circuit is whether it is enough to "find a new variety of mature plant," recognize its beneficial properties, cultivate and asexually reproduce it (Beineke's position), or whether the statute also requires that "human activity played a role in the creation of the plant," the statute's (i.e., Congress') intention being directed toward protecting the activities of "plant breeders who create new varieties of plants either intentionally or by accident" (the PTO's position). The panel sided with the PTO in affirming the decision that Beineke is not entitled to his patents (albeit without adopting the Office's position in toto).
The first question the opinion addresses is whether "trees" as a class fall within the scope of the Plant Patent Act. In this analysis, the opinion asserts that the statute requires that the plant be the result of "plant breeding or other agricultural or horticultural efforts" and that the patent be granted to an "inventor," defined as someone who "contributed to the creation of the plant in addition to appreciating its uniqueness and asexually reproducing it." Beineke, the opinion notes, has brought forward no evidence that he satisfies either of these requirements.
Delving further into the legislative history, the opinion recites as a rubric of statutory interpretation that the Court interpret the Act "in light of the 'contemporary legal context' in which it was enacted -- that is, against the historical backdrop of the patent laws and the existing understanding of the language used in the act at the time," citing Cannon v. Univ. of Chicago, 441 U.S. 677, 698-99 (1979). The opinion uses this rubric to interpret the "invents or discovers" language in the statute, stating that this phrase must be interpreted according to Supreme Court precedent to mean that:
[t]he beneficiary [of a patent] must be an inventor and he must have made a discovery. . . . [I]t is not enough that a thing shall be new, in the sense that in the shape or form in which it is produced shall not have been before known, and that it shall be useful, but it must, under the constitution and the statute, amount to an invention or discovery,"
(emphasis in opinion) citing Thompson v. Boisselier, 114 U.S. 1, 11 (1885). And in turn, the Court opines that this requires the "exercise of the inventive faculty," citing Singer Mfg. Co. v. Cramer, 192 U.S. 265, 276 (1904); Pearce v. Mulford, 102 U.S. 112, 118 (1880); and Dann v. Johnson, 425 U.S. 219, 225 (1976) (and in a footnote cited cases of other Federal courts having language that "mere naked discovery" is not enough for a patent-eligible invention; these citations, as well as all but the Dann citation are directed towards utility patents, having been decided before the Plant Patent Act was enacted).
The opinion also has a citation to Ex parte Latimer, 1889 Dec. Comm'r Pat. 123, to support the proposition that prior to the Plant Patent Act, it was thought that plants were not patent-eligible per se as "products of nature." This discussion serves as a segue to the Court's conclusion that Congress evinced an intent to extend patent protection to plant breeders while retaining the proscription against patenting naturally occurring plants, by recognizing that plants created by plant breeders showed the "exercise of the inventive faculty" and, as a consequence, that the patent could be bestowed only upon the inventor (seeming to incorporate by implication that the inventor must have "created" the new plant variety and not merely appreciated it). This reading is supported by citations to the legislative history that support the "limited scope" of the Act.
The opinion then concedes that this requirement is not "explicitly stated in the statute," but supports its interpretation by citing statutory language that limits the scope to "cultivated sports, mutants and hybrids" (which seems to beg the question). More relevant is citation to rejected amended provisions of the Act that would have included "found plants" expressly:
[T]he words "invented" and "discovered" as used in this section, in regard to asexually reproduced plants, shall be interpreted to include invention and discovery in the sense of finding a thing already existing and reproducing the same as well as in the sense of creating,
citing S. 3530, 71st Cong. (1930) (emphasis added); H.R. 9765, 71st Cong. (1930) (emphasis added). And a similar provision was also stricken from the bill as first offered, based on an intention to "eliminate from the scope of the bill those wild varieties discovered by the plant explorer or other person who has in no way engaged in either plant cultivation or care and who has in no other way facilitated nature in the creation of a new and desirable variety," citing S. Rep. No. 71-315, at 7 (emphasis added). Further citations to the record discuss the analogy between the plant breeder and the chemist, who both work with natural products but through inventive effort transform constituents of the natural world through the exercise of the "inventive faculty." And this interpretation is also supported by language from the Supreme Court in Diamond v. Chakrabarty:
Thus, a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter. . . . Such discoveries are "manifestations of . . . nature, free to all men and reserved exclusively to none,"
citing Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948), as well as the Chakrabarty court's discussion of the Plant Patent Act. This construction is enough to defeat Beineke's claim under the Plant Patent Act as originally enacted in 1930:
In short, the provisions of the original 1930 Act, incorporated in the present plant patent statute, provided patent protection to only those plants (e.g., sports, mutants, and hybrids) that were created as a result of plant breeding or other agricultural and horticultural efforts and that were created by the inventor, that is, the one applying for the patent. Beineke meets neither of these requirements. Beineke does not argue that the oak trees were in any way the result of his creative efforts or indeed anyone's creative efforts, and thus they do not fall within the scope of those plants protected by the 1930 Act.
The panel also agreed that the 1954 amendments to the Act are also not sufficient to bring Beineke's activities (or trees) within the scope of the Act, because they are not the products of "newly found seedlings" which were first brought within the scope of the Act by these amendments. Interestingly, the amendments are discussed in the opinion as a legislative override of an application of the law as stringently as the Court applies the Act here; however, in view of the fact that the amendments were limited to "newly found seedlings" this intention by Congress to expand the scope of the Act was of no help to Beineke. And the opinion cites the legislative history of the 1954 amendments to support its view that Congress had no intention of changing the requirement in the 1930 Act that plants eligible for a plant patent must be "created" plants and not "found" plants.
The opinion's use of the Act's legislative history, while fully supporting the panel's decision, is curious in contrast with other recently decided cases. For example, it is apparently unnecessary to consult the legislative history in view of the panel's interpretation of the claim language. The statute is by its terms limited to "cultivated sports, mutants, hybrids, and newly found seedlings" and excludes, inter alia, "a plant found in an uncultivated state." The white oak trees that are the subject of the two applications at issue would appear not to fall within the scope of a "cultivated sport, mutant, hybrid[, or] newly found seedling" except upon a reading that would include "a new plant found in the wild" contrary to the rubric recited in Chakrabarty. (Indeed, it would be consistent with Judge Dyk's previously asserted opinion on the scope of patent-eligibility of natural products in Intervet v. Merial.) Including the white oak trees at issue within the scope of the Plant Patent Act would also be contrary to the exclusion of "a plant found in an uncultivated state," again under any plain meaning analysis that did not reduce the term "cultivated" to a triviality. Thus, recourse to the legislative history appears unnecessary.
It is also curious where, in other cases, Federal Circuit panels have refused to consider the legislative histories where such considerations may have been illuminative. One such case is Momenta Pharmaceuticals, Inc. v. Amphastar Pharmaceuticals, Inc., where the panel majority (which included Judge Dyk) refused to consider the legislative history of provisions of the Hatch Waxman Act, specifically 35 U.S.C. § 271(e)(1), on the grounds that the plain meaning of the Act was sufficient. (And in addition, that panel majority held that it would be improper to consult the legislative history under circumstances where the meaning of the statutory language was clear.) This decision, both on the merits and the majority's decision not to consider the legislative history of the Hatch Waxman Act, was the subject of a vigorous dissent by Chief Judge Rader.
Comparison of these cases illuminates the inconsistency, that courts in their discretion can decide whether the "plain meaning" of statutory language is sufficient or if the legislative history need be consulted. Because almost by definition reasonable people can differ on questions of statutory construction (else the exercise would be trivial), it would seem to be important to decide whether a court's construction of a statute is at least consistent with, if not mandated by, Congressional intent. That may not be enough, of course; as the Supreme Court has recently instructed in National Federation of Independent Business et al. v. Sebelius et al., 567 U.S. ___ (2012), courts should strike down laws enacted by Congress where "the lack of constitutional authority to pass [the] act in question is clearly demonstrated," citing United States v. Harris, 106 U. S. 629, 635 (1883). Courts have the ability not only to strike down laws but also to interpret them so as to render them constitutional (which is arguably what the Supreme Court did in the National Federation case).
Discerning Congressional intent can be a difficult and uncertain task. But it would appear prudent for courts to at least consider whether the legislative history need be considered, much like proper claim construction requires courts to review the specification if only to ascertain whether the patentee has disclaimed aspects of the claims that would otherwise fall under the plain meaning of claim terms. If prudence counsels such consideration of intent, and evidence of intent, for claim construction (which is limited to private patent rights), a fortiori the same prudence should counsel that the legislative history be similarly consulted for construing statutes. Not to do so raises the risk that statutory scope decisions are driven by the court's, not Congress', intent, something clearly outside our constitutional scheme. Only if courts (and their judges) are aware of these risks can the consequences be avoided.
In re Beineke (Fed. Cir. 2012)
Panel: Circuit Judges Dyk, Schall, and Reyna
Opinion by Circuit Judge Dyk