Supreme Court Grants Certiorari in Monsanto v. Bowman

By Kevin E. Noonan --

Earlier this month, the Supreme Court granted certiorari in Monsanto v. Bowman, against the advice of the U.S. Solicitor General (whose views the Court had solicited).  While it isn't unheard of for the Court to disregard the Solicitor General's views (including famously in Laboratory Corp. v. Metabolite Labs., Inc. ("LabCorp") where the Court ultimately determined that certiorari was improvidently granted over the objections of Justices Breyer, Souter, and Stevens), the certiorari grant raises the question of whether the Court is preferentially disregarding the views of the Obama administration.  More importantly, perhaps, the circumstances surrounding the petition raise the question of what issue does the Court think it is addressing.

To recap, the case arose as the result of a farmer replanting Monsanto's patented Roundup Ready® seed.  The patents-in-suit are (as they have been in other cases) U.S. Patent Nos. 5,352,605 and RE39,247 (a reissue of 5,633,435).  Claims 1 and 4 of the '605 patent are representative:

1.  A chimeric gene which is expressed in plant cells comprising a promoter from a cauliflower mosaic virus, said promoter selected from the group consisting of a CaMV (35S) promoter isolated from CaMV protein-encoding DNA sequences and a CaMV (19S) promoter isolated from CaMV protein-encoding DNA sequences, and a structural sequence which is heterologous with respect to the promoter.

4.  A plant cell which comprises a chimeric gene that contains a promoter from cauliflower mosaic virus . . . .

Claims 103, 116, 122, 128, 129, and 130 of the '247 patent are representative:

103.  A recombinant, double-stranded DNA molecule comprising in sequence:

    (a)  a promoter which functions in plant cells to cause the production of an RNA sequence;
    (b)  a structural DNA sequence that causes the production of an RNA sequence which encodes an EPSPS enzyme having the sequence of SEQ ID NO:70; and

    (c)  a 3' non-translated region that functions in plant cells to cause the addition of a stretch of polyadenyl nucleotides to the 3' end of the RNA sequence;
    where the promoter is heterologous with respect to the structural DNA sequence and adapted to cause sufficient expression of the encoded EPSPS enzyme to enhance the glyphosate tolerance of a plant cell transformed with the DNA molecule.

116.  A glyphosate-tolerant plant cell comprising a DNA sequence encoding and EPSPS enzyme having the sequence of SEQ ID NO: 70.

122.  A seed of the plant of claim 116, wherein the seed comprises the DNA sequence encoding an EPSPS enzyme having the sequence of SEQ ID NO: 70.

128.  A glyphosate[-]tolerant plant cell comprising the recombinant DNA molecule of claim 103.

129.  A plant comprising the glyphosate[-]tolerant plant cell of claim 128.

130.  A method for selectively controlling weeds in a field containing a crop having planted crop seeds or plants comprising the steps of:


    (a)  planting the crop seeds or plants which are glyphosate-tolerant as a result of a recombinant double-stranded DNA molecule being inserted into the crop seed or plant . . .


    (b)  applying to the crop and weeds in the field a sufficient amount of glyphosate herbicide to control the weeds without significantly affecting the crop.

Pioneer Hi-Bred (Pioneer), one of Monsanto's licensed seed producers, sold seed to Bowman; these sales were subject to a Technology Agreement similar to the Agreements Monsanto typically requires for farmers who purchase its seed.  Under the Technology Agreement, the licensed grower agreed:  (1) "to use the seed containing Monsanto gene technologies for planting a commercial crop only in a single season"; (2) "to not supply any of this seed to any other person or entity for planting"; (3) "to not save any crop produced from this seed for replanting, or supply saved seed to anyone for replanting"; and (4) "to not use this seed or provide it to anyone for crop breeding, research, generation of herbicide registration data, or seed production."  It was undisputed that Bowman complied with these provisions as to its "first planting" each year.  Monsanto's complaint arose from farmer Bowman's "second planting," which was made using so-called "commodity seed" obtained from local grain elevators.  Farmers under the Technology Agreement could freely sell seed to grain elevators for commodity use (for example, as cattle feed), which did not include replanting.  However, since Farmer Bowman's "second planting" was riskier (in terms of potential yield) he decided to use commodity seed because it was significantly cheaper than Roundup Ready® seed.  After planting this seed, Farmer Bowman tested this second crop for Roundup® resistance, and finding that substantial amounts of the seed were resistant, used Roundup® on these plantings and replanted this seed.  The District Court granted summary judgment of patent infringement and entered judgment against Farmer Bowman and the Federal Circuit affirmed.

The Question Presented is relatively straightforward:

Patent exhaustion delimits rights of patent holders by eliminating the right to control or prohibit use of the invention after an authorized sale.  In this case, the Federal Circuit refused to find exhaustion where a farmer used seeds purchased in an authorized sale for their natural and foreseeable purpose -- namely, for planting.

The question presented is:

Whether the Federal Circuit erred by (1) refusing to find patent exhaustion in patented seeds even after an authorized sale and by (2) creating an exception to the doctrine of patent exhaustion for self-replicating technologies?

It is certainly the case that the Federal Circuit finds itself once again on the wrong side of the Supreme Court's views on patent law with regard to the specialized appellate court's conditional sales doctrine in the line of cases beginning with Mallinckrodt, Inc. v. Medipart, Inc.  It is also certainly the case that the Federal Circuit has used this doctrine in other cases brought by Monsanto against other farmers, including Monsanto Co. v. Scruggs and Monsanto Co. v. McFarling.  But it is certainly the case that the Federal Circuit did not rely on the doctrine in affirming the District Court's judgment in this case; while not abrogating this line of cases (which a three-judge panel cannot do to binding precedent of earlier panels or the decisions of the C.C.P.A., South Corp. v. U.S.), the Court was careful to point out the alternative grounds of affirming the District Court.

This distinction was emphasized by the Solicitor General's brief, which pointed out for the Court that the Federal Circuit held that patent exhaustion did not apply.  Citing the McFarling opinion, the panel stated that "[t]he 'first sale' doctrine of patent exhaustion . . . [wa]s not implicated [in this case], as the new seeds grown from the original batch had never been sold.  The price paid by the purchaser 'reflects only the value of the 'use' rights conferred by the patentee.'"  Id. at 1299 (citing B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1426 (Fed. Cir. 1997)).  The Court futher stated that the important consideration is that "the grower has created a newly infringing article" when commodity seed was planted by Bowman and the "next generation" of seeds comprising Monsanto's Roundup Ready® technology were produced.  "The fact that a patented technology can replicate itself does not give a purchaser the right to use replicated copies of the technology," according to the opinion, and "[a]pplying the first sale doctrine to subsequent generations of self-replicating technology would eviscerate the rights of the patent holder," citing Monsanto Co. v. Scruggs, 459 F.3d 1328, 1336 (Fed. Cir. 2006), cert. denied, 549 U.S. 1342 (2007).  According to the opinion, the right to use patented technology upon purchase "do[es] not include the right to construct an essentially new article on the template of the original, for the right to make the article remains with the patentee," citing Jazz Photo Corp. v. Int'l Trade Comm'n, 264 F.3d 1094, 1102 (Fed. Cir. 2001), cert. denied, 536 U.S. 950 (2002).  The opinion applied the "substantial embodiment" test with regard to separate generations of seed, stating that present seed does not "substantially embody" "all later generation seeds," because with regard to the commodity seeds "nothing in the record indicates that the 'only reasonable and intended use' of commodity seeds is for replanting them to create new seeds, citing Quanta, 553 U.S. at 631 and noting that other uses for commodity seed existed (such as use as feed).  "While farmers, like Bowman, may have the right to use commodity seeds as feed, or for any other conceivable use, they cannot 'replicate' Monsanto's patented technology by planting it in the ground to create newly infringing genetic material, seeds, and plants.

It is evident that the principal basis for Farmer Bowman's certiorari petition is not consistent with the plain language of the Federal Circuit’s opinion.  Farmer Bowman correctly argued that the district court based its decision on its appreciation that there had been no unconditioned sale of the seed "because the farmers could not convey to the grain dealers what they did not possess themselves."  Farmer Bowman in response to the Solicitor General argued that the Federal Circuit necessarily agreed with the District Court's grounds for finding against Bowman based on the conditional sale doctrine, not from language from the Federal Circuit opinion, but merely from the fact that the Federal Circuit refused to find that Monsanto's patent rights were exhausted, i.e., failed to find in Bowman's favor based on Bowman's arguments.  (This argument was also based on the Federal Circuit's refusal to remand for a recalculation of damages, based on the way the district court calculated damages.)

These circumstances suggest that the Supreme Court is sympathetic to Farmer Bowman's argument that, because the Supreme Court abrogated (or at least seriously questioned) the conditional sale doctrine by virtue of its Quanta Computer, Inc. v. LG Electronics, Inc. decision, this case becomes "an appropriate vehicle through which the Court may resolve uncertainty created by the Federal Circuit's continued reliance on the Mallinckrodt line of cases."

A more pernicious possibility is that the Supreme Court will focus its analytical powers on the second portion of the Question Presented, that the Federal Circuit has "creat[ed] an exception to the doctrine of patent exhaustion for self-replicating technologies."  While not supported by the Federal Circuits opinion, that may not be dispositive:  many, for example, have discerned that both the District Court and the Federal Circuit applied the "four factor test" for granting an injunction in eBay Inc. v. MercExchange, L.L.C., but that did not stop the Court from writing an opinion setting forth the necessity for the lower courts to apply the test in patent cases, based on clever briefing that suggested to the Court that the Federal Circuit was permitting district courts to grant injunctions "automatically" to prevailing patentees.  Here, depending on how Farmer Bowman crafts his brief something similar may happen:  the Court may be motivated to provide instruction to solve a problem that does not exist.

While any such prescriptive rule would create difficulties for companies such as Monsanto to protect its seed technology (or any company having self-replicating technology), more importantly it could create a need for business practices that would be less efficient, more burdensome and that could impede progress more significantly than anything Farmer Bowman accuses Monsanto of doing.  For example, Monsanto could just increase (significantly) the cost of its Roundup® herbicide to provide sufficient return in investment lost by "free" distribution of its recombinant seed.  Or perhaps Monsanto (or any recombinant seed producer) could restrict sales of Roundup® to those farmers who could provide proof of the provenance of the seed they were planting.  The recombinant seed could incorporate genes that would prevent propagation, something that farmers have traditionally resisted.  More intrusive methods could always be envisioned, or the company could just abandon this area and let soybean production levels fall to what they were before the herbicide-resistant seed became available.  The important practical point is that any such system would be less beneficial to U.S. soybean production and (ultimately) its farmers.  These inefficiencies would be imposed on all American farmers due to the misbehavior of the few like Famer Bowman who decided to infringe rather than respect Monsanto's patent rights.  It is possible that the Court will see some grand philosophical grounds for making such a pronouncement in this case, but that would be contrary to the Constitutional mandate that Congress be empowered to enact laws to "Promote the Progress . . . of the Useful Arts" and continue its recent pattern of making distinctions contrary to the best interests of the patent system and the country.

Comments

[6]

"or the company could just abandon this area and let soybean production levels fall to what they were before the herbicide-resistant seed became available. "

As if there will be no one to compete with them when the patent expires in what, a year?

Besides all your bellyaching, there's the possibility that Monsanto does nothing and life goes on without there being an exception made for self-replicating "tech". And that is by far the most likely.

[Dan Feigelson]

Kevin, I think the active ingredient in Roundup was known long before the seeds were developed, and that the last of the patents on the ingredient or the formulation containing it expired a while ago. So in this case there's already competition for the herbicide and raising its cost isn't an option.

I think what you were trying to say is that prospectively, if it turns out that companies can't protect their investments in genetically modified seeds, they'll stop trying to make them, thus foreclosing the improved crop yields that would result from such development.

[Keep It Real]

Dan: "if it turns out that companies can't protect their investments in genetically modified seeds, they'll stop trying to make them, thus foreclosing the improved crop yields that would result from such development."

And then what? We all starve?

I can't think of an industry more worthy of the shaft than the genetically-modified food industry. Here's hoping a death blow is administered by the Supremes.

[Kevin E. Noonan]

Dear Keep: We could.

Patent policy shouldn't be determined by who gets shafted, but by how to best promote the progress in favor of the public. Don't you think?

[Kevin E. Noonan]

Dan: obviously a problem in that case. I'm sure innovators will get creative on how to protect such combinations.

[Gary Johnston]

Kevin, respectfully, if Bowman is an infringer, the progress of the useful arts is not promoted. He buys seeds without restriction, puts them in the ground, and they grow into plants. What did he do to create the plants? Put a little water on them?

Boo hoo for Monsanto.

How could the Supremes NOT have granted cert?

[Kevin E. Noonan]

Dear Gary:

I'm not sure your predicate is correct; I'm not sure this us a case of innocent infringement. And I'm not sure the sale was authorized, at least for Farmer Bowman's replanting.

[Kevin E. Noonan]

Dear Dan:

Actually, perhaps It is as simple as getting a method claim that requires a license to practice the method, and then limit that license to use of the recombinant seed purchased from the patentee. I think Cetus used to protect PCR performed using Taq polymerase using an "authorized" thermocycler.

[Skeptical]

Innocent infringement?

No such thing. You infringe or you do not infringe.

[Keep It Real]

Kevin, care to put any odds on your prediction that "we could all starve" if companies like Monsanto can't "protect their investments" in genetically modified seeds? Is like that a 1 in 10 chance of world starvation if Monsanto's seeds patents are diminished? 1 in 100? 1 in a million? Just trying to get an accurate sense of the likelihood, in your mind, of this horrible event.

And do you honestly believe that Monsanto and its investors are concerned at all about starvation? Seems far more likely that they would welcome increased starvation as that would increase the demand for their product(s).

[Kevin E. Noonan]

Dear Keep:

Starve is relative. The point is whether there are incentives to increase yields or not. If Roundup and Monsanto's seed didn't do that, no one would care. So if we disincentive investment in the area, less food than there would be otherwise. Might not work out this way; but it might

[Skeptical]

Hungry is relative. Starve is extreme.

When I see arguments in the extreme, I become a bit, well, skeptical.

[Kevin E. Noonan]

Starvation is extreme, particularly to the people starving. And if you don't think that's happening you aren't paying attention.
That having been said, starvation is mostly a failure of distribution and politics, not quantity of food. But it would be foolish to think we won't need greater quantities of food in future, or that providing a disincentive to developing greater crop yields is equally foolish.

I guess there are alternatives (as in "The Moon is a Harsh Mistress") but I prefer recombinant seed to penal colonies on the Moon.

To each her own.

[Skeptical]

Dr. Noonan,

Respectfully, the first two sentences in your last two answers, juxtaposed together, make my point:

Starve is relative.
Starvation is extreme,...

Whether or not people ARE starving is quite besides the point and has nothing to do with my paying attention to the legal arguments presented, or to real world conditions quite outside the specific legal issues under evaluation.

I do understand that you feel strongly about this subject and the potential benefits of genetic engineering to combat our burgeoning population is a very real issue. My posts are not meant to diminish either your feelings or the importance of progress in this area. Unlike MM, my view is not driven by the desire to see anyone shafted.

However, and notwithstanding the seriousness of that issue, what I believe is before the court is the rather straight-forward simpler issue of what constitutes patent exhaustion.

To me, the question needs to align the purpose of the first sale (and its use to grow, as opposed to any other commodity use - and I wish to stress "other" in commodity use, because commodity use most definitely includes "grow" which is not evident in your write-up), with the fact that THAT use necessarily entails "make."

I would also point out that there are in fact THREE sales in the fact pattern:
1) Monsanto to grower, with K terms intact,
2) grower to commodity owner - wherein, the K terms (as drawn up by Monsanto work, as they should, against Monsanto), and
3) commodity owner to grower - wherein NO K terms of the original sale remain.

The argument is not against recombinant seed in its own right, and Monsanto in its first sale (that it fully controls) has the ability to price that sale for what it thinks the value of its invention (with focus on what the patented ivntnion FULLY entails) should bring - AT THAT SINGLE INSTANCE.

Self-replicating inventions, especially when the "USE" of the invention for its patented purpose necessarily invokes the "MAKE" aspect must not get a free pass on patent exhaustion.

Perhaps a simple "reasonableness" thought experiment can illuminate this point: Let's say Invention Seed and normal seed are both available, but Invention Seed is fully priced to reflect what the patent owner thinks is of proper value. Let's take this arbitrarily at a 10:1 ratio.

Would any reasonable person knowingly buy the more expensive seed for ANY commodity use other than that very use that entails "MAKE"?

The simple logic dictates that "USE" (and the purchasing decision) must be for (and thus include) "MAKE".

[Kevin E. Noonan]

Dear Skeptical:

The problem as I see it is raising semantics over policy. If we decide on philosophical grounds that "use" always encompasses "make" for seeds, then we have the conundrum that there will never be any profit in developing them. This is because, of course, making "use" and "make" co-extensive will exhaust (more like extinguish) the patent grant on the first sale. Accordingly, someone could buy a first batch of seed and never have to purchase any seed ever again.

This means that 10-fold is nowhere need the ratio needed for ROI on recombinant seed. No ROI, not investment, no seed - so coming to that conclusion is not good policy in my opinion. (And ironically could act to "enrich" the seed producer even more than current policy.) It would also penalize all the folks who play by the rules and accept the benefit of higher yields in recompensing the provider of those higher yields with the cost of their goods.

The contract facet is not an option because the seed grower, who may be bound by a contract, is not in privity (regarding the contract with the seed supplier) with the commodity grain dealer, and thus contract doesn't help. We have the same situation.

So as a policy matter I choose to permit the recombinant seed producer to make her ROI for the limited time of the patent right, to encourage development of the seed.

The patent exhaustion principle makes sense for most patented items. After all, if you purchase a first item you don't get to make another one, although you may delay the ultimate purchase of a replacement by caring for and repairing the item. One of my partners just bought the second pair of dress shoes he has ever owned (he has been in practice 32 years), because in addition to taking care of them he replaced the soles and heels when needed. This is part of the patent bargain - you can "repair" but you cannot "reconstruct."

For seed (and any self-replicating invention) this doesn't work if you believe that this class of invention is categorically exempt from the repair/reconstruction dichotomy. But while the argument that the purpose of a soybean seed is to make another soybean seed may be a biological truth it doesn't have to be a legal one. And there are several alternative "uses" for the seed other than making more soybeans - tofu, for example.

Finally, while I won't publish them there has been a fair amount of talk regarding Farmer Bowman's behavior that make me think this was not the case of a farmer who unknowingly plants recombinant seed and is sued. Even in his brief Farmer Bowman seems to argue that the "second" (seasonal) planting of this seed somehow justifies his behavior, regarding the difficulties in growing soybeans at the later time of year. I don't know the economics sufficiently to credit this argument or not, but suffice it to say that Farmer Bowman knew that he was acting outside the scope of the "authorized sale" in this instance and took the risk that he would be accused of infringement.

Thanks for the comment.

[Skeptical]

Dr. Noonan - this is where I think your argument is weakest: "But while the argument that the purpose of a soybean seed is to make another soybean seed may be a biological truth it doesn't have to be a legal one. And there are several alternative "uses" for the seed other than making more soybeans - tofu, for example."

To subjugate the actual truth for a legal truth needs more than just a support of a Monsanto business model. After all, what is to stop Monsanto from invented a seed that produces for only one generation?

Moreover, I do not find the "alternative uses" plank to be compelling in the least - as I mentioned with the reasonableness example, the alternative "uses" do not pass muster, because (PRECISELY because) the reason for actually spending more on the patented item is for that very "make" capability. One simply would not buy the patented item for the other uses - making tofu or feeding pigs or whatever - the sale is inherently tied to the "use = make" and must exhaust.

As for the second season aspect, Bowman bought from the commodity owners (my third sale above) and thus there was no scope of "authorized sale" for him to act outside of - that is why I made a point of the fact that there are actually three sales in the fact pattern of this case.

As for your policy arguments - I understand them. I do. The problem with such arguments is that by using them, you actually must answer the second question to the Supreme Court in the affirmative: you must have an exception to the exhaustion doctrine for replicating inventions of this type. Hardly a matter of raising semantics over policy, the aspect of the patent here that distinguishes is the aspect of replication. As I point out, the very basis of the sale is the "use = make," and I do not see your policy argument to make an exception compelling enough. I just don't think that aspect should overpower the very rationale for the first sale and this nature of this particular type of invention, wherein the "use = make" is the reason in the first place for the sale. It would be an exception that would swallow the rule.

If it comes done to NO exhaustion versus exhaustion that more closely matches other types of patented inventions, I think that the latter must win out in any type of policy battle.

Lastly, I do not think this type of policy setting is one for the courts. To me, this is the type of policy (inventions dealing with a whole class) that is more attuned for Congress to take up.

[Skeptical]

Dr. Noonan,

A few more thoughts on your reply:

KN: “If we decide on philosophical grounds that ‘use’ always encompasses ‘make’ for seeds, then we have the conundrum that there will never be any profit in developing them. This is because, of course, making ‘use’ and ‘make’ co-extensive will exhaust (more like extinguish) the patent grant on the first sale. Accordingly, someone could buy a first batch of seed and never have to purchase any seed ever again.”

The decision is NOT “on philosophical grounds,” and my position is NOT “always.” The decision is based on the grounds of what the patented invention is and what is the relation of that patented invention to the supposedly exhausting sale. This is just a normal application of exhaustion doctrine.

The parallel between exhaust and extinguish is the exact same parallel that ANY event of exhaustion RIGHTFULLY entails. I view the choice of wording of extinguish to be merely a sympathy ploy and dismiss it out of hand.

Accordingly, yes – for a replicating invention wherein the purpose of the sale necessarily involves the use of make, a first batch would be purchased and all succeeding generations would not have to be repurchased. To quote O’Malley from a recent albeit unrelated case, “That proposition is an unremarkable one.”

KN: “This means that 10-fold is nowhere need the ratio needed for ROI on recombinant seed. No ROI, not investment, no seed - so coming to that conclusion is not good policy in my opinion. (And ironically could act to "enrich" the seed producer even more than current policy.) It would also penalize all the folks who play by the rules and accept the benefit of higher yields in recompensing the provider of those higher yields with the cost of their goods.”

I choose the 10-fold has an arbitrary and easy to handle number. Feel free to use a more realistic number to achieve ROI. Then realize that patents are not a hunting license and that if an ROI cannot be achieved, especially in light of alternatives in cost, then THE MARKET (rightfully) dictates whether the invention succeeds or not. How much would it be worth to a farmer to be able to buy seed once and not again for the next ten to twenty years (unless a better invention comes along?)

Patents HAVE NEVER been about guaranteeing a profit from the patented invention. Even patents take their chances in the market.

Also, you assume your conclusion when you state that “all the folks who play by the rules” would be penalized. Before that conclusion can be accepted, the premise that “currently innocents are penalized” stands on equal ground. Here too, your argument is meant to appeal to emotions, and at the lack of sounding calloused, I refute such an emotional ploy (but keep in mind, that I do not mean to impugn your belief that this area is important).

KN: “The contract facet is not an option because the seed grower, who may be bound by a contract, is not in privity (regarding the contract with the seed supplier) with the commodity grain dealer, and thus contract doesn't help. We have the same situation.”

The fact that contract does not help you should be taken as a hint that the exception to exhaustion violates the market. When you override the necessity of use-make in the first sale, market forces that should be in play are prevented from being in play. You are pushing the patent right beyond its natural state.

KN: “So as a policy matter I choose to permit the recombinant seed producer to make her ROI for the limited time of the patent right, to encourage development of the seed.”

I understand and recognize your choice. I think that choice robs the market of choosing, forces a foreclosure of secondary markets in patented items (like no other acceptable class of patented invention), and does more harm than good than is necessary.

It is one thing to reward inventors with exclusivity over their invention (and where that exclusivity stops as in the doctrine of exhaustion that applies across the board) and it is quite another to extend that reward to an actual monopoly by swallowing the doctrine with an exception, forcing out the secondary market and encouraging a windfall style of development divorced from ordinary market power to decide product success.

KN: “The patent exhaustion principle makes sense for most patented items. After all, if you purchase a first item you don't get to make another one, although you may delay the ultimate purchase of a replacement by caring for and repairing the item. One of my partners just bought the second pair of dress shoes he has ever owned (he has been in practice 32 years), because in addition to taking care of them he replaced the soles and heels when needed. This is part of the patent bargain - you can ‘repair’ but you cannot ‘reconstruct.’”

I think the arguments between repair/reconstruction do not fit the present fact patterns. I think my “reasonableness” test shows why.

KN: “For seed (and any self-replicating invention) this doesn't work if you believe that this class of invention is categorically exempt from the repair/reconstruction dichotomy. But while the argument that the purpose of a soybean seed is to make another soybean seed may be a biological truth it doesn't have to be a legal one. And there are several alternative ‘uses’ for the seed other than making more soybeans - tofu, for example.”

I do not think that “exempt” is the proper word. Rather than exempt, the purpose of the sale (make=use) simply overpowers the repair/reconstruction idea and makes the idea inapplicable to this invention.

Another mental exercise would be to contemplate a different invention: a seed that when ground up makes a superior paste (a tofu that tastes like lobster, for example). Such an invention would not be tied to replicating, and the “use=make” necessity would not come into play. One simply cannot choose to ignore the necessity of use=make tied to the purpose of the sale.

KN: “Finally, while I won't publish them there has been a fair amount of talk regarding Farmer Bowman's behavior that make me think this was not the case of a farmer who unknowingly plants recombinant seed and is sued. Even in his brief Farmer Bowman seems to argue that the ‘second’ (seasonal) planting of this seed somehow justifies his behavior, regarding the difficulties in growing soybeans at the later time of year. I don't know the economics sufficiently to credit this argument or not, but suffice it to say that Farmer Bowman knew that he was acting outside the scope of the ‘authorized sale’ in this instance and took the risk that he would be accused of infringement.”

“Unknowingly” is a bit of a red herring. Direct Infringement does not depend on “knowingly” (granted, the concept comes into play for damages and non-direct infringement). Economics, then, do not come into the argument. A better argument would be based on the contract terms – as written by Monsanto – that does not bind the commodity buyer. As you mentioned, contract does not avail an answer to Monsanto. But this does not mean that Monsanto cannot receive justice. It just means that the type of justice Monsanto wants is not the type of justice law provides. Just because they have a patent does not mean that market forces should be removed – no other type of patent gets that type of treatment.

The desired replication invention exception to exhaustion would in fact de facto bind such a third party to contract terms and eviscerate the secondary market in seeds. As I pointed out, the use of commodity seeds for growing appears to be a dominant use in that secondary market (based on my limited review of searching the web for commodity seed use), and the exclusion of that use seems to be a conclusion reached in your initial argument, rather than a position earned after consideration of arguments from both sides.

KN: “Thanks for the comment.”

Thanks for the forum!

[O'Reallly]

There are a few key points that are worth mentioning.
One is the assumption that GM represents progress and it is useful. Experience so far shows that GM crops haven't produces significantly higher yield anywhere. It has never been the puurpose in developing them. It has absolutely nothing to do with starvation, hunger, wolrd population and the like. The only "result" in this area has been 270.000 suicides among Indian farmers who opted for GM seed and found themselves in a hopeless situation when they could not afford seed for the naxt season. They don't need any food anymore.

The ability to patent life forms is basically absurd. Owning them is even more absurd, since nobody can control the movement of pollens, so the protected genes appear in plants on road sides, deveral miles away from any cultivated field. So Monsanto can sue Nature or God.

Investment costs are so high that under normal market conditions there would be no chance for any profit. If you just sold GM seed and people would be free to use them like any other seed, the price wouls be sky-high, nobody would buy it and that'S THE WAY IT IS IF YOU PRODUCE SOMETHING THAT IS TOO EXPENSIVE.

SO the law has been twisted to the extreme to mak e profit possible for these poor companies who would otherwise find that there is no demand for their product. The business model works only if Monsanto controls everybod who ever touches those seeds, even people who have never bought anything from them in the first place. How come the put pressure on seed cleners not clesn GM seed for anybody? What do those cleaners have to do with it? Should they know if it is GM? How? The whole system is untenable and can only be maintaned through hacking the law, having Monsanto employees in tha FDA, coercing avery participant in the market and buying up all other seed companies so that traditional seed becomes non-existent. And whan you can only buy RR, you decide to buy RR.

Here Monsanto objects to the use of seed acquired in a business transaction tha does not involve Monsanto. How? Why? The only reason is "This is destroying our business". The fact is, they are out of luck, it is impossible to cover all the wholes in this fundamentally crazy system, but they are really good at trying.